Serta, Inc. v. Maximum Investment Corporation
[Indexed as: Serta v. Maximum Investment]
[Indexed as: buyserta.com et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0123
Commenced: 6 March 2000
Judgment: 18 April 2000
Presiding Panelist: David M. Kelly
Domain name - Domain name dispute resolution policy - U.S. Trademark - Confusingly similar - Bad faith registration - Bad faith use Legitimate Interests Bona fide offering of goods Bona fide offering of services Indirect offer of sale Advertisement Constructive offer of sale - Cybersquatting.
Complainant is the owner of U.S. Trademarks for various forms of the mark SERTA and PERFECT SLEEPER. Complainant, through its licensees, is one of the worlds largest manufacturers of mattresses, mattress foundations and other bedding products.
Respondent registered the Domain Names in February 1999. Respondent operates the website MattressAmerica.com, which advertises Respondents plan to sell mattress sets, headboards, bedsteads, daybeds, futons, futon mattresses, futon covers, and bedding accessories.
Complainant alleged that Respondent registered the Domain Names in bad faith, namely that Respondent registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to Complainant for valuable consideration. Complainant further alleged that (1) the Domain Names are not the names, business names or common trade names of Respondent, (2) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, and (3) Respondent is not making legitimate noncommercial or fair use of the Domain Names.
Held, Name Transferred to Complainant
The domain names fully incorporate Complainants mark SERTA and/or PERFECTSLEEPER are confusingly similar to Complainants marks.
Respondent admitted that (1) it did not have authorization to promote Complainants products, (2) it had knowledge of Complainants marks, and (3) it intended to sell products in the same class of goods and services as Complainant. For these reasons, the Panel finds that Respondent could not have been using or preparing to use the Domain Names in connection with a bona fide offering of goods or services prior to the dispute.
Respondents admission that it could not use the Domain Names without Complainants permission. Accordingly, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names.
Although Respondents advertisement offered the Domain Names for sale, Respondent insisted they did not intend to sell them to the Complainant. But by choosing to advertise in magazines targeted to Complaints industry, Respondent must have contemplated Complainant and/or Complainants competitors as potential buyers for the Domain Names. The Panel finds that Complainant received the offer of sale by virtue of its receipt and reading of the advertisement. Respondents intention to raise capital for its business, in conjunction with its solicitation for high bids, clearly indicates that Respondent was not seeking reimbursement of its expenses. Bad faith was proved.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Cases referred to
Panavision International, L.P. v. Dennis Toeppen, et al., 141 F.
World Wrestling Federation Entertainment, Inc. v. Michael Bosman (WIPO
Case No. D99-0001)
Panel Decision referred to
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Kelly, Panelist: -
1. The Parties
Complainant is Serta, Inc., a corporation organized under the laws of
the state of Delaware, with its principal place located at 325 Spring Lake
Drive, Itasca, Illinois, 60143. Respondent is Maximum Investment
Corporation, a corporation with its principal place of business located
at 48 Rosewell Road, Bedford, New Hampshire, 03110.
2. The Domain Names and Registrar
The domain names at issue are BUYSERTA.COM, BUYASERTA.COM, BUYPERFECTSLEEPER.COM,
BUYAPERFECTSLEEPER.COM, and BUYSERTAPERFECTSLEEPER.COM (the Domain Names).
The registrar of the Domain Names is Network Solutions, Inc. (NSI).
3. Procedural History
On March 3, 2000, Complainant submitted its Complaint, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the WIPO Center).
On March 3, 2000, WIPO completed a Formal Requirements Compliance Checklist. The Panel has independently determined and agrees with WIPOs assessment that the Complaint is in formal compliance with the requirements of Uniform Domain Name Dispute Resolution Policy (UDRP), the Rules for Uniform Domain Name Dispute Resolution Policy, and WIPOs Supplemental Rules for Uniform Domain Dispute Resolution Policy.
On March 5, 2000, WIPO sent a Request for Registrar Verification via
email to NSI. On March 6, 2000, NSI confirmed via email to WIPO that
the Domain Names are currently registered to Respondent and are in active
status. NSI further confirmed that Respondents registrations of
the Domain Names are subject to the UDRP.
On March 6, 2000, WIPO sent an Acknowledgment of Receipt to Complainant.
On March 9, 2000, WIPO sent a Notification of Complaint to Respondent.
On March 29, 2000, Respondent filed its timely Response with WIPO, and
WIPO sent its Acknowledgment of Receipt of Response. On March 30,
2000, WIPO responded to Complainants request of March 29, 2000 to submit
a reply to the Response, and informed Complainant that additional submissions
would be accepted only if requested by the Panel. No further submissions
were received. On March 31, 2000, David M. Kelly submitted a Statement
of Acceptance and Declaration of Impartiality and Independence to WIPO.
On April 5, 2000, WIPO sent to Complainant and Respondent a Notification
of Appointment of Panel, appointing David M. Kelly as Panelist and scheduling
April 19, 2000 as the date for issuance for the Panels decision.
The language of the proceeding is English.
4. Factual Background
Complainant is the owner of the following U.S. Trademark Registrations: No. 582, 463, No. 1,180,198 and No. 2,041,918 for the mark SERTA; No. 1,864,743 and No. 2,041,919 for the mark SERTA with Swirl Logo; No. 582,464 for the mark SERTA with Block and Swirl Logo; and No. 581,897 and No. 2,037,182 for the mark PERFECT SLEEPER.
Complainant, through its licensees, is one of the worlds largest manufacturers of mattresses, mattress foundations and other bedding products, having sold in excess of $800 million of SERTA and PERFECT SLEEPER branded products in 1999. Complainant has been using the SERTA and PERFECT SLEEPER marks to identify its goods since the 1930s. Complainants products are available in over 6,000 furniture and department stores, sleep specialty shops, and national chain stores in the United States and Canada. Complainants products are advertised on television, radio, and in national newspapers.
Respondent registered the Domain Names in February 1999. Respondent
operates the website MattressAmerica.com, which advertises Respondents
plan to sell mattress sets, headboards, bedsteads, daybeds, futons, futon
mattresses, futon covers, and bedding accessories.
5. Parties Contentions
A. Complainant
Complainant alleged that Respondent registered the Domain Names in bad faith under Section 4(b)(i) of the UDRP. Namely, Complainant alleged that Respondent registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to Complainant for valuable consideration.
Complainant provided a copy of Respondents advertisement in the February
2000 edition of E-Commerce Business, a supplement to the magazines Furniture/Today,
Home Accents Today, Home Textiles Today, and Twice Gifts & Decorative
Accessories. Respondents advertisement reads: 200 Top Furniture
Domains for Sale or Joint Venture, and All 200 domain names available
as a complete package will sell to high bid and/or BEST opportunity.
The list of domain names featured in the advertisement included the Domain
Names.
Complainant further alleged that (1) the Domain Names are not the names,
business names or common trade names of Respondent, (2) Respondent
is not using the Domain Names in connection with a bona fide offering of
goods or services, and (3) Respondent is not making legitimate noncommercial
or fair use of the Domain Names.
Complainant stated that its business has been disrupted through Respondents registration of the Domain Names, but did not allege bad faith under Section 4(b)(iii) of the UDRP.
Complainant observed that the Domain Names have not and do not resolve to active websites.
B. Respondent
Respondent agreed with Complainants statement that there are no servers connected to the Domain Names, stating that: This is true, as I did not feel it was appropriate to go live with a website that was less than perfect, and I did not have written authorization to promote Sertas products, or to link this site with their authorized dealer base.
Citing its development of a website for the period of over a year, Respondent disagreed with Complainants allegation that Respondent does not have a legitimate interest in the Domain Names.
Respondent agreed with Complainants assertion that Respondent had knowledge of Complainants SERTA and PERFECT SLEEPER marks when registering the Domain Names. Respondent acknowledged running the above-described advertisement, because Respondent was attempting to raise U.S. 3 million in capital for its business. However, Respondent denied Complainants allegation that Respondent had registered the Domain Names in bad faith: At no time did I ever attempt to or consider selling these names to the complainant. I always intended for these names to stay together. Over 200 names specifically relating to the furniture industry, which is where I make my living. Not Cybersquatting which I take great offense to this insinuation. Respondent further asserted that it has never sold a domain name.
Respondent stated, It is not my intent to disrupt Sertas business,
only to promote their product, if Serta wished to be included in the buynewfurniture.com
affiliate program.
6. Discussion and Findings
Paragraph 4(a) of the UDRP directs that the complainant must prove each of the following: (1) that 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, (2) that the respondent has no rights or legitimate interests in respect of the domain name; and, (3) the domain name has been registered and used in bad faith.
The domain names BUYASERTA.COM and BUYSERTA.COM, as each fully incorporates
Complainants mark SERTA, are confusingly similar to Complainants marks.
The domain names BUYAPERFECTSLEEPER.COM, BUYPERFECTSLEEPER.COM, and BUYSERTAPERFECTSLEEPER.COM,
as each fully incorporates Complainants mark PERFECT SLEEPER, are confusingly
similar to Complainants marks.
Respondent admitted that (1) it did not have authorization to promote
Complainants products, (2) it had knowledge of Complainants marks, and
(3) it intended to sell products in the same class of goods and services
as Complainant. Respondent is not a licensee of Complainant or otherwise
authorized to use Complainants marks. For these reasons, the Panel
finds that Respondent could not have been using or preparing to use the
Domain Names in connection with a bona fide offering of goods or services
prior to the dispute. Respondents admissions preclude the legitimate interests
detailed in Sections 4(c)(ii) and (iii), namely, that Respondents rights
could be demonstrated by it being commonly known as the Domain Names or
that Respondent is making noncommercial fair use of the Domain Names.
Although not articulated by Respondent, its Response could be construed
as asserting that its registration of the Domain Names constituted a nominative
fair use. The Panel finds that it does not need to reach this issue,
however, in view of Respondents offer to sell the Domain Names discussed
below and Respondents admission that it could not use the Domain Names
without Complainants permission. Accordingly, the Panel finds that
Respondent has no rights or legitimate interest in the Domain Names.
Paragraph 4(b)(i) of the UDRP provides that the following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith: . . . circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
Although Respondents advertisement offered the Domain Names for sale, Respondent insisted that it did not offer the Domain Names for sale to Complainant, but instead intended to sell the 200 domain names together as a group to a venture capitalist or other buyer. By choosing to advertise in magazines targeted to Complaints industry, Respondent must have contemplated Complainant and/or Complainants competitors as potential buyers for the Domain Names. The Panel finds that Complainant received the offer of sale by virtue of its receipt and reading of the advertisement.
Respondent did not offer evidence documenting its out-of-pocket expenses relating to the registration and use of the Domain Names, and did not specify a price for each of the Domain Names on its advertisement. Instead, the advertisement solicited a high bid and/or BEST opportunity. In its Response, Respondent named a figure of U.S. $3 million for the group of 200 names, which the Panel calculates to be U.S. $15,000 per domain name, a number far in excess of NSIs registration fee of $70 for a two-year period. Respondents intention to raise capital for its business, in conjunction with its solicitation for high bids, clearly indicates that Respondent was not seeking reimbursement of its expenses.
Following U.S. case law and UDRP precedents, the Panel finds that Respondents offer to sell the Domain Names constitutes use of the Domain Names in commerce and meets the use requirement of the UDRP. See Panavision International, L.P. v. Dennis Toeppen, et al., 141 F.
3d 1316 (9th Cir. 1998); World Wrestling Federation Entertainment, Inc.
v. Michael Bosman (WIPO Case No. D99-0001). In conclusion, the Panel
finds that Respondent acted in bad faith pursuant to Section 4(b)(i) of
the UDRP.
7. Decision
The Panel decides that (1) the Domain Names registered by Respondent are identical or confusingly similar to Complainants marks, (2) that Respondent has no rights or legitimate interests in respect of the Domain Names, and (3) that the Domain Names have been registered and used in bad faith.
Therefore, the Panel requires that the domain names BUYSERTA.COM, BUYASERTA.COM,
BUYPERFECTSLEEPER.COM, BUYAPERFECTSLEEPER.COM, and BUYSERTAPERFECTSLEEPER.COM
be transferred to Serta, Inc., Complainant.
David M. Kelly
Presiding Panelist
Dated: April 18, 2000
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