DECISION

Goodnight Sleeptight LLC d/b/a Surfer Bedding v. Uhula Corporation

Claim Number: FA0407000304769

PARTIES

Complainant is Goodnight Sleeptight LLC d/b/a Surfer Bedding (“Complainant”), represented by Joseph C. Shoemaker of Bogin, Munns & Munns, 2601 Technology Drive, Orlando, FL 32804.  Respondent is Uhula Corporation (“Respondent”), 930 Calle Negocio, Ste. E, San Clemente, CA 92673.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <surfingbedding.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 27, 2004; the Forum received a hard copy of the Complaint on July 30, 2004.

On July 28, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <surfingbedding.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 25, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@surfingbedding.com by e-mail.

A timely Response was received and determined to be complete on August 23, 2004.

On September 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain name at issue is substantially the same and confusingly similar to the domain name and mark that has been utilized by the Complainant;  that the Respondent has no rights or legitimate interests in the domain name at issue; and that the domain name at issue was registered in bad faith.

B. Respondent

The Respondent contends that it has no direct knowledge of any complaints or confusion by users of the domain name at issue; that Respondent has clear rights and legitimate interests with respect to the domain name at issue; and that it did not register the domain name in bad faith.

FINDINGS

The Complainant is engaged in the business of selling surfing and beach-related bedding materials.  Since approximately April, 2002, Complainant has used the names SURFER BEDDING and SURFERBEDDING.COM to market and sell her goods, and has been commonly known by these names since that time.

          

On June 26, 2003, Complainant filed for a United States Trademark for SURFERBEDDNG and the application is currently pending.

The Respondent is engaged in the business of designing, manufacturing, wholesaling and retailing surfing and beach-related bedding and accessories.  Respondent states this business was started in 2000 and uses the tagline “Bedding for Beachgoers” and registered its trademark UHULA and logo with the United States Patent Office on December 26, 2000.

Beginning in May, 2002, Complainant and Respondent had a short-term business relationship.  During this relationship, Respondent became aware of Complainant’s use of the <surferbedding.com> domain name and registered the domain name at issue on approximately January, 2003.

It appears that Respondent also registered the domain name <surfbedding.com> and has transferred that domain name to Complainant.  

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

It would appear from the evidence presented that Complainant has established common law rights in the SURFERBEDDING mark.  Complainant asserts that it has used the mark since April 2002 in association with its bedding business, and provided evidence that its products have been featured in magazines informing readers that Complainant’s products can be found at Complainant’s website at the <surferbedding.com> domain name.  The Complainant has established common law rights through secondary meaning associated with its products.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”).

In addition, on June 26, 2003, Complainant filed for a trademark registration with the United States Patent and Trademark Office.  Complainant’s pending trademark application is sufficent to show rights in the mark.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Further, the domain name at issue is confusingly simlar to Complainant’s mark as it simply replaces the “er” suffix with the “ing” suffix added to the word “surf.”  The mere substitution of a few letters within Complainant’s mark is not sufficient to negate the confusing similarity of the domain name.  Complaint has received reports from customers that when they tried to access Complaint’s website, and happened to use “surfing” instead of “surfer” they were redirected to Respondent’s website at the <uhula.com> domain name.  See Victoria's Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant's marks); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant).   

Rights or Legitimate Interests

There is no evidence to indicate that Respondent has ever, as an individual, business or other organization, been commonly known by the <surfingbedding.com> domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

In addition, Complainant asserts that the domain name at issue diverts Internet users, including Complainant’s existing and potential clients, to Respondent’s competing website at the <uhula.com> domain name.  Respondent’s use of the domain name at issue to divert Internet users to Complainant’s competitor does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Avery Dennison Corp. v., FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Registration and Use in Bad Faith

It appears from the evidence presented that due to a brief business relationship with Complainant’s manager, Respondent was aware of Complainant’s business, website name and product line.  The evidence also reveals that Complainant and Respondent are both in the surf-related bedding business.  Respondent admits that even though Respondent started her business in 2000, the domain name at issue was not registered until after Respondent had knowledge of Complainant’s rights in the SURFERBEDDING mark.  The Panel finds that this is evidence of bad faith registration and use.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

As the Respondent is engaged in the same type of business as the Complainant, and had a brief business relationship with the Complainant, it appears that the Respondent intentionally registered the domain name for the purpose of disrupting Complainant’s business.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).  The registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <surfingbedding.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf, Panelist
Dated:   September 17, 2004

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