WIPO Domain Name Decision: D2007-0695

The Complainant is Associated Professional Sleep Societies of Westchester, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America

The disputed domain name <journalsleep.com> is registered with Domain Contender, LLC.

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2007. On May 11, 2007, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On May 11, 2007, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

3.2 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 May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2007.

3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 27, 2007. 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.

4.1 The Complainant originated as a partnership between the American Academy of Sleep Medicine (the “AASM”) and the Sleep Research Society (the “SRS”). More recently, it has taken the form of a limited liability company organised under the laws of the State of Illinois. When exactly the limited liability company was formed is not disclosed, but this does not matter since it is clear that the company is the successor in business to the partnership. For ease of reference, throughout this decision, the term Complainant is used to refer to both the current company and the partnership that preceded it.

4.2 The Complainant has since 1978 produced the journal, Sleep, which is claimed to be the “pre-eminent medical journal that related to original findings in the areas of sleep and circadian rhythms”. Its readers are scientists engaged in the study of sleep and sleep disorders and clinicians practicing sleep disorders medicine. Since 1989, the Complainant has organized and managed the annual “Sleep” conference which takes place in different cities across the United States each year.

4.3 The Complainant registered the domain name <journalsleep.org> in 1998, and since that date has advertised its journal and the “Sleep” conference on a website operating from that domain name.

4.4 Little is known about the Respondent. The <journalsleep.com> domain name is registered under the name “lc”, but the Complaint appears to proceed on the basis (which the Panel for current purposes is prepared to accept) that these letters represent one “Li Chow” who is also listed as the administrative and technical contacts for the domain name.

4.5 The Respondent registered the <journalsleep.com> domain name (the “Domain Name”) on August 18, 2003. Initially the Domain Name linked to an online pharmacy website operating from the domain name <prescriptions.org>

4.6 On September 7, 2006, the Complainant filed an application for a trademark in the word SLEEP in class 16, broadly in relation to magazines containing peer-reviewed scientific and medical articles. As at the date of the Complaint, that trademark had yet to be granted.

4.7 By March 2007, the Domain Name resolved to a website that bore the hallmarks of being operated by a domain name “parking service”. Under the heading “Journalsleep.com”, was to be found the slogan “What you need, when you need it” and under that were what appeared to be various sleep related links (and rather incongruously, the link “Weight Loss Supplement”).

4.8 As at the date of this decision, the Domain Name links to an online pharmacy website known as <eprescriptions.com>, which offers a range of pharmaceutical products.

5.1 The Complainant contends that as a result of its activities over the last 30 years, which have involved the expenditure of “substantial effort and money”, the services operated “under the SLEEP mark have become the pre-eminent services in the industry”. Accordingly, it is claimed that “the SLEEP mark has become known to pertinent consumers worldwide as symbolising [the Complainant]” and that the Complainant “has built up substantial goodwill in its SLEEP mark among those in the relevant industry”.

(b) the <journalsleep.org> domain name, in which it is claimed the Complainant has developed “considerable goodwill” so that the Complainant’s customers and members “have come to associate the <journalsleep.org> domain name with APSS”.

5.3 So far as the requirements of the Policy that the Domain Name be identical or similar to a trademark in which the Complainant has rights, the Complainant contends that:

(a) the Domain Name is identical and confusingly similar to the Complainant’s <journalsleep.org> domain name; and

(b) the Domain Name is identical and confusingly similar to the Complainant’s “SLEEP service mark”.

5.4 The Complainant contends that the Respondent is unable to establish a legitimate right to, or interest in the Domain Name since:

(a) the Respondent has not used the Domain name in connection with the bona fide offering of services, nor is the Respondent referred to or commonly known by the Domain Name;

(b) the Respondent owns no United states, Chinese, European Union or International trademark registration for the terms “sleep”, “journal” or any combination thereof;

(c) rights can only arise through a bona fide offering of goods or services and attempting to attract users to a site by causing confusion “precludes a finding that [the] respondent [is] making a bona fide offering of goods and services”; and

(d) in this case, the choice of the Domain Name was in order to “create an impression of an association with the Complainant” for “illegitimate pecuniary gain” and this cannot establish rights in the Domain Name.

5.5 The Complainant contends that the Respondent must have registered and used the Domain Name in bad faith because:

(a) given the fame of the Complainant’s mark it is “inconceivable that the Respondent innocently registered the [Domain Name] without having a design to exploit the [Domain Name’s] similarity to the Complainants’ famous mark and website”;

(b) the Complainant’s contentions here are supported by the nature of the links on the web page associated with the Domain Name, which include the references “Sleep 28:104-112,” “Sleep Vol 21, No. 8,2 and “Sleep 24:451-466” which are “clearly meant to appear to be links to [the] Complainant’s journal Sleep”.

5.6 Further the Complainant maintains that the registration of the Domain Name has “prevented [the Complainant] from registering its mark as a ‘.com’ domain name”.

6.1 Paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

6.2 Under paragraph 5(e) of the Rules, if a respondent does not submit a response and in the absence of exceptional circumstances, “the Panel shall decide the dispute based upon the Complaint”. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent it determining the dispute, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

6.4 Under paragraph 4(a)(i) of the Policy, a complainant must first identify the trademark rights upon which it relies. Such rights may be registered or unregistered but they do not exist in abstract. They must be rights that are extant and are recognised by the law of one or more jurisdiction.

6.5 Where a complainant relies upon registered trademark or trademarks, this is a relatively straightforward task. Reference to and proof of the registration will usually be sufficient.

6.6 In this case, the Complainant refers to a trademark application, but that application has not yet been granted. The Panel addressed the issue of the status of a trademark application under the Policy (and a large number of earlier decisions on this issue) in some detail in Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994 . For the reasons given in that decision, the Panel concluded that ordinarily a Community Trade Mark Application alone would not provide sufficient rights for the Policy. The Panel is of the view (in the absence of argument to the contrary), that the position is the same in the case of United States trademarks.

6.7 However, this is not the sole extent of the trademark rights claimed by the Complainant in this case. Throughout the Complaint, there are references to goodwill that the Complainant claims to have developed in various names. Whilst it would have been preferable had the Complainant expressly stated this, it is nevertheless reasonably clear that the Complainant relies in this case upon:

(a) goodwill in the <journalsleep.org> domain name, so as to give it unregistered trademark rights in that name that are recognized in the United States; and

(b) goodwill in the word “Sleep”, so as to give it unregistered trademark rights in that name that are recognised in the United States.

6.8 The Panel accepts that in the absence of any evidence to the contrary being put forward by the Respondent, that the Complainant’s assertions in this respect are correct. The Complainant does not provide any further evidence in support of its contentions of substantial goodwill in these names. However, the Panel sees no reason why it cannot take at face value the Complainant’s contentions (supported by an appropriate certificate of accuracy at the end of the Complaint) that (i) it has been responsible for a journal with the title “Sleep” for nearly 30 years; (ii) has operated conferences under the “Sleep” name for over 20 years; and (iii) has been operating a website to promote its activities under the <journalsleep.org> domain name for nearly 10 years.

6.9 In light of these conclusions, the Panel also finds that the Complainant has made out its case that the Domain Name is confusingly similar to a trademark or trademarks in which the Complainant has for present purposes shown rights. So far as the JOURNALSLEEP.ORG mark is concerned, the only difference between it and the Domain Name is the different TLD. In the case of the SLEEP mark, the difference between the mark and the Domain Name (ignoring for these purposes the “.com” TLD) is simply the word “journal” that is merely descriptive of the product in respect of which the SLEEP mark has a reputation.

6.10 The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

6.11 It is obvious in this case that the Respondent registered the Domain Name without having obtained the consent or permission of the Complainant. Further the Panel also accepts (bearing in mind the Complainant’s contentions that the Respondent is not the owner of any United States, European Union or Chinese registered trademarks and has not made any International trademark applications) that the Respondent does not own any registered trademark that incorporates the words “journal” and/or “sleep”.

6.12 Further, the Panel accepts the Complainant’s contention that the Respondent has never been known or commonly known by a name incorporating “journalsleep” and that has never offered bona fide goods or services under that name.

6.13 Instead it seems clear, for the reasons described in greater detail under the heading of bad faith below, that the Respondent registered the Domain Name with knowledge of the Complainant’s interest in the “Sleep” and “journalsleep” names with the intention of using the Domain Name to divert Internet users who are looking for information about the Complainant to the Respondent’s website in order to gain a commercial advantage. Such use of a domain name does not provide a registrant with legitimate right or interest in the name for the purposes of paragraph 4(a)(ii) of the Policy.

6.14 In the circumstances, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

6.15 In order to succeed under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was both registered by the Respondent in bad faith and has been used in bad faith.

6.16 A non-exclusive list of circumstances constituting evidence of bad faith for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the Policy. In this case, although no express reference is made to it in the Complaint, the Complainant effectively seems to rely upon paragraph 4(b)(iv) of the Policy. This refers to circumstances indicating that:

“by using the Domain Name, you [i.e. the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."

6.17 Key to the determination of bad faith in this case is determination of the extent of the knowledge by the Respondent of the Complainant’s activities. The Panel is of the view that on the balance of probabilities, the Complainant is right when it contends that at the time of registration, the Respondent was to some degree aware of the Complainant and its use of the term “Sleep” and of the domain name <journalsleep.org>. The reasons for this are as follows:

(i) In the absence of any evidence to the contrary, the Panel accepts the Complainant’s contention that as a result of the publication of the Sleep journal and other activity under the name for nearly 30 years, the name “had become known to pertinent consumers worldwide” as connected with the Complaint.

(ii) The words “journal” and “sleep” although ordinary English words are a moderately unusual combination. The most obvious reason to register these words in combination would be in order to allude to some form of publication connected with the subject of sleep. However, any person who wished to make such an allusion is likely to be the sort of person who would be aware of the Complainant’s publication.

(iii) Initially, the Respondent used the Domain Name to link to a website selling pharmaceutical products. Given that the Sleep journal’s readership includes “clinicians practising sleep disorders medicine”, the obvious inference is that this website was chosen with that readership in mind.

(iv) Subsequently, the website operating from the Domain Name took the form that one would expect of a domain name parking service. That website carried the hyperlinks, “Sleep 28:104-112,” “Sleep Vol 21, No. 8,2” and “Sleep 24:451-466.” The Panel accepts that it is difficult to give any sensible meaning to these links other than as references to a scientific journal and in particular to the scientific journal of the Complainant. There is a slight complication here in that this website bore the hallmarks of a domain name parking site. This is turn raises the question as to whether the Respondent was the one actually responsible for the choice of links in this case. However, the Panel believes that it is legitimate to infer that the Respondent has some involvement and control over the selection process in the absence of any assertion or evidence to the contrary (see the similar approach adopted by this Panel in Shaw Industries Group Inc. v. Adminstrator, Domain, WIPO Case No. D2007-0583 ).

(v) The Complainant’s own website operated from the domain name that used the identical form to the Domain Name save that it is a “.org” TLD as opposed to a “.com” TLD.

6.18 Given this finding of fact, the inevitable inference is that the Respondent chose the Domain Name with the intention of capitalising upon the Complainant’s goodwill in the “Sleep” and “sleepjournal.org” names in the hope and expectation that the similarity between the domain name and these names will result in Internet users searching for information related to the Complainant, instead of a site chosen by the Respondent. Such activity falls within paragraph 4(b)(iv) of the Policy.

6.19 Of course paragraph 4(b)(iv) of the Policy requires that such activity be for “commercial gain”. The Complainant’s contentions in this respect are sparse. However, the Complainant does expressly allege the Respondent’s actions were motivated by “illegitimate pecuniary gain”. The Panel also believes that it is entitled to take notice of the fact that it is common practice for payments to be made to those who use domain names to redirect internet traffic to commercial websites. It is also notable that the Respondent has at least part of the time used a “domain name parking” service. The way in which many of these services operate is to provide the domain name registrant with part of the “click through” revenues that are generated when an Internet user clicks on a hyperlink on the website operating from that domain name.

6.20 Further, even if the Respondent did not intend personally to benefit from its actions it would not matter. Paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from any diversion. It is simply a requirement that it is intended that somebody does (see for example, the decisions to this effect in V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301 ; PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292 ; and V&S Vin&Sprit AB (publ) v. Paul Stephey, WIPO Case No. D2005-0992 ). Given the commercial nature of the <prescriptions.org> website, that requirement is clearly satisfied in this case.

6.21 For the reasons discussed above, the Panel holds that the Domain Name has been registered and used in bad faith and that the Complainant has made out paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <journalsleep.com> be transferred to the Complainant.