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 world’s 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 Respondent’s 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 Complainant’s mark SERTA and/or PERFECTSLEEPER are confusingly similar to Complainant’s marks.  

Respondent admitted that (1) it did not have authorization to promote Complainant’s products, (2) it had knowledge of Complainant’s 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. 

Respondent’s admission that it could not use the Domain Names without Complainant’s permission.  Accordingly, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names.

Although Respondent’s 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 Complaint’s industry, Respondent must have contemplated Complainant and/or Complainant’s 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’s 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 WIPO’s 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 WIPO’s 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 Respondent’s 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 Complainant’s 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 Panel’s 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 world’s 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.  Complainant’s products are available in over 6,000 furniture and department stores, sleep specialty shops, and national chain stores in the United States and Canada.  Complainant’s 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 Respondent’s 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 Respondent’s 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.  Respondent’s 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 Respondent’s 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 Complainant’s 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 Serta’s 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 Complainant’s allegation that Respondent does not have a legitimate interest in the Domain Names.  

Respondent agreed with Complainant’s assertion that Respondent had knowledge of Complainant’s 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 Complainant’s 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 Serta’s 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 Complainant’s mark SERTA, are confusingly similar to Complainant’s marks.  The domain names BUYAPERFECTSLEEPER.COM, BUYPERFECTSLEEPER.COM, and BUYSERTAPERFECTSLEEPER.COM, as each fully incorporates Complainant’s mark PERFECT SLEEPER, are confusingly similar to Complainant’s marks.
Respondent admitted that (1) it did not have authorization to promote Complainant’s products, (2) it had knowledge of Complainant’s 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 Complainant’s 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. Respondent’s admissions preclude the legitimate interests detailed in Sections 4(c)(ii) and (iii), namely, that Respondent’s 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 Respondent’s offer to sell the Domain Names discussed below and Respondent’s admission that it could not use the Domain Names without Complainant’s 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 Respondent’s 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 Complaint’s industry, Respondent must have contemplated Complainant and/or Complainant’s 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 NSI’s registration fee of $70 for a two-year period.  Respondent’s 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 Respondent’s 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 Complainant’s 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