Advanced Comfort Inc. v. Abedstore.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advanced Comfort Inc. v. Abedstore.com

Case No. D2003-0017

1. The Parties

The Complainant is Advanced Comfort Inc., Michael Zippelli, President, of NY

12524, of United States of America, represented by Collen IP of United States

of America.

The Respondent is Abedstore.com, of CO 80123, United States of America, represented

by Kamlet Shepherd Reichert & Edgington, LLP of United States of America.

2. The Domain Name and Registrar

The disputed domain name <abedstore.com> is registered with Melbourne

IT trading as Internet Name Worldwide.

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 Melbourne IT trading as Internet Name Worldwide a request for registrar

verification in connection with the domain name at issue. On January 10, 2003,

Melbourne IT trading as Internet Name Worldwide 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 14, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

February 3, 2003. The file transmitted by the Center to the Panel

contains no indication that the courier mailing sent to Respondent’s address,

as indicated in its domain name registration, was unsuccessful. The Respondent

did not submit any response. Accordingly, the Center notified the Respondent’s

default on February 4, 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.

By email of February 13, 2003, Respondent advised the Center that it had first

received notice of the Complaint in an email from the Center received on that

date, and requested a copy of the Complaint and an opportunity to respond. The

Center forwarded this request to the Panel. The Panel via the Center advised

the parties that Respondent would have a period of fourteen calendar days from

the date of the Center’s communication to file a Response. The Panel requested

that Respondent in its Response explain the reason for its apparent failure

to receive the courier mailing of the Complaint. A Response was received by

the Center from Respondent within the time period specified in the extension

granted by the Panel.

The Panel notified the parties via the Center that the due date for its decision

was extended until March 24, 2003.

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 4)

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."

According to the Registrar’s Verification to the Center, "abedstore.com"

is the registrant of the disputed domain name, <abedstore.com>. According

to the Registrar’s Verification, the record of registration for the disputed

domain name was created on July 26, 2002.

Respondent registered the disputed domain name with the intention of developing

and maintaining, and does in fact maintain (from July 2002), an active commercial

Internet website at URL "www.abedstore.com". The home page at the

website indicates that Respondent is an "authorized dealer" for "aero®".

Respondent’s home page banner refers to "AeroBed – A Bed Store". Respondent

asserts that it is the "world’s largest online retailer of Aero brand products",

and derives significant revenues from the website identified by the disputed

domain name. Respondent sells only "Aerobeds" and ancillary products

at its website, and no other brand of bed. According to Respondent, Complainant

does not promote or sell "Aerobeds" or other inflatable beds via its

website. (Response, para. 10 & Annex 5)

The Registration Agreement in effect between Respondent and Melbourne IT trading

as Internet Name Worldwide 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 <abedstore.com> is confusingly

similar to its mark, and that the addition of a generic word to its mark does

not sufficiently distinguish the disputed domain name from its mark (citing

Kabushiki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution purchasing

& logistics Corp., Case No. D2000-0464

(WIPO 2000). 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 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

mark ABEDSTORE.COM, or any other mark or domain name that is confusingly similar

to the ABED.COM mark, prior to its registration of the <abedstore.com>

domain name registered in 2002. 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, D2000-0352

(WIPO 2000). …. Had the Respondent conducted

such a search, they would have found the registrations of the Complainant, Advanced

Comfort.

Respondent’s use of the domain name <abedstore.com> also does not constitute

fair use of the mark ABED.COM. There is also no evidence of any registration

or any other rights the Respondent may have in marks such as ABED.COM, or any

other confusingly similar mark or domain name."

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 asserts that Respondent had 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, D2000-0352 (WIPO

2000). Had the Respondent conducted such a search, they would have found the

registrations of the Complainant, Advanced Comfort. This breach of this duty

constitutes an additional basis on which bad-faith may be found."

Complainant requests the Panel to direct the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent argues that Complainant’s asserted trademark is a generic term in

which it does not hold rights. Respondent states in its own words:

"Complainant’s registered service mark, ‘ABED.COM’ is a generic term,

which cannot function as a mark because it refers to a ‘genus of which the particular

product is a species.’ See, Pet Warehouse v. Pets.com, Inc., Case

No. D2000-0105 (WIPO 2000)... Such generic terms are not entitled to trademark

protection. America Online, Inc. v. AT&T Corp., 243 F.3d 812, 820

(4th Cir. 2001) (‘When words are used in a context that

suggest only their common meaning, they are generic and may not be appropriated

as exclusive property.’); Leejay, Inc. v. Bed Bath & Beyond, 942

F. Supp. 699, 701 (D. Mass. 1996) (denying plaintiff’s claim that

the words ‘bed & bath’ should be protected; ‘[i]f they are just a generic

term for a class of goods, the words themselves are not entitled to trademark

protection.’); Duluth News-Tribune v. Mesabi Publishing Co., 84 F. 3d

1093, 1096 (8th Cir. 1996) (‘A generic term is one that

is used by the general public to identify a category of goods, and as such merits

no trademark protection.’); Convenient Food Mart, Inc. v. 6-Twelve Convenient

Mart, Inc., 690 F. Supp. 1457, 1462-1464 (D. Md. 1988) (denying trademark

infringement claim; the term ‘convenient’ as used in both parties’ food store

trade names was simply a common description of a particular type of retail service,

and thus, term was generic and not protected by trademark laws for exclusive

use). Complainant obtained protection on two generic words, ‘a’ and ‘bed,’ each

of which, standing alone, has no significance or proprietary value. Significantly,

the term ‘bed’ (and many other variations thereon) in connection with products

identical to those that Complainant sells, is used both in the United States

and throughout the world by thousands of businesses that compete with Complainant

(i.e., <bedstore.com>, <thebedstore.com>). Respondent’s use of the

three generic words ‘a,’ ‘bed’ and ‘store’ simply constitutes a similar use

of the same generic terms that is based, not on any intentional copying of Complainant’s

mark, but rather, on a reasonable, good faith belief that the terms are generic

and therefore, not protected – just as <thebedstore.com> and <bedstore.com>

have commenced similar businesses.

"Complainant cites Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation

v. Distribution Purchasing & Logistics Corp. in support of its allegations

that Respondent’s addition of the word ‘store’ to its domain name is ‘an irrelevant

distinction that does not change the likelihood of confusion.’ That case is

distinguishable. In Kabushiki, the Panel determined that the mark ‘Toshiba,’

standing alone, is famous and well-known, has been used by its owner substantially

and continuously for over 48 years on products and services throughout most

of the world, and is connected with significant goodwill and value. Here, Complainant

did not receive protection on the mark ‘ABED.COM’ until June 26, 2001.

Further, the generic terms ‘a’ and ‘bed,’ unlike ‘Toshiba,’ are clearly recognizable

and commonly used without regard to Complainant’s business or products. In addition,

unlike Toshiba, which is the corporate name of its business, ABED is not

the corporate name or a registered trade name under which Advanced Comfort conducts

business. The use of Complainant’s mark simply does not rise to the level of

recognition received by the Toshiba mark.

"Finally and importantly, there is no likelihood of confusion here because,

unlike the Toshiba mark at issue in Kabushiki, Complainant and Respondent

do not sell the same products. Respondent sells only one brand of one distinct

product at its domain address -- Aero inflatable beds. Complainant does not

sell Aero or any other inflatable beds. Complainant has not provided any evidence

of marketplace confusion with respect to the disputed domain name. It cannot

because its protected mark identifies nothing more than a product or service,

rather than the source or identity of a particular model or brand. See

Interactive Television Corp. v. Noname.com, Case

No. D2000-0358 (WIPO 2000)…; Tough Traveler, Ltd. v. Kelty Pack, Inc.

Mike Scherer, and Inkling Pen Co., Case

No. D2000-0783 (WIPO 2000)… Unlike the parties in Kabushiki who both

sold Toshiba products, Respondent and Complainant are selling distinct products

to different markets. As such, there can be no likelihood of confusion. See

Interstellar Starship Serv., Ltd. v. Epix, Inc., 304 F.3d 936, 941-946

(9th Cir. 2002) (computer enthusiast’s use of the <epix.com>

domain name did not cause a likelihood of initial interest confusion among consumers

with respect to a trademark holder’s use of ‘EPIX’ trademark in connection with

printed circuit boards and computer programs because, among other reasons, the

website’s content was extraordinarily different from the trademark holder’s

digital imaging product); NVST.com, Inc., v. Nvest, LLP, 2002 WL 460221

at *4 (9th Cir. 2002) (not selected for official publication)(‘[r]elated

goods are generally more likely than unrelated goods to confuse the public as

to the producers of the goods"’ and ‘the two companies market to entirely

different clienteles’); Cohn v. Petsmart, Inc., 281 F.3d 837, 841-842

(9th Cir. 2002) (denying veterinarian’s trademark infringement claim

because he failed to show that pet supply store chain’s use of veterinarian’s

trademark created a likelihood of confusion – while the parties sold related

goods and services, consumers would encounter the trademarks differently in

the marketplace and the veterinarian presented no evidence of actual confusion);

Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 581 (2nd Cir. 1991)

(similarity between the name ‘New Choices Press’ used by a publisher

of a book on charisma, and ‘New Choices for the Best Years,’ used by the publisher

of a magazine on retirement living, did not create a likelihood of consumer

confusion). Absent any showing of potential marketplace confusion, Complainant’s

claim fails." (Response, para. 10)

Respondent asserts that it has rights and legitimate interests in the disputed

domain name because (a) it is making use of the name in connection with an active

commercial website; (b) it made good faith preparations to use the website for

a bona fide offering of goods prior to registration of the domain name and commencement

of this action by Complainant, and; (c) it is selling different products than

Complainant, which constitutes fair use of the domain name. Respondent asserts

while it may have an implied duty to conduct a minimal trademark search prior

to registration of a domain name, a search of "abedstore", "bedstore",

"bed store" or "a bed store" "would not have revealed

Complainant’s registration".

Respondent argues that the disputed domain name was not registered or used

in bad faith because (a) it did not intend to sell it to anyone; (b) it has

not engaged in a prohibited pattern of conduct; (c) it has not attempted to

disrupt Complainant’s business or create a likelihood of confusion with its

mark because Respondent sells only a specific brand and type of bed that is

not sold by Complainant, and operates in a separate and distinct market.

Respondent requests the Panel to reject Complainant’s claims and deny it relief.

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).

As a preliminary matter, the Panel notes that Respondent failed to file a response

within the period initially provided for its filing in accordance with the Rules

(para. 5(a)). Respondent has indicated that its email and physical addresses

were changed subsequent to registration of the disputed domain name. In fact,

the physical address for Respondent indicated on its website home page differs

from that indicated in its registration data. Although Respondent is required

by the terms of its registration agreement to update contact information during

the registration period, there is no evidence that it willfully failed to do

so within a reasonable period, particularly in light of the fact that its present

physical address is prominently displayed on its website home page. The Rules

encourage panels to "ensure that the Parties are treated with equality

and that each Party is given a fair opportunity to present its case" (para.

10(b)). In the circumstances of this proceeding the Panel considered it appropriate

to authorize, and accepts, Respondent’s late filing of its Response.

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 mark. Complainant asserts rights

in the service mark "ABED.COM" and the confusing similarity of the

disputed domain name <abedstore.com>.

Complainant asserts rights in a service mark based on its use in commerce in

the United States, and with a presumption of rights in the mark established

by its registration at the USPTO (see Factual Background supra).

The Panel has serious doubts regarding Complainant’s asserted rights in the

term "ABED.COM" as a service mark. In a just-completed Administrative

Proceeding involving Complainant and a different respondent, this sole panelist

avoided making a determination as to whether the respondent had succeeded in

establishing the generic nature of the asserted mark because the respondent

had demonstrated rights or legitimate interests in the disputed domain name.

In that just completed proceeding, this sole panelist stated:

"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." (Advanced Comfort Inc. v. iNET

image, Inc., Case No. D2003-0016, decided

February 24, 2003.)

In the present proceeding, Respondent also argues that Complainant’s asserted

service mark is generic, and that in consequence Complainant cannot establish

rights in the term. Prior WIPO Administrative Proceedings to which Respondent

refers include one instance in which a panel found that a Complainant had failed

to establish rights in a registered word and design mark based on Respondent’s

overcoming the presumption of validity through demonstration of the potentially

generic nature of the alleged mark. In that case, a subsequent application by

the complainant to register the same term as a mark was rejected by the USPTO

based, inter alia, on the generic character of the term. The panel said

that it was rejecting the complainant’s claim to rights in a mark (i.e., "Interactive

Television") based on "serious questions" as to whether it had

rights, and that "the ultimate decision as to whether Complainant does

or does not have proprietary rights is better left to a court or trademark office

tribunal" (Interactive Television Corporation v. Noname.com, Case

No. D2000-0358, decided June 26, 2000). The quoted language regarding

the ultimate decision appeared earlier in Pet Warehouse v. Pets.Com,

Case No. D2000-0105, decided April 13, 2000,

(also cited by Respondent here)[2]. The Pet

Warehouse case involved a claim of common law rights in mark as to which

registration had been denied by the USPTO, and in that sense is distinguished

from the subsequent Interactive Television case in which the mark was

once-registered by the USPTO, and a subsequent application to register the same

term rejected.

Respondent in this proceeding has presented substantial support in U.S. federal

court precedent that the term "ABED.COM" should be considered generic

and therefore is not capable of serving a service mark function (accord federal

court precedent cited in Pet Warehouse, as well as In re Martin Container

Inc., supra). The Panel, however, does not consider it necessary

to make its determination on that basis, and thus in effect to determine that

the presumption established by federal registration has been overcome.

The Panel finds that in the circumstances of this proceeding, the asserted

mark "ABED.COM" and the disputed domain name <abedstore.com>

are not confusingly similar. Complainant has chosen an asserted mark consisting

of two manifestly generic terms. If it is a service mark, it is an especially

weak one, and such protection as it might afford is exceedingly thin. There

is a small pool of terms that makers and sellers of beds and bedding products

might use to identify their businesses and products without using the term "bed".

If a service mark applicant (seller of beds) can succeed in registering the

term "bed" at the USPTO by placing the indefinite article "a"

in front of it, another applicant or junior user should be able to distinguish

its services by adding "store" at its end. Consumers and Internet

users in the United States are unlikely to believe that Complainant is the exclusive

"a bed" seller of bed and bedding products on the Internet or elsewhere,

and will not be confused when "a bed store" turns out to be an enterprise

other than Complainant.

Respondent has appropriately distinguished Kabushiki Kaisha Toshiba d/b/a

Toshiba Corporation v. Distribution Purchasing & Logistics Corp, Case

No. D2000-0464 (WIPO 2000), which held that adding a common descriptive

or generic term (such as "store") to a trademark or service mark generally

does not serve to prevent consumer confusion. This sole panelist has rendered

a number of similar decisions. However, in these earlier cases (see, e.g.,

General Electric Company v. Forddirect.com, Inc., Case

No. D2000-0394, decided June 22, 2000), the underlying mark was

one that would be recognized by consumers and Internet users as distinguishing

the goods or services of one enterprise from another. Consumers and Internet

users therefore would be confused by the addition of a common descriptive or

generic term. In this proceeding, Complainant’s asserted mark is so weak that

identification by consumers and Internet users with Complainant, if any, will

be dispelled by the addition of another generic term, i.e., store.

The Panel finds that whether or not Complainant holds rights in the service

mark "ABED.COM", the disputed domain name <abedstore.com> is

not confusingly similar to it. Complainant has therefore failed to establish

the first element necessary for a finding that Respondent has engaged in abusive

registration and use of the disputed domain name. The Panel declines to instruct

the registrar to transfer the disputed domain name.

In light of the foregoing determination, the Panel will refrain from considering

the issues of rights or legitimate interests and bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Frederick M. Abbott

Sole Panelist

Date: March 24, 2003

1. 15 USC§1115(a).

2. This sole panelist served as presiding

panelist in the Pet Warehouse case.

More cases by this complainant

• Advanced Comfort Inc. v. iNET image, Inc. — D2003-0016 · abed4u.com · Complaint denied · 24 Feb 2003
• Advanced Comfort Inc. v. Frank Grillo, — D2002-0762 · abeds.com · Transfer · 18 Oct 2002
• Advanced Comfort Inc. — D2002-0630 · Terminated