Advanced Comfort Inc. v. iNET image, Inc.

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

A. Complainant

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.

B. Respondent

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[1],

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"[2].

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.[3]

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)[4], but that must be distinguished

from constructive notice.[5] 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.

7. Decision

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

Sole Panelist

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).

More cases by this complainant

• Advanced Comfort Inc. v. Abedstore.com — D2003-0017 · abedstore.com · Complaint denied · 24 Mar 2003
• Advanced Comfort Inc. v. Frank Grillo, — D2002-0762 · abeds.com · Transfer · 18 Oct 2002
• Advanced Comfort Inc. — D2002-0630 · Terminated