Dial-A-Mattress Operating Corp. v. noname.com

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Dial-A-Mattress

Operating Corp. v. Noname.com, Inc.

Case No.

D2001-0240

1. The Parties

Complainant is Dial-A-Mattress

Operating Corp. , a New York Corporation, located in Long Island City, New

York, USA.

Respondent is Noname.com,

Inc., located in Fremont, California, USA.

2. The Domain Name

and Registrar

The domain name at issue

is ("Domain Name") <mattres.com>.

The registrar is Tucows.com,

Inc.

3. Procedural History

This action is subject

to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October

24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain

Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The Complaint was submitted

on February 14, 2001. The Response was submitted on March 16, 2001. A Reply

to the Response was submitted on March 26, 2001. Respondent submitted an

Objection to Complainant's Reply on April 3, 2001.

On April 30, 2001,

Mark V. B. Partridge, M. Scott Donahey and David E. Sorkin were appointed

Panelists.

4. Factual Background

Complainant is engaged

in the sale of mattresses, bedding and related items. In connection with its

business, Complainant uses the mark "1-800-MATTRESS, AND LEAVE OFF THE S THAT'S

S FOR SAVINGS", which is the subject of a U.S. registration, Reg. No. 1,728,356,

Reg. Date October 27, 1992, for "retail outlet services and retail direct sale

of mattresses." Complainant also uses the mark (---) MATTRES, which can be used

with any area code and is the subject of a U.S. registration, Reg. No. 1,589,453,

Reg. Date March 27,

1990, for the same services. As a result of long and extensive use, Complainant's

marks have become well known.

Complainant holds a

domain name registration for <mattress.com>, which is used for a web

site relating to its retail mattress sales. The web site prominently features

the slogan "1-800-MATTRESS LEAVE OFF THE LAST S FOR SAVINGS." This mark

is also featured in Complainant's print advertising.

Respondent registered

the Domain Name on May 9, 2000, and has used the Domain Name for a site

that provides links to retailers of various products, including mattresses.

Respondent is not directly engaged in the retail sale of any products. Its

business appears to be based on the registration of multiple domain names

used for profit by direct traffic to the web sites of others. Respondent

has been the subject of other UDRP proceedings, including Interactive

Television Corp. v. Noname.com, WIPO case No. D2000-0358 (rendering

decision in favor of Respondent).

When Complainant learned

of Respondent's Domain Name registration and use, it sent letters of objection.

This proceeding followed.

5. Parties’ Contentions

Complainant contends

that the Domain Name is confusingly similar to its marks, that Respondent

has no rights or legitimate interests in the Domain Name, and that Respondent

has registered and used the Domain Name in bad faith as a deliberate attempt

to trade on Complainant's mark.

Respondent contends

that the Domain Name is not confusingly similar to Complainant's marks and

that Complainant lacks any rights in the generic term "mattress" or its

phonetic equivalent "mattres."

Respondent further

claims it has a legitimate interest, because Respondent made a bona fide

use of the Domain Name and has a right to use the generic term "mattres".

Finally, Respondent

denies that he has acted in bad faith, noting that it has made no attempt

to sell the Domain Name for profit. Respondent also asks for a finding of

reverse domain name hijacking.

6. Discussion

To obtain relief under

the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a)

of the Policy requires the Complainant to 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) that

the domain name has been registered and is being used in bad faith.

A. Confusing Similarity

Complainant has established

rights in the mark "1-800-MATTRESS LEAVE OFF THE S FOR SAVINGS" based on

use. This mark as a whole is not generic and has become well-known through

wide-spread use. Because of that use, we rely primarily on this mark as

the basis for our decision. Complainant has also demonstrated rights in

the marks "1-800-MATTRES, AND LEAVE OFF THE LAST S THAT'S S FOR SAVINGS"

and "(---) MATTRES" based on registration.

The Domain Name is

not identical to Complainant's mark, but confusingly similar to the connotation

created by Complainant's mark. Respondent's Domain Name is formed by leaving

off the last "S" in "Mattress," which is exactly what Complainant's well-advertised

mark invites consumers to do. Therefore, consumers familiar with Complainant's

mark may be misled to Respondent's site based on confusion between the mark

and the Domain Name. Therefore, we find that Complainant has met the requirements

of Paragraph 4(a)(i) of the Policy.

Respondent's reliance on

Interactive Television Corp. v. Noname.com, WIPO Case No. D2000-0358,

seems to miss a distinguishing feature of that case. In Interactive Television,

the Panel, which included the Presiding Panelist in this case, found that the

Complainant had failed to establish rights in the mark at issue. As a result,

the question of confusion was never reached. Here, the case is not based on

a claim of exclusive rights in "mattress" or "mattres." Instead, Complainant

has established rights in its slogan, and Respondent has used a Domain Name

that is confusingly similar to that slogan.

B. Legitimate

Interests

Under the Policy, legitimate

interests in a domain name may be demonstrated by showing that: (i) before

any notice of this dispute, respondent used, or demonstrably prepared to

use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; (ii) respondent has been

commonly known by the domain name, even if no trademark or service mark

rights have been acquired; or (iii) respondent is making a legitimate noncommercial

or fair use of the domain name, without intent for commercial gain to misleadingly

divert customers or to tarnish the trademark at issue. Policy 4(c).

Here, Respondent contends

that it has a legitimate interest because it offers goods for sale at its site

and did so before it received an objection from Complainant. Other cases, however,

recognize that consideration of good faith is a key issue in determining whether

use is bona fide under the policy. See World Wrestling Federation Entertainment,

Inc. v. Rift, ICANN D2000-1499 (WIPO

2000)("not all use prior to notice of the dispute can qualify as bona fide use").

As explained in Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com",

ICANN D2000-0847 (WIPO 2000), intentionally

infringing use should not be viewed as bona fide use:

We . . . conclude

that use which intentionally trades on the fame of another can not constitute

a "bona fide" offering of goods or services. To conclude otherwise

would mean that a Respondent could rely on intentional infringement to

demonstrate a legitimate interest, an interpretation that is obviously

contrary to the intent of the Policy.

Here, there is no dispute

that Respondent has used the Domain Name for the sale of goods. However,

that alone is inconclusive. Use of MATTRES to trade on Complainant's goodwill

would not be a bona fide use under the Policy. It appears that Respondent

uses the Domain Name as a means of attracting Internet Users to its site

where it provides links to retailers selling a variety of products, including

mattresses. This is not a case where Respondent is only using Complainant's

mark to describe the products it sells. Instead, it seems the mark is used

as "bait" to lead consumers to its site. Given the fame and registration

of Complainant's mark, we find that Respondent either knew or should have

known that its use of the Domain Name was likely to trade on Complainant's

goodwill. As a result, we believe Respondent's use of the Domain Name prior

to receiving an objection does not demonstrate a legitimate interest under

the Policy.

Respondent also contends

that it has a right to the Domain Name, because it is making fair use of

a generic term. Federal Court decisions have recognized the "mattress" and

the phonetic equivalent "mattres" are generic terms for "mattress." See

Dial-a-Mattress v. Page, 880 F.2d 675 (2d. Cir. 1989); In Re Dial-A-Mattress,

Case No. 00-1197 (Fed. Cir., Feb. 13, 2001). Indeed, Complainant does

not, and could not, claim exclusive rights in the generic term "mattress."

The issue here, however, is not whether Complainant has enforceable rights

in a generic term. Rather, the issue is whether Respondent makes fair use

of a term that is confusingly similar to Complainant's slogan.

The fact that "mattres"

is the legal equivalent of the generic term "mattress" does not alone establish

a fair use defense under the policy. Under U.S. law, which is applicable

to the parties to this case, fair use is defined by statute as "a use, otherwise

than as a mark . . . of a term or device which is descriptive of and used

fairly and in good faith only to describe the goods or services of such

party." 15 U.S.C. 1115. Thus, the question here is whether Respondent's

use of the Domain Name is consistent with that definition.

Federal court decisions

serve as a guide to interpreting the fair use defense. In Zatarain's

Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir.

1983), the court held that the defendant's use of "fish fry" for "VISKO'S

Fish Fry" batter mix did not infringe the plaintiff's rights in the mark

FISH-FRI for a similar product. The defendant's good faith was demonstrated

by packaging dissimilarities and the use of the VISKO'S name. As a result,

confusion was deemed to be "virtually impossible." More recently, in Door

Systems, Inc. v. Pro-Line Door Systems, Inc. 83 F.3d 169 (7th

Cir. 1996), the court held that the defendant's descriptive use of "door

systems" as part of its mark PRO-LINE DOOR SYSTEMS did not infringe the

plaintiff's mark DOOR SYSTEMS for similar products and services. An important

factor in this decision is the defendant's use of distinctive, distinguishing

mark. Similarly, in Abercrombie & Fitch Co. v. Hunting World, Inc.,

537 F.2d 4 (2d Cir. 1976), the court held that the defendant's use of

"safari" was fair use with respect to boots, stating "it is significant

that [defendant] did not use 'safari' alone on its shoes, as it would doubtless

have done if confusion had been intended." These cases illustrate that a

successful defense of fair use should include designations such as VISKO'S

and PRO-LINE that demonstrate a good faith effort to avoid confusion.

Prominent display has

also been cited as a factor weighing against a finding of fair use. In Sands,

Taylor & Wood Co. v. Quaker Oats Co., 978 F2d 947 (7th

Cir. 1992), the court held that Quaker's use of the advertising slogan "Gatorade

is Thirst Aid" was not fair use of the plaintiff's mark "Thirst Aid", citing

the fact that prominent use of the term as an "attention-getting symbol"

was contrary to the fair use requirement that the term is used "only" to

describe.

Applying those principles

here, there are a number of points relevant to the finding of fair use:

1. Respondent

is using a form of the generic term that is confusingly similar to

Complainant's slogan, and is not using the term in its normal spelling.

The record, of course, shows that <mattress.com> was not available,

but other forms may have been. Respondent could have used a generic

reference in a non-infringing way if that had been its intent. This

fact on its own is not controlling, but it is relevant in combination

with the other points discussed below.

2. Respondent

has not selected any distinguishing term to accompany its use of the

confusingly similar term, such as <acme-mattresses.com> or the

like. As in the FISH FRY, SAFARI and DOOR SYSTEMS cases, such use

would have been an indication of good faith and would help avoid confusion.

3. Respondent

is not using the Domain Name for a site dedicated to mattresses, the

generic meaning of the term it has selected. Instead, Respondent uses

the Domain Name to lead Internet users to a site selling a variety

of products, most of which have no relationship to the generic meaning

of the term.

4. Respondent

uses the Domain Name as an attention-getting device to lead Internet

users to its site. As such, the term is not used "only to describe"

as required by the fair use test. In contrast, using the term in a

domain name as part of a non-infringing phrase might pass the test

(e.g. <noname-mattresses.com>). Similarly, descriptive use in

the content of the web site might pass the test.

5. Finally,

given the fame and registration of Complainant's slogan, it appears

to us that Respondent either knew or should have known that its use

of the Domain Name was likely to lead Internet users to its site based

on confusion with Complainant's mark.

Based on this combination

of facts, we believe that Respondent's use of the Domain Name does not meet

the requirements of fair use under the Policy. Accordingly, we find that

Respondent lacks any right or legitimate interest in the Domain Name.

C. Bad Faith Registration

and Use

Paragraph 4(b) of the

Policy states:

"For

the purposes of Paragraph 4(a)(iii), the following circumstances, in particular

but without limitation, if found by the Panel to be present, shall be

evidence of the registration and use of a domain name in bad faith:

(i) circumstances

indicating that [Respondents] have registered or [Respondents] 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 or to a competitor

of that complainant, for valuable consideration in excess of [Respondents’]

documented out-of-pocket costs directly related to the domain name;

or

(ii) [Respondents]

have registered the domain name in order to prevent the owner of

the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that [Respondents] have engaged in a pattern

of such conduct; or

(iii) [Respondents]

have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by

using the domain name, [Respondents] have intentionally attempted

to attract, for commercial gain, Internet users to your web site

or other on-line location, by creating a likelihood of confusion

with the Complainant's mark as to the source, sponsorship, affiliation,

or endorsement of your web site or location or of a product or service

on [Respondents’] web site or location."

As specifically noted in

the Policy, the circumstances of bad faith are not limited to the above. See,

e.g., Telstra Corporation v. Nuclear Marshmallows, D2000-0003

(WIPO, February 18, 2000); 3636275 Canada v. eResolution.com, D2000-0110

(WIPO, April 10,

2000).

Giving Respondent the

benefit of any doubt, it seems clear that Respondent registered the Domain

Name because it was likely to lead Internet users to its site where they

could be directed to other sites in return for a fee. As stated above, given

the fame and registration of Complainant's mark, Respondent knew or should

have known that use of the Domain Name would misdirect some Internet users

seeking a web site based on confusion with Complainant's slogan. As a matter

of law, Respondent, who is located and active in the U.S., had notice of

Complainant's mark and U.S. registration. Further, Respondent is a sophisticated

registrant of domain names. This is not an instance where a party in good

faith develops a business and then seeks to find an appropriate generic

or descriptive domain name for that business. Instead, it appears the Respondent

seeks to register domain names that arguably avoid conflict with trademark

rights, and then creates a business around the domain names. In some cases,

this strategy may in fact avoid conflict with the rights of others. In this

case, however, Respondent cannot avoid the inevitable consequences of its

deliberate actions: its use of the Domain Name is likely to mislead consumers

based on confusion with Complainant's mark.

Based on the record

before us, we conclude that it is more likely than not that Respondent registered

and used the Domain Name for the purpose of attracting Internet users to

its commercial site knowing that users would be mislead based on confusion

with Complainant's mark. Accordingly, we find that Complainant has met its

burden under Paragraph 4(a)(iii) of the Policy.

In view of these findings,

it is unnecessary to consider Respondent's claim of reverse domain name

hijacking.

7. Conclusion

We conclude that the

Domain Name is confusingly similar to a mark in which Complainant has prior

rights, that the Registrant lacks any rights or legitimate interests in

the Domain Name, and that the Domain Name was registered and used in bad

faith. Therefore, Complainant's request for transfer of the Domain Name

<mattres.com> is granted.

Mark Partridge

Presiding Panelist

M. Scott

Donahey

Panelist

Dissenting

Opinion

I respectfully dissent

from the decision of the majority, although I am in agreement with

most of the majority's analysis and conclusions. The point on which I differ

relates to Respondent's legitimate interests in the domain name. Complainant

bears the burden of proof on all three elements required by the Policy, and

I do not believe that Complainant has met its burden on that particular element.

Under the Policy, a

bona fide commercial use of a domain name is sufficient to create legitimate

interests in that name. As the majority of the Panel states, an intentionally

infringing use should not be considered bona fide. I agree with that view

in principle, but disagree as to its applicability in this particular case.

Complainant has not

shown that Respondent's activities infringe Complainant's trademark rights.

Complainant has no trademark rights in the word "mattress" standing alone,

nor in its legal equivalent, the misspelled version "mattres." In re Dial-A-Mattress

Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001). The addition of the generic

".com" extension is irrelevant here, particularly in light of Complainant's

failure to allege any trademark rights in <mattress.com>. Respondent's

use of <mattres.com> thus does not appear to be infringing, at least

based upon the facts and arguments before this Panel. Since Respondent's

use is not infringing, it qualifies as bona fide, and thereby suffices to

create a legitimate interest in the domain name.

I would find for Respondent

and, therefore, must respectfully dissent.

David E.

Sorkin

Dissenting Panelist

Dated: May

18, 2001

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• Dial-A-Mattress Operating Corp. v. Christopher E. Moakely — D2005-0471 · 1-800mattress.com · Transfer · 01 Jul 2005
• Dial-A-Mattress Operating Corp. v. Juan L. Vergez — D2000-1738 · 1888mattres.com, 800mattress.com, 888mattres.com · Transfer · 31 Jan 2001
• Dial-A-Mattress Operating Corp. v. S. Chin — D2000-1236 · 1800mattress.com · Transfer · 11 Dec 2000