Werner Media Partner’s, LLC DBA Nature’s Sleep, LLC v. ICS INC.
Case No. D2015-1125
1. The Parties
The Complainant is Werner Media Partner’s, LLC DBA Nature’s Sleep, LLC of Plantation, Florida, United States of America (the “USA”), represented by Scot Sunnergren, USA.
The Respondent is ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (the “UK”).
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2015. On July 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2015, the Registrar 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” or “UDRP”), 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 July 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2015.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 7, 2015. 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. Factual Background
The Complainant is an American-owned provider of memory foam products such as mattresses, pillows, and toppers and was established in 2002. The business has been using the trademark NATURE’S SLEEP and the domain name to sell these products for over 13 years.
The Complainant owns several trademark registrations under the term NATURE’S SLEEP in association with memory foam products, including the following:
- US Registration No. 3,731,815 for NATURE’S SLEEP registered December 29, 2009 with first use in commerce dated September 30, 2007.
- US Registration No. 4,112,142 for SERENE COMFORT BY NATURE’S SLEEP registered March 13, 2013 with first use in commerce dated February 28, 2011.
- US Registration No. 3,802,848 for NATURE’S SLEEP PETS registered June 15, 2010 with first use in commerce dated October 6, 2009.
- US Registration No. 3,878,747 for NATURE’S SLEEP MEDICAL registered November 23, 2010 with first use in commerce dated August 31, 2009.
- US Registration No. 4,240,084 for NATURE’S SLEEP dated November 13, 2012 with first use in commerce dated August 01, 2007.
The disputed domain name was registered on March 13, 2015. At the time the Complaint was filed, the disputed domain name reverted to websites that provided links to third party websites.
5. Parties’ Contentions
A.1 Confusingly Similar
The Complainant submits that it owns many trademark registrations for NATURE’S SLEEP, including those listed in paragraph 4 above.
The Complainant further contends that the disputed domain name is nearly identical to the Complainant’s NATURE’S SLEEP trademark except for the absence of the “s” in the middle of the name. The removal of this single letter “s” does not sufficiently alter the trademark of the Complainant to avoid confusion.
A.2 Rights and Legitimate Interests
The Complainant submits that the Respondent does not have any legitimate rights or interests in the domain name. The Respondent is not commonly known by the name NATURE’S SLEEP, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name reverts to a website that provides links to third party websites through pay-per-click advertising. This is not a bona fide offering of goods and services.
A.3 Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the domain name in bad faith because (i) the Respondent must have been aware of the Complainant’s registered trademark rights in NATURE’S SLEEP, when the Respondent registered the confusingly similar domain name; (ii) the Respondent registered and used a confusingly similar domain name to trade on the goodwill and reputation of the Complainant’s registered trademark by using the domain name in association with a website that provides pay-per-click advertising to websites owned and operated by third parties; and (iii) the Respondent owns many domain names that include registered trademarks of other parties, namely “bookit.com”, “HARDEE’S”, “ALLIEDBARTON”, “SHOWTIME”, “BYRAM” and “EnBW”. The ownership of domain names that include registered trademarks of other parties suggests that the Respondent is engaged in cybersquatting for purposes of monetary gain, which is evidence of bad faith under the policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark NATURE’S SLEEP by virtue of its trademark registrations, including those listed in paragraph 4 of this Decision.
The Panel further finds that the domain name is confusingly similar to the Complainant’s registered trademark NATURE’S SLEEP. The addition of an “s” does not distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file formal responding materials in this proceeding, and did not dispute any of the facts submitted by the Complainant. The Respondent was never authorized or licensed by the Complainant to use the registered trademark NATURE’S SLEEP or any confusingly similar variation. Furthermore, the Panel is prepared to find that the registration and use of a confusingly similar trademark in association with a website that offers links to other parties as a pay-per-click website is not evidence of a bona fide offering of goods and services as defined under the Policy. Based on the evidence filed in these proceedings, the Panel is prepared to find that the Respondent does not have any rights or legitimate interests in the disputed domain name .
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark NATURE’S SLEEP when it registered the disputed domain name on March 13, 2015. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complaint’s trademark, without permission, and by subsequently developing a website which provides links to other parties’ websites for the purpose of monetary gain.
With respect to the use of the disputed domain name, the Panel notes that on the date of the filing of the Complaint, no landing page was available at the URL for the disputed domain name. As indicated by the Complainant, an immediate redirection is performed by the host and Internet users are forwarded to random sites, which appear to include a direct competitor in the business of the Complainant. Previous UDRP decisions have concluded that the diversion of Internet traffic to websites of competing organizations constitute bad faith registration and use under the Policy.
In addition, the fact that the Respondent has a long history of cybersquatting UDRP Decisions against it is a further indicator of the Respondent's bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
For 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 be transferred to the Complainant.
Christopher J. Pibus
Date: August 21, 2015