BedHead PJs, Inc. v. Richard Jones
Claim Number: FA0703000952185
Complainant is BedHead PJs, Inc. (“Complainant”), represented by Francie
R. Gorowitz, of Katten Muchin Rosenman LLP, 2029
Century Park East,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bedheadpajamas.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On April 3, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bedheadpajamas.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bedheadpajamas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bedheadpajamas.com> domain name is identical to Complainant’s BEDHEAD PAJAMAS mark.
2. Respondent does not have any rights or legitimate interests in the <bedheadpajamas.com> domain name.
3. Respondent registered and used the <bedheadpajamas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BedHead PJs,
Inc., is a manufacturer and seller of pajamas, robes, loungewear and
slippers. Complainant, along with its
predecessor-in-interest, has been using its BEDHEAD PAJAMAS mark in commerce
since at least February, 1999.
Complainant’s products have been featured in numerous television shows,
movies, and magazines with regards to its high-quality sleepwear. Complainant also operates a website at the
<bedheadpjs.com> domain name. Complainant
has established rights in the BEDHEAD PAJAMAS mark through its extensive
marketing, promotion, and media exposure of the mark since 1999.
Respondent registered the <bedheadpajamas.com> domain
name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is not required to own a trademark registration
to establish rights in the BEDHEAD PAJAMAS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has established common law rights in its BEDHEAD PAJAMAS mark through evidence presented demonstrating its continuous and extensive use of the mark in connection with its manufacturing and selling of sleepwear since at least 1999. Complainant’s sleepwear has received a great deal of media attention, including in various television programs, movies, and magazine articles. Complainant has also registered the <bedheadpjs.com> domain name. Therefore, Complainant’s BEDHEAD PAJAMAS mark has acquired secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <bedheadpajamas.com> domain name is identical to Complainant’s BEDHEAD PAJAMAS mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i) as a gTLD is required of all domain names. Accordingly, Complainant has satisfied this portion of Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <bedheadpajamas.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden of proof shifts, and Respondent must show it has rights or legitimate interests in the <bedheadpajamas.com> domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The WHOIS information does not indicate that Respondent is commonly known by the <bedheadpajamas.com> domain name, nor is there any information in the record to suggest that Respondent is or has ever been commonly known by the disputed domain name or Complainant’s BEDHEAD PAJAMAS mark. The Panel thus finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Furthermore, Respondent’s <bedheadpajamas.com> domain name resolves to a website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant, presumably for Respondent’s own commercial benefit through the accrual of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain name resolves to a website displaying hyperlinks
to Complainant’s own website, as well as to websites in direct competition with
Complainant, and to other websites unrelated to Complainant or its goods. Based on the evidence presented, the Panel
finds such use of the disputed domain name is for Respondent’s own commercial
benefit. Additionally, the <bedheadpajamas.com> domain name is
capable of creating a likelihood of confusion with Complainant’s mark. Thus, Respondent has engaged in bad faith
registration and use within the meaning of Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by
using the disputed domain names to operate a commercial search engine with
links to the products of the complainant and to complainant’s competitors, as
well as by diverting Internet users to several other domain names).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedheadpajamas.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 17, 2007
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