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Posts Tagged ‘Transferred’

AirFX, LLC is Free-Falling Without a Parachute

Monday, September 19th, 2011

Although we at DefendMyDomain often blog about UDRP domain name decisions. Sometimes, those decisions go another level higher, into the U.S. federal courts. Under action 15 U.S.C. § 1114(D)(v) a domain name registrant can file a civil action asking the Federal Courts to resolve the dispute. This is sometimes referred to as a reverse domain name hijacking case, depending on the specifics of the case. The prior domain name dispute decision AirFX, LLC v. ATTN AIRFX.COM ( Nat. Arb. Forum FA1384655, May 16, 2011)(available here), was decided by a single member Panel. The Complainant convinced the single member Panel that the elements of the UDRP policy had been met. We are not going to spend time rehashing the elements of that decision, because once the dispute is brought in Federal Court, the UDRP decision is essentially irrelevant. This is an important lesson for those who seek to use the UDRP system. 15 U.S.C. § 1114(D)(v) allows an aggrieved party to seek binding federal court intervention.

Marc J. Randazza, of The Randazza Legal Group, filed the complaint on behalf of the Respondent, which follows well established pleading standards and requirements for these types of actions. (available here) However, the Complainant/Defendant AirFX, LLC, has filed a motion to dismiss, alleging among other things a 12(b)(6) allegation, and other unbelievable theories and accusations. (available here). Among the odd and interesting accusations by AirFX, LLC, they complain that the respondent/plaintiff for the first time is alleging reverse domain name hijacking. This is a misunderstanding of cause of action permitted under 15 U.S.C. § 1114(D)(v). Additionally since the decision at the UDRP level has absolutely no precedential or binding effect, this concept is misplaced. A reverse domain name highjacking claim is one which is permissible in order to prove that the domain name registrants registration was not unlawful.

AirFXS also complains about the location, namely Arizona District Court, in which the case was filed. One of the things that is clear, is when you file a UDRP, you affirmatively select and agree to one of two jurisdictions for a Federal Court challenge. (1) the location of the principal office of the concerned registrar or or (2) where the Respondent is located, as shown by the address(es) given for the domain name holder in the Whois Database at the time of the submission of the Complaint. See UDRP Rule 3(b)(xiii). AirFX asks the Court to transfer the case to another district, namely the Southern District of Indiana. This concept is dead on arrival though, since AirFX was the one demanded the jurisdiction for the resolution of all disputes thus waived any challenge to the jurisdiction.

Essentially, the Motion to Dismiss provides no controlling authority of any kind in the dismissal section. When parties seek to take domains to which they are not entitled, the arguments are often weak. We have seen the Randazza Legal Group in action before and know that AirFX will have their work cut out for them.

We will continue to monitor this case and provide updates. We thought it was an important lesson to provide our readers with an understanding of which arguments should not be raised when defending a reverse domain name highjacking case under 15 U.S.C. § 1114(D)(v).

FORD Has A FIESTA With Domain Names

Thursday, October 21st, 2010

  

In the recent cybersquatting case of Ford Motor Company v. Boomerang Enterprises Inc., FA1344311 (Nat. Arb. Forum October 20, 2010) a single member Panel was faced with a dispute over the domains www.fiesta-armrest.com, www.fiesta-armrest.net, www.fiestaarmrest.com, www.fiestaarmrest.net, and www.fordfiestaarmrest.com. Ford is the well known longstanding car company which needs no introduction. Ford maintains a website at www.ford.com. Ford owns numerous trademark registrations for its FIESTA vehicle. Respondent is an official Ford approved vendor. Respondent claims that it registered and developed the domain names with Ford’s approval and encouragement. As a result Respondent sought to have this dispute not handled under the UDRP, noting that it was contractual and fell outside the purview of the UDRP. The Panel reviewed the information and disagreed with Respondent position regarding the coverage of the UDRP on the facts at issue.

Complainant claims that it has established the elements outlined by the UDRP, and that Respondent’s arguments about Complainant and Respondent’s relationship do not provide sufficient reason for the Panel not to decide the case. Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may thus proceed with the case and consider the contentions of Complainant and Respondent.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel reviewed and applied the elements finding that Complaint satisfied all three. Of interesting note, the Panel reviews the concept of disclaimers in avoiding bad faith.

Complainant argues that a disclaimer posted on a website is too late to avoid confusion among Internet users. Complainant claims that Internet users are misdirected to Respondent’s website before seeing the disclaimer.  Therefore, Complainant contends that Respondent’s disclaimer does not mitigate Respondent’s bad faith registration and use of the disputed domain names. In view of the circumstances of the present case, the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).

Ultimately, the Panel was not swayed by arguments presented by Respondent. Respondent did seek a finding of Reverse Domain Name Hijacking, which the Panel also rejected. The domains were ordered to be TRANSFERRED.

PAM ANDERSON Gets Her Name

Friday, October 1st, 2010

        

In the recent cybersquatting case of Pamela Anderson v. Alberta Hot Rods Case No. D2010-1144 (WIPO September 8, 2010) a three member panel was faced with a dispute over the domain www.pamanderson.com. Pamela Anderson is well known for her acting and modeling. She has multiple trademark registration for the mark PAMELA ANDERSON. She maintains a website at www.pamelaanderson.com. Respondent registered the disputed domain on March 1, 1997 and filed a Response to the Complaint. The parties have been involved in an earlier UDRP proceeding concerning the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, which resulted in the transfer of those domain names (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104).

Under paragraph 4(a) of the ICANN UDRP Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel explained that it must view Anderson’s rights in the mark based on common law, since the Federal trademark rights do not predate the registration of the domain. A discussion of common law rights extending to an abbreviation of Anderson’s first name from PAMELA to PAM, concluded in a finding that it could be found to be confusingly similar. The Panel was satisfied that the domain was confusingly similar to the mark.

Moving on to the second element, the Panel noted that Anderson claims the Respondent is not commonly known by the disputed domain and does not have authorization to use the domain or mark. The Panel noted the following arguments presented by Respondent:

The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive. However, the Respondent did not provide any evidence of any contemplated good faith use and therefore failed to prove rights or legitimate interests in the disputed domain name under the Policy.

The Panel found this element also favored Complainant. Moving onto the final element, bad faith registration and use, the Panel made the following observations regarding Respondent knowledge and actions.

Given the Complainant’s broad media coverage and the fact that the Respondent registered the disputed domain name in a chronological sequence with the domain names disputed in Pamela Anderson v. Alberta Hot Rods, supra, (<pamelaanderson.com> registered on November 6, 1996; <pamanderson.com> registered on March 1, 1997; <pamelalee.com> registered on March 27, 1997; <pamelaanderson.net> registered on February 25, 1998), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is further supported by the fact that the Complainant seems drawn towards registering well-known people’s names as domain names and therefore seems to be familiar with or at least interested in celebrities. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel also applied the consensus view regarding lack of active use of a domain, and explained “In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name amounts to use in bad faith.”

Ultimately, the Panel found that all elements were satisfied and ordered the domain be Transferred. This decision was not unanimous though as one of the Panelists provided a dissenting opinion. Additionally, The Panel dismissed the request for Reverse Domain Name Highjacking presented by Respondent.

DISNEY Does Not Like This Cybersquatter’s ‘Offer’

Wednesday, September 1st, 2010

 

In the recent cybersquatting case of Disney Enterprises, Inc. v. ll aka Joe Comeau FA1336979 (Nat. Arb. Forum, August 31, 2010) a single member Panel was faced with a dispute over the domain www.DisneyOffer.com. Disney needs no introduction in this case. You should know who they are, unless you have been living in the one or two places where they haven’t been able to advertise or sell products and services. Either way, go to www.disney.com for anything your heart desires. Respondent filed a response to this dispute and presented some interesting arguments.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel quickly dispensed with the first prong, noting that the DISNEY mark is well established and that the disputed domain contained all of the mark including the additional word “offers.”

Moving to the second prong, the Panel noted that DISNEY had met its small initial burden of proving a prima facie case that Respondent lacked any rights or interests. This included claims that Respondent was not commonly known by the disputed domain. The Panel shifted the burden to Respondent and explained:

Respondent offers no evidence which might tend to show that he has rights in respect of  the domain name pursuant to Policy ¶4(c), or otherwise. Respondent offers no explanation as to why he registered a domain name which overtly references Complainant’s DISNEY trademark and he admits he has not built a website associated with the disputed domain name. Respondent states that the webpage referenced by the at-issue domain name is merely a holding page provided by the registrar, Go-Daddy. Respondent makes no claims regarding any intended use for the domain name.  Furthermore, Respondent makes no claims that he is somehow making a legitimate non-commercial or fair use of the domain name.

The Panel thus found that this second prong was proven. Moving to the third prong, bad faith, the Panel made some relevant findings. First the Paenl explained Respondent failed to present any justification that he did not register the domain name for any r3eason other then the value of the mark. Additionally, the Panel found that Respondent had registered well known domain names in the past using other marks such as EBAY and CHEVY.

The Panel found that Respondent offered to sell the disputed domain to DISNEY after recieving a cease and desist letter, which was is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(I). Respondent had argued that “If Respondent has to turn over the domain name to Complainant, it should at least in good faith have to give Respondent the renewal fees paid over the past few years.” Other interesting arguments presented by Respondent included:

Just because Complainant holds onto the name “disney” it does not have the right to squash and try to control every other holder of the word “disney” in the English speaking community or every domain name with the word “disney” in it. They own the market and brand name, but they do not own the word “disney” across the entire English language as long as those interests pose no threat or try to infringe upon their business.

Lastly, the Panel found that the disputed domain resolved to a parked site, featuring links to third parties offering competing goods and services. For all these reasons, the Panel found that DISNEY met its burden of proving all three prongs and ordered the domain be TRANSFERRED.

WRESTLEMANIA Domain Fight Not Worthy Of Pay-Per-View

Friday, July 9th, 2010

wrestlemania

In the recent domain name dispute decision of World Wrestling Entertainment Inc. v. Israel Joffe WIPO D2010-0860 (July 1, 2010) a single member Panel was faced with a decision over the domains www.wrestlemania26.com, www.wrestlemania27.com and  www.wrestlemania28.com. Complaint is the well known media and sports entertainment company responsible for much of the past few decades worth of wrestling entertainment. They maintain a website at www.wwe.com. WWE claims rights to the WRESTLEMANIA mark dating back to 1985.

Respondent provided a short response to the Complaint which states in full as follows:

Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. However if the person does not attempt to sell the name to the company, then no laws have been violated since intent to sell in bad faith has not been proven. In Virtual Works, Inc. v. Volkswagen of America, Inc. (a dispute over the domain vw.net), the [United States] Fourth Circuit Court of Appeals created a common law requirement that the cybersquatter exhibit a bad faith intent in order to confer liability. This means that domain names bearing close resemblance to trademarked names are not per se impermissible. Rather, the domain name must have been registered with the bad faith intent to later sell it to the trademark holder. This “bad faith” concept is reiterated in 15 U.S.C. § 1125 and U.S.C. § 1129. I never had any intention of selling the names to WWE and made no attempts to sell it to them. They have not proven that I tried to sell them the name, therefore no laws have been violated and I should be allowed to keep the domain names.

The Panel did not buy these arguments and explained that paragraph 4(a) provides a non-exhaustive list of examples to prove bad faith. The Panel noted that the websites were not active and through its own research appeared to never have been active. Regardless, the Panel still explored the Respondent sole reason for proving lack of bad faith and stated:

The panel in Telstra, supra, and scores of panels subsequently, have found that “warehousing” or simply registering and holding a domain name whose dominant feature is a famous mark, is use in bad faith. This is now a well-settled rule of decision in UDRP proceedings. See WIPO Overview, paragraph 3.2, Consensus View: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.”

Ultimately, the Panel found that Complaint satisfied all three elements and ordered the domains be TRANSFERRED.

JAGER BOMBS Are Fun And Are Protected Trademarks

Wednesday, May 19th, 2010

jager

Walk over to any college campus bar and just say the words JAGER BOMB and you will likely get mixed reactions of joy and pain from the students. For years the JAGER BOMB has been a popular drink at bars across the country, and around the world. The people at Mast-Jaegermeister AG know this and made sure to get protection for this famous mixed drink. They have a registration for the JAGER BOMB mark and filed a UDRP domain dispute for the domain www.jager-bomb.com. In Mast-Jaegermeister AG v. John Marzlak FA1317337 (Nat. Arb. Forum, May 18, 2010) a single member Panel agreed with the liquor manufacturer and agreed to transfer the domain. Complainant maintains a website at www.jager.com.

The decision did highlight one relevant fact, which had respondent provided a response may have been fleshed out in more detail. The disputed domain was being used to promote the sale of Jager Bomb Shot Cups. Complainant made note of this and the Panel explained:

Respondent capitalizes on the confusingly similar domain name to attract Internet users seeking Complainant’s website to a website offering plastic cups for consumers to use with Complainant’s product.  Therefore, the Panel finds that such diversionary use of the disputed domain name for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). 

          jager-2

There wasn’t anything too exciting or different about this decision. One side note, the domain www.jagebomb.com is parked with “coming soon” text and an info@jagerbomb.com email address. The domain has a privacy service so it is unclear whether Complainant owns it or whether it will be developed. Complainant appears to operate or at least authorize a website devoted to cups just for Jager bombs, namely www.jagerbombcups.com.

ASHLEY MADISON Gives Cheaters 101 More Domains

Monday, May 17th, 2010

ashleymadison

If you haven’t heard about Ashley Madison, then you are likely in a committed relationship and would never even consider cheating or you don’t pay much attention to commercials. In the recent cybersquatting case of Avid Dating Life, Inc. v. Private Whois Service FA1318204 (Nat. Arb. Forum May 13, 2010) a single member Panel was faced with a dispute over 101 domains. A full list of the domains is provided in the decision. Complainant is the owner of the well known website www.AshleyMadison.com where people can seek out others who are in committed relationships seeking to have an affair. As their own tag line states “Life is Short. Have an Affair.” No matter what you may think about such a service, it has become wildly popular and boasts nearly 6 million anonymous members. One of the disputed domains was registered in 2005, while all the others were registered in 2008 and 2009. Complainant has federal trademark rights dating back to at least 2004.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel began its analysis noting that Complainant established rights in its ASHLEY MADISON mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. All of the disputed domain names contained some typographical modification to the registered mark. The Panel found these domains were confusingly similar to the registered mark since they were common misspellings. For this reason, the Panel found that Policy ¶ 4(a)(i) had been satisfied.

The second part of the analysis the Panel noted that Complainant presented a prima facie case, and although Respondent failed to respond, it still chose to review the facts. The Panel found that Respondent was not commonly known by the disputed domains. Evidence presented to the Panel included proof that two of the disputed domains contained links to competing adult dating websites.

The Panel finds that Respondent’s use of the <ashleymadis0on.com> and <ashleymadision.com> domain names to display third-party links to competitors of Complainant is not a use in connection with 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).

The Complainant noted that the other 99 domains did not resolve to active websites. The Panl found that failure to make active use of the domains meant they were “not connected with a bona fide offering or goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” And lastly under this section, the Panel found “registration of the disputed domain names containing misspelled versions of Complainant’s mark is further evidence of Respondent’s lack of rights and legitimate interests in the names under Policy ¶ 4(a)(ii).” For all these reasons, Policy ¶ 4(a)(ii) had been satisfied.

Moving to the final element, bad faith, the Panel repeated many of the same facts and applied them in this section as stated earlier. This includes, the third party links, the inactive websites, the typographical variations on the domain names. The Panel also found that “Respondent’s registration of many trademark infringing domain names within a short period of time is evidence of bad faith registration and use under Policy ¶ 4(b)(ii).” For all these reasons, Policy ¶ 4(a)(iii) had been satisfied.

Ultimately, the Panel found that Complainant presented and proved all three elements, and ordered the domains be TRANSFERRED.

CHECKJET Domain Barely Clears the Runway??

Thursday, May 13th, 2010

           checkjet

In an odd, yet interesting recent domain name dispute, a single member Panel essentially punted on making a ruling, since the Respondent consented to the transfer. In Bond Fletcher, Chief Executive Officer c/o Typehaus, Inc. v. Brian Kemmenoe FA1316357 (Nat. Arb. Forum May 12, 2010) the dispute over the domain name www.checkjet.com barely cleared the runway before coming to a short end. Complainant has a federal registration over the mark CHECKJET for “Computer hardware and software for creating, generating and printing checks.” The disputed domain was registered in March 2007, whereas the CHECKJET trademark rights did not accrue until April 2007.
 
The domain was renewed in March 2010, shortly after Complainant put Respondent on notice of possible trademark infringement.  The Respondent replied to the dispute, noting that the domain was registered prior to the creation of any trademark rights. However, the Respondent consented to the transfer and essentially forced the hand of the Panelist. What is odd about this case is the Panelist clearly wanted to explore the facts of the case and render a full ruling.

The Panel notes that the domain name was registered before Complainant acquired any trademark rights and finds that there are no circumstances to indicate that Respondent could have had Complainant or its mark in mind when he registered the domain name in March, 2007. But for Respondent’s consent to the transfer of the domain name to Complainant, this case would have presented an opportunity to consider the careful reasoning in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, which questions whether it is appropriate to continue to follow early Panel decisions that do not accept renewal as registration for the purposes of the Policy.

One can only wonder what the outcome would have been. It is unclear why this Panelist chose not to go through the factors, as other Panels had done, despite the Respondent’s consent for transfer. Infamous Cybersquatter Texas Property Associates often consents to the transfer, however many Panels choose to go through the full analysis anyway. Regardless, the Panel granted the TRANSFER, but made it clear there were no adverse findings to Respondent.

24 Hour Fitness Doesn’t Close and Doesn’t Like Typosquatters

Friday, May 7th, 2010

24hrfitness

In the recent domain name dispute decision of 24 Hour Fitness USA, Inc. v. Privacy Locked c/o Privacy Locked LLC FA1315677 (Nat. Arb. Forum, May 6, 2010) a single member Panel was faced with a dispute over the domain www.24horfitness.com. Complainant is the well known national chain of fitness centers and maintains a website at www.24hourfitness.com. Complainant has a trademark registration for 24HOURFITNESS.COM since October 2000. Respondent failed to respond to the Complaint. 

Paragraph 4(a) of the ICANN UDRP 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.

The Panel began with a discussion of finding that the Complaint’s rights in the mark 24HOURFITNESS.COM were sufficient to establish trademark rights for the purposes of this dispute. “The Panel finds the misspelling of the mark in the disputed domain name does not differentiate the disputed domain name from Complainant’s mark and that the disputed domain name is confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i).” 

For the second element, whether or not respondent had any rights or legitimate interests in the domain, the Panel explained that 24 Hour Fitness had presented a prima facie case, and that although the Respondent did not respond, the Panel still reviewed the facts and evidence presented. First the Panel found that Respondent’s WHOIS information showed it was not commonly known by the disputed domain name. Second the domain name resolved to a web directory with third party competitor links. For this reason, Respondent had failed to use the domain for a bona fide offering of goods ro services. Lastly since this domain was an intentional misspelling of the mark, it was considered typosquatting and thus violated the Policy.

Moving to the final element, bad faith, the Panel explained that the third party competitor links were evidence of bad faith since it would disrupt Complainant’s business. Additionally, the practice of typosquatting was found to be bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 

For all these reasons, the Panel found that Complainant met the requirements and ruled that the domain be TRANSFERRED.

Two Mattress Companies In Pillow Fight Over Domain

Friday, April 2nd, 2010

   Print

In the recent cybersquatting case of National Bedding Company L.L.C. v. Back To Bed, Inc. (WIPO D2010-0106, March 24, 2010), a single member Panel was faced with a dispute over the domain www.americasmatresses.com. Complainant sells mattresses using the service mark AMERICA’S MATTRESS. It maintains a web site at www.americasmattress.com. Complainant has two registered marks relating to mattresses. The Respondent operates a number of mattress stores, also in the state of Illinois. Respondent failed to respond to the dispute. Respondent maintains a web site at www.backtobed.com. The disputed domain name was first registered in 2004.

Paragraph 4(a) of the ICANN UDRP Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) The respondent has no rights or legitimate interests with respect to the domain name; and (iii) The domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that “the disputed domain name, which is merely the plural form of the Complainant’s mark, unquestionably is confusingly similar to the mark.”

The Panel next addressed whether Respondent had any rights or legitimate interests in the domain, and recognized that although there was no response by the Respondent, the Panel chose to review the facts.

The Panel is not persuaded from the record of this case that the Respondent registered and has used the disputed domain name based on a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics. It can scarcely be gainsaid from the record that the Respondent was unaware of the Complainant’s prior use of the AMERICA’S MATTRESS mark, given that the Complainant and the Respondent compete directly with each other in the Chicago, Illinois area and over the Internet. To the contrary, the Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the domain name and the Complainant’s mark, intending to attract Internet users to the Respondent’s website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

Regarding the final element, the Panel relied on its prior conclusions regarding that Respondent must have known of Complainant due to the geographic proximity. The Panel found that Respondent “intentionally attract[ed] Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation.”

Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain be TRANSFERRED.

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