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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Comfort Inc. v. iNET image, Inc.
Case No. D2003-0016
1. The Parties
The Complainant is Advanced Comfort Inc., of NY 12524, United States of America, represented by Collen IP of United States of America.
The Respondent is iNET image, Inc., of Slidell, Louisiana 70459, United States of America, represented by Lance Foster, Jones Walker, LLP of United States of America.
2. The Domain Name and Registrar
The disputed domain name <abed4u.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 8, 2003. On January 9, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 9, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2003. The Response was filed with the Center on February 3, 2003.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 12, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The proceeding has been conducted in the English language.
4. Factual Background
Complainant is the holder of two service mark registrations for the term "ABED.COM" on the Principal Register of the United States Patent and Trademark Office (USPTO) (Reg. No. 2,463,230, dated June 26, 2001, in International Classes (IC) 35 and 42, covering, inter alia, "online ordering services in the field of mattresses, pillows, bedding and waterbeds", claiming date of first use in August 1996, and first use in commerce in September 1996, application filed March 16, 1999, and Reg. No. 2,542,400, dated February 26, 2002, in IC 35, covering "retails stores featuring furniture, namely beds, mattresses, pillows and bedding", claiming date of first use and first use in commerce of February 20, 1999, application filed April 24, 2000). (Complaint, para. 11 & Annex 6)
Complainant asserts that it registered the domain name <abed.com> on June 3, 1996, "and has been actively using the website hosted at that Internet address to conduct business."
The named Respondent, iNet Image, Inc, in this proceeding is a website developer and hosting service that acted on behalf of its client, American Wholesale Mattress, Inc. (hereinafter "AWM") in registering the disputed domain name and posting content on AWM’s commercial website. The owner of iNet Image and the president of AWM have submitted sworn affidavits attesting to these facts (Response, Annex 1, Affidavit of Sean Bryan (AWM), Feb. 3, 2003, and Annex 2, Affidavit of F. Charles Ledet, III (iNet Image), February 3, 2003).
According to the Registrar’s Verification to the Center, iNet Image, Inc., is the registrant of the disputed domain name, <abed4u.com>. According to a GoDaddy Software WHOIS database record furnished by Complainant, the record of registration for the disputed domain name was created on July 1, 1999 (Complaint, Annex 1).
Respondent and AWM have maintained an active commercial Internet website at <abed4u.com> since July 1999, to "advertise its mattresses and related products. The website at this domain name provides customers with needed product information and provides customers with contact information and driving directions to our several stores across the state of Louisiana." (Response, Affidavit of Bryan)
The president of AWM, Mr. Sean Bryan, asserts that at the time of registering the disputed domain name, <abed4u.com>, in July 1999, AWM was unaware of the existence of Complainant, Advanced Comfort Inc., was unaware that Complainant claimed trademark rights in "ABED.COM", and was unaware that <abed.com> was a domain name registered by Complainant.
The owner of iNet Image, Charles Ledet, III, states "American Wholesale Mattress suggested the domain name of <abed4u.com> and iNet confirmed that this domain was available. Thereafter, iNet registered the domain name and constructed the website presently at that domain name." Also disclaiming knowledge of Complainant’s activities, Mr. Ledet states, "iNet did not become aware of Advanced Comfort, Inc.’s claim of trademark rights in ‘abed.com’ until October of 2002. At that time, American Wholesale Mattress received a letter from the attorneys for Advanced Comfort, Inc. demanding that American Wholesale Mattress cease using its domain name <abed4u.com>."
Although not referred to by Complainant, according to Respondent, Complainant sent a cease and desist demand in October 2002, that Respondent rejected following consultation with its counsel. (Response, Affidavit of Bryan)
The Registration Agreement in effect between Respondent and GoDaddy Software subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it holds rights in the trademark "ABED.COM" as evidenced by two registrations with the USPTO, and that it has been using this mark in commerce in connection with the sale of mattresses, bedding and ancillary services since September 1996, including at a website using the mark as its address.
Complainant argues that the disputed domain name <abed4u.com> is confusingly similar to its mark, and that the addition of a shorthand expression as a suffix to its mark does not sufficiently distinguish the disputed domain name from its mark. Complainant asserts that Respondent does business in the same line of commerce.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, stating:
"There is no evidence of the Respondent, iNET Image, Inc. having used the mark ABEDSTORE, ABEDSTORE.COM, or any other mark or domain name that is confusingly similar to the ABED.COM mark prior to the use in commerce and registration of the ABED.COM mark and the registration of the abed.com domain name by the Complainant.
Therefore, Respondent does not have any rights, developed through use, in the trademark mark ABED4U.COM, or any other trademark mark or domain name that is confusingly similar to the ABED.COM mark, prior to its registration of the <abed4u.com> domain name registered in 1999. Decisions made under the UDRP have held that a registrant has an implied duty to conduct at least a minimal trademark search to verify that what it considers generic is not in fact a registered trademark. See Marketing Mix, Inc. v. Mix, WIPO Case No. D2000-0352 (WIPO 2000). … Had the Respondent conducted such a search, they would have found the registrations of the Complainant, Advanced Comfort."
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith by intentionally diverting Internet users to its website for commercial gain by creating confusion as to Complainant’s sponsorship of or affiliation with its site, and also by seeking to disrupt the business of a competitor.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
Respondent asserts that Complainant has no rights in a trademark or service mark "ABED" for retail services for mattresses, bedding, etc. because the term "is clearly generic for such services." Respondent argues that "bed" is generic for retail services of selling beds, the addition of the indefinite article "a" does not "make the term any less descriptive", and the "only issue remaining is whether the ‘.com’ indicator should render the term ‘abed’ non-generic". Respondent refers to the decision of the U.S. Trademark Trial and Appeal Board in In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002), as disposing of this question in Respondent’s favor (rejecting registration of <container.com> as a service mark for retail and rental services for shipping containers). Respondent contends that if Complainant’s registrations establish a rebuttable presumption of rights in a mark, its demonstration of genericness is sufficient to overcome that presumption.
Respondent asserts that it has a right and legitimate interest in the disputed domain name. Respondent has been using the name in connection with an active commercial website since July 1999, and was unaware of Complainant or its claim to rights in a mark at the time the disputed domain name was registered and its website established. In addition, customers of Respondent have come to associate it with the name of its website, and it has become commonly associated with the domain name over a period of years.
Respondent asserts that it did not register the disputed domain name in bad faith by attempting to divert customers from Complainant because Respondent was unaware of Complainant and its asserted mark when it registered the disputed domain name. Complainant’s assertions regarding Respondent’s intentions are entirely speculative. Respondent also notes that it could not have attempted to disrupt the business of a competitor of which it was unaware.
Respondent requests the Panel to reject Complainant’s request to direct transfer of the disputed domain name to it.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, Respondent filed a detailed Response. The Panel is satisfied that Respondent had adequate notice of the dispute and opportunity to respond.
As a preliminary matter, the Panel notes that the listed registrant of the disputed domain name, iNet Image, Inc., is a website developer and hosting service which has acted at the request and direction of its client, AWM, in registering the disputed domain name and maintaining content on its website. For purposes of this proceeding, the Panel considers that the intentions of iNet Image may be determined in light of instructions it received from its client, AWM. iNet image was effectively acting as an agent on behalf of its principal. References to Respondent in the remainder of this decision are understood to refer both to iNet and AWM, except as expressly indicated.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
In order to prevail in this proceeding, Complainant must demonstrate that it has rights in a trademark or service mark, and that the disputed domain name is identical or confusingly similar to that name. Complainant asserts rights in the service mark "ABED.COM" and the confusing similarity of the disputed domain name <abed4u.com>.
The facts in this proceeding raise difficult questions regarding whether Complainant has rights in a service mark. As Respondent is aware, the registration of a service mark on the Principal Register at the USPTO establishes a presumption of rights in the mark under U.S. law, although that presumption may be rebutted. Respondent argues that "bed" is a generic term that cannot serve as a service mark in connection with the sale of bedding, and that addition of the indefinite article "a" does not affect the generic character of the claimed mark. Respondent further points to a recent decision of the U.S. Trademark Trial and Appeal Board, In re Martin Container Inc., 65 USPQ2d 1058 (June 11, 2002), deciding that a top level domain name indicator such as ".com" has no source identification function and cannot serve any trademark purpose (citing, inter alia, McCarthy on Trademarks). The TTAB stated, "… neither the generic term nor the domain name indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability" (id. at 1061) .The decision of the TTAB was rendered subsequent to registration of Complainant’s asserted mark.
The USPTO registered Complainant’s asserted mark. The Panel approaches the prospect of differing with a decision of the USPTO with reluctance. Because it is not necessary to make a determination as to whether Complainant has rights in its claimed service mark to dispose of this case, the Panel will not make a determination on that issue. Even if Complainant has the rights in the mark it asserts as evidenced by its registrations at the USPTO, and even if the dispute domain name is confusingly similar to the mark (without so deciding), Respondent will prevail.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))."
Respondent registered the disputed domain name in July 1999, and asserts with supporting sworn affidavits that it began using the name in connection with an active commercial website shortly thereafter. Respondent appears to be engaged in a bona fide offering of goods and services at its website (that is, advertising and providing information regarding the sale of bedding materials at its associated retail stores). Respondent has used the domain name in connection with a bona offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy. Did Respondent, however, use or make preparations to use the disputed domain name "before any notice to [it] of the dispute"?
As noted below, registration of a service mark on the Principal Register at the USPTO establishes constructive notice of the mark as a matter of federal trademark law. Notice of a mark is not necessarily notice of a dispute with the trademark holder. Complainant provided affirmative notice of a dispute to Respondent when it dispatched a cease and desist letter in October 2002. However, even if registration of its mark constituted constructive notice sufficient to make Respondent aware of a dispute, this still occurred after Respondent registered and used the disputed domain name.
The USPTO first registered the claimed "ABED.COM" mark on June 26, 2001. The date of registration on the Principal Register at the USPTO established "constructive notice" of Complainant’s "claim of ownership thereof". Constructive notice may eliminate a good faith defense to adoption of the mark as a matter of federal trademark law. Registration of the mark (assuming it is valid) put Respondent on statutory notice in June 2001, of Complainant’s asserted rights in a mark.
Complainant filed its first service mark application with the USPTO in March 1999. This filing did not establish statutory notice of Complainant’s asserted mark. Respondent has in sworn affidavits denied knowledge of Complainant’s claim to rights in its mark when in July 1999 it registered the disputed domain name.
Complainant’s initial application for registration of its mark on March 16, 1999, constituted constructive "first use" of the mark (which was contingent on registration), but that must be distinguished from constructive notice. Constructive first use may preclude a junior user from establishing priority rights in a mark.
The Panel determines that Respondent registered the disputed domain name and made a bona fide offering of goods and services prior to notice of a dispute within the meaning of paragraph 4(c)(i) of the Policy, and therefore has a legitimate interest in the disputed domain name.
In light of the foregoing determination, the Panel need not examine whether Respondent registered and used the disputed domain name in bad faith.
The Panel therefore declines to direct the registrar to transfer the disputed domain name to Complainant.
The Panel determines that Complainant, Advanced Comfort Inc., has failed to establish that Respondent, iNet Image, Inc., has no legitimate interests in the disputed domain name, <abed4u.com>, within the meaning of paragraphs 4(a)(iii) and 4(c)(i) of the Policy. For the foregoing reason, the Complaint is denied.
Frederick M. Abbott
Dated: February 24, 2003
1. 15 USC§1115(a).
2. 15 USC §1072. From that date forward, Complainant also enjoys a presumption of validity of its mark. 15 USC §1115(a).
3. Even were Respondent aware in July 1999 that a third party had registered and used the domain name , the highly descriptive (if not generic) nature of that registration would not automatically raise concern of potential conflict with a third party trademark.
4. 15 USC §1057(c).
5. See THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS, LAWDESK EDITION, § 26:32 & 26:38 (Version 2.7 December 2002).