Goodnight Sleeptight LLC d/b/a Surfer
Bedding v. Uhula Corporation
Claim Number: FA0407000304769
PARTIES
Complainant
is Goodnight Sleeptight LLC d/b/a Surfer Bedding (“Complainant”), represented by Joseph C. Shoemaker of Bogin, Munns & Munns,
2601 Technology Drive, Orlando, FL 32804.
Respondent is Uhula Corporation (“Respondent”),
930 Calle Negocio, Ste. E, San Clemente, CA 92673.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <surfingbedding.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 27, 2004; the Forum received a hard copy of the
Complaint on July 30, 2004.
On
July 28, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <surfingbedding.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
August 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 25,
2004 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@surfingbedding.com by e-mail.
A
timely Response was received and determined to be complete on August 23, 2004.
On September 1, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Honorable Paul
A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that the domain name at issue is substantially the same and
confusingly similar to the domain name and mark that has been utilized by the
Complainant; that the Respondent has no
rights or legitimate interests in the domain name at issue; and that the domain
name at issue was registered in bad faith.
B.
Respondent
The
Respondent contends that it has no direct knowledge of any complaints or
confusion by users of the domain name at issue; that Respondent has clear
rights and legitimate interests with respect to the domain name at issue; and
that it did not register the domain name in bad faith.
FINDINGS
The Complainant is engaged in the
business of selling surfing and beach-related bedding materials. Since approximately April, 2002, Complainant
has used the names SURFER BEDDING and SURFERBEDDING.COM to market and sell her
goods, and has been commonly known by these names since that time.
On June 26, 2003, Complainant filed for a
United States Trademark for SURFERBEDDNG and the application is currently
pending.
The Respondent is engaged in the business
of designing, manufacturing, wholesaling and retailing surfing and
beach-related bedding and accessories.
Respondent states this business was started in 2000 and uses the tagline
“Bedding for Beachgoers” and registered its trademark UHULA and logo with the
United States Patent Office on December 26, 2000.
Beginning in May, 2002, Complainant and
Respondent had a short-term business relationship. During this relationship, Respondent became aware of
Complainant’s use of the <surferbedding.com> domain name and
registered the domain name at issue on approximately January, 2003.
It appears that Respondent also
registered the domain name <surfbedding.com> and has transferred that
domain name to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
It
would appear from the evidence presented that Complainant has established
common law rights in the SURFERBEDDING mark.
Complainant asserts that it has used the mark since April 2002 in
association with its bedding business, and provided evidence that its products
have been featured in magazines informing readers that Complainant’s products
can be found at Complainant’s website at the <surferbedding.com> domain
name. The Complainant has established
common law rights through secondary meaning associated with its products. 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 S.A. Bendheim Co.,
Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding
that Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has acquired
rights under the common law.”).
In addition, on
June 26, 2003, Complainant filed for a trademark registration with the United
States Patent and Trademark Office.
Complainant’s pending trademark application is sufficent to show rights
in the mark. See SeekAmerica
Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Further,
the domain name at issue is confusingly
simlar to Complainant’s mark as it simply replaces the “er” suffix with
the “ing” suffix added to the word “surf.”
The mere substitution of a few letters within Complainant’s mark is not
sufficient to negate the confusing similarity of the domain name. Complaint has received reports from
customers that when they tried to access Complaint’s website, and happened to
use “surfing” instead of “surfer” they were redirected to Respondent’s website
at the <uhula.com> domain name. See
Victoria's Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a Respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to Complainant's marks); see also Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by Complainant).
There is no evidence to indicate that
Respondent has ever, as an individual, business or other organization, been
commonly known by the <surfingbedding.com> domain name. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
In addition, Complainant asserts that the
domain name at issue diverts Internet
users, including Complainant’s existing and potential clients, to Respondent’s
competing website at the <uhula.com> domain name. Respondent’s use of the domain name at issue
to divert Internet users to Complainant’s competitor does 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 Computerized
Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services); see
also Avery Dennison Corp. v., FA 133626 (Nat. Arb. Forum Jan 10,
2003) (finding that Respondent had no rights or legitimate interests in the
disputed domain name where it used Complainant’s mark, without authorization,
to attract Internet users to its business, which competed with Complainant); see
also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008
(Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website).
It appears from the evidence presented
that due to a brief business relationship
with Complainant’s manager, Respondent was aware of Complainant’s business,
website name and product line. The
evidence also reveals that Complainant and Respondent are both in the
surf-related bedding business.
Respondent admits that even though Respondent started her business in
2000, the domain name at issue was not registered until after Respondent had
knowledge of Complainant’s rights in the SURFERBEDDING mark. The Panel finds that this is evidence of bad
faith registration and use. See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Pfizer,
Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because
the link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
As the
Respondent is engaged in the same type of business as the Complainant, and had
a brief business relationship with the Complainant, it appears that the
Respondent intentionally registered the domain name for the purpose of
disrupting Complainant’s business. See Surface Protection Indus., Inc. v. The
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion).
The registration of a domain name for the primary purpose of disrupting
the business of a competitor is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <surfingbedding.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, Panelist
Dated: September 17, 2004
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