WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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.

The domain name at issue is ("Domain Name") <mattres.com>.

The registrar is Tucows.com, Inc.

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.

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.

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.

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.

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.

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 (5^th 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 (7^th 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 (7^th 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.

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.

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

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