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WIPO-UDRP Decision
D2000-1738

Case number
D2000-1738
Complainant
Dial-A-Mattress Operating Corp.
Respondent
Juan L. Vergez
Panelist
Donahey, M. Scott
Status
Closed
Decision
Transfer
Date of Decision
07.02.2001

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dial-A-Mattress Operating Corporation v. ICS

Case No. D2000-1738

1. The Parties

1.1 The Complainant is Dial-A-Mattress Operating Corporation, a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at 31-10 48th Avenue, Long Island City, New York, United States of America.

1.2 The Respondent is ICS, an entity, giving an address at 280 West Mashta Dr., Key Biscayne, Florida, United States of America.

2. The Domain Names and Registrar

The domain names at issue are <800mattress.com>, <888mattress.com>, <888mattres.com>, and <1888mattres.com>, which domain names are registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 13, 2000, naming Juan L. Vergez, an individual having the same address as Respondent, and the signed original together with four copies forwarded by express courier was received on December 15, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated December 15, 2000.

3.2 On December 15, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrars Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.

3.3 On December 20, 2000, NSI confirmed by reply e-mail that the domain names at issue are registered with NSI, are currently in active status, and that the Respondent ICS is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center determined that the Complaint was deficient for failing to identify the registrant of the domain names at issue as the Respondent. On December 20, 2000, the WIPO Center transmitted a Notification of Complaint Deficiency to the Complainant.

3.5 On December 20, 2000, Complainant filed an Amendment to the Complaint, naming ICS as the sole Respondent.

3.6 The WIPO Center determined that the Complaint as amended satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

3.7 No further formal deficiencies having been recorded, on December 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of January 9, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondents participation in these proceedings.

3.8 A Response was received on January 10, 2001. The Response was filed by Juan L. Vergez, the individual named as the respondent in the Complaint s originally filed. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on January 10, 2001.

3.9 On January 10, 2001, the WIPO Center received by email a "Reply" submitted by Complainant.

3.10 On January 23, 2001, having received M. Scott Donaheys Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was February 5, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the Supplemental Rules.

4. Factual Background

4.1 Complainant registered the service mark 1-800-MATTRES, AND LEAVE OFF THE LAST S THAT'S THE S FOR SAVINGS in connection with retail direct sales of mattresses and related services with the United States Patent Office ("USPTO") on October 27, 1992. Complaint, Annex 3.

4.2 Complainant registered the service mark (ANY AREA CODE) M-A-T-T-R-E-S in connection with retail sales and services re mattresses with the USPTO on March 27, 1990. Complaint, Annex 4.

4.3 Complainant uses the fictitious business name "1-800-Mattress" in many cities in the United States. Complaint, Annexes 5 and 6.

4.4 Respondent registered the domain names at issue on January 13, 2000.

4.5 Juan L. Vergez, who responded on behalf of Respondent, is the President of Sunshine Bedding, Inc., which is the franchisee of Complainant in the state of Florida.

4.6 Sunshine Bedding, Inc., is currently a debtor in a Title 11 bankruptcy proceeding pending in the United States District Court in and for the Southern District of Florida, Fort Lauderdale Division.

4.7 Complainant has filed motions and appeared in that proceeding, including at a hearing conducted on January 9, 2000, four days before Respondent registered the domain names at issue.

4.8 The franchise agreement between Complaint and Sunshine Bedding, Inc. gives the franchisee permission to use the trademarks of Complainant "only in the manner and to the extent specifically licensed by this Agreement and subject to the approval and control of Complainant in every respect." Complaint, Annex 9. Complainant has never authorized Sunshine Bedding, Inc. to acquire the domain names at issue.

4.9 Complainant has not authorized Respondent to use its marks in any respect.

4.10 On August 4, 2000, Complainant's counsel sent Respondent a certified letter, return receipt requested, requesting that the domain names at issue be transferred to Complainant. Silvia Vergez signed for the letter. On September 26, 2000, a second cease and desist letter was sent to Respondent care of Juan Vergez.

4.11 On October 3, 2000, Juan Vergez wrote Complainant's counsel and acknowledged having received the two cease and desist letters. In his letter, Mr. Vergez stated that he was a shareholder of Sunshine Bedding, Inc., Complainant's Florida franchisee. "Because of this relation, I have registered the names in question to prevent outside parties from acquiring those names and infringing on their use. My company or myself have no interest in transferring, selling or in any way trying to benefit from the value of those domain names. If at any time in the future my relation with the DIAL-A-MATTRESS franchise in the sate of Florida changes, I will be happy to discuss with you the assignment of those names."

4.12 On October 10, 2000, Complainant wrote to Mr. Verges demanding that he transfer the registrations of the domain names at issue.

5. Parties Contentions

5.1 Complainant contends that Respondent has registered domain names which are confusingly similar to the service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

5.2 Respondent contends that Mr. Verges is not the registrant of the domain names at issue, that the domain names at issue are not confusingly similar to Complainant's marks, that Sunshine Bedding, Inc. as franchisee has rights to or legitimate interests in the mark, and that the domain names at issue were registered in good faith and are not being used.

6. Discussion and Findings

6.1 Complainant has submitted a Reply that was not requested by the Panel. Replies are not provided for in the Rules, and Complainant did not seek the Panel's permission to file such a pleading. Therefore, the Panel declines to consider the Reply.

6.2 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

6.3 Since both the Complainant and Respondent are domiciled in the United States, and since United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

6.4 Paragraph 4(a) of the Policy directs that the Complainant must 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 legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

6.5 It is clear that the domain names at issue are confusingly similar to the marks in which the Complainant has rights. <800mattress.com> and <888mattres.com> are confusingly similar to Complainant's service mark 1-800-MATTRES and to Complainant's service mark (ANY AREA CODE) M-A-T-T-R-E-S. <888matres.com> and <1888mattres.com> are confusingly similar to Complainant's service mark (ANY AREA CODE) M-A-T-T-R-E-S.

6.6 The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain names at issue. This shifts the burden to Respondent to show that it has rights or legitimate interests in respect of the domain names at issue. See, e.g., Policy, 4(c).

6.7 Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. This entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. Ronson plc v. Unimetal Sanayai ve Tic.A.S., Retail Florist's Business, WIPO Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023.

6.8 The well reasoned opinion by the Panel in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, has established that inaction in the presence of particular circumstances can constitute bad faith use. In the present matter, the President and shareholder of a franchisee of Complainant has registered the domain names at issue under a fictitious name. The franchisee is the subject of a bankruptcy proceeding at which Complainant appears to be a major creditor. Shortly after a bankruptcy hearing in January 2000, at which Complainant appeared, the President and shareholder of the franchisee registered the domain names at issue in Respondent's name. The same President and shareholder refuses to transfer them to Complainant under the present circumstances.

6.9 The Panel finds that the above circumstances are the type of inaction that the Telstra Panel found to be bad faith registration and use. The domain names were registered under a fictitious name. The domain names were obviously registered to spite Complainant with full knowledge that the domain names infringed Complainant's marks.

7. Decision

For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the marks in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used

in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <800mattress.com>, <888mattress.com>, <888mattres.com>, and <1888mattres.com> be transferred to the Complainant.

M. Scott Donahey
Sole Panelist

Dated: January 31, 2001