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#SleepOrganic .com : #Afternic escrow still in the #WHOIS years after #domain was sold

SleepOrganic.com was hit with UDRP, and Afternic was served with it.

In a “whoops!” moment for the popular domain aftermarket, the domain’s true registrant wasn’t changed in the WHOIS, after a sale occurred in 2015.

Here’s what happened, as far as we know.

According to DomainTools, SleepOrganic.com was sold by New Ventures Services, a subsidiary of Web.com, in August 2015. The sale occurred on Afternic, and since then no WHOIS changes were made, and the domain remained at GoDaddy.

As a result, the Complainant in this UDRP, Organic Mattresses, Inc., LifeKind Inc. and Walter Bader, named Afternic as the Respondent. That part was subsequently fixed in the UDRP.

The domain is owned by Naturepedic, a company that owns a related trademark and a competitor to the Complainant. Here are the UDRP findings:

  • Respondent first registered the disputed domain name on July 8, 2009.
  • True Respondent is Mr. Jeffrey Cik, CEO of Naturepedic, one of the leading certified organic mattress manufacturers by way of purchasing the disputed domain name.
  • The change of registrant of the disputed domain name has not updated on the records of Whois.
  • Complainant is a manufacturer or organic and natural mattresses, bedding and related sleep products. Complainant has established rights in the EAT ORGANIC? SLEEP ORGANIC! mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,406,876, registered April 1, 2008).

Interestingly, the domain SleepOrganic.com was originally registered in 2000, by Indian company Panacea Biotec. It dropped, and was re-registered in 2009.

The Respondent’s first point is thus not in line with the domain’s history. Regardless, the NAF panelist delivered a decision favoring the Respondent, and ordered SleepOrganic.com to remain with them.

Full details follow.

The domain transfer was denied.

Organic Mattresses, Inc., LifeKind Inc. and Walter Bader v. Afternic Escrow

Claim Number: FA1912001876801

PARTIES

Complainant is Organic Mattresses, Inc., LifeKind Inc. and Walter Bader (“Complainant”), represented by Robert H. Thornburg of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Florida, USA. Respondent is Afternic Escrow (“Respondent”), represented by A. Joseph Bulua of Ohio, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sleeporganic.com>, registered with GoDaddy.com, LLC.

PANEL

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

Ho Hyun Nahm, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 26, 2019; the Forum received payment on December 26, 2019.

On December 27, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sleeporganic.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sleeporganic.com. Also on January 7, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on February 12, 2020.

On February 18, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

i) Complainant is a manufacturer or organic and natural mattresses, bedding and related sleep products. Complainant has rights in the EAT ORGANIC? SLEEP ORGANIC! mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,406,876, registered Apr. 1, 2008). The disputed domain name is confusingly similar to Complainant’s EAT ORGANIC? SLEEP ORGANIC! mark, as the disputed domain name incorporates the mark in part, excludes the exclamation point, and adds generic top-level domain (“gTLD”).

ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given permission to Respondent to use the EAT ORGANIC? SLEEP ORGANIC! mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Respondent fails to make active use of the disputed domain name but uses it to host pay-per-click links to Complainant’s competitors.

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent refuses to sell the disputed domain name. Further, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliations, or endorsement of Respondent’s website. Finally, Respondent used a privacy service to conceal its identity.

B. Respondent

i) True Respondent is Mr. Jeffrey Cik, CEO of Naturepedic, one of the leading certified organic mattress manufacturers today. Listed Registrant is not the real party in interest in this case, as true Respondent is the party that purchased the disputed domain name. True Respondent has no access to any communications, filings, exhibits, evidence, or annexes between Afternic/Respondent/Registrant and Complainant. As a result true Respondent is severely prejudiced in this action.

ii) Complainant does not have exclusive rights to the phrase “sleep organic” which is not a “coined” or unique phrase, rather, it is a common phrase widely used by numerous parties within the organic and natural mattress and bedding industry. Respondent has rights and legitimate interests in the disputed domain name as it purchased the domain to sell its products in retail operations using the term “sleep organic.”

iii) Respondent had no knowledge of Complainant’s purported mark, and did not register the disputed domain name to sell it to Complainant, to disrupt its business, to prevent it from acquiring a domain name reflecting its trademark, or to confuse users. Respondent did not register the disputed domain name in bad faith as Respondent was not aware that the disputed domain hosted pay-per-click hyperlinks until receiving Complainant’s Complaint, as the party Respondent purchased the domain from did not relinquish control of the resolving webpage. Complainant only makes mere assertions of Respondent’s bad faith.

FINDINGS

1. Respondent first registered the disputed domain name on July 8, 2009.

2. True Respondent is Mr. Jeffrey Cik, CEO of Naturepedic, one of the leading certified organic mattress manufacturers by way of purchasing the disputed domain name.

3. The change of registrant of the disputed domain name has not updated on the records of Whois.

4. Complainant is a manufacturer or organic and natural mattresses, bedding and related sleep products. Complainant has established rights in the EAT ORGANIC? SLEEP ORGANIC! mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,406,876, registered April 1, 2008).

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant claims rights in the EAT ORGANIC? SLEEP ORGANIC! mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,406,876, registered Apr. 1, 2008). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the EAT ORGANIC? SLEEP ORGANIC! mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

Complainant next argues the disputed domain name is confusingly similar to the EAT ORGANIC? SLEEP ORGANIC! mark, because the disputed domain name incorporates the mark in part, excludes the exclamation point, and adds a generic top-level domain (“gTLD”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Sainato’s Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). The Panel therefore determines the disputed domain name is confusingly similar to the EAT ORGANIC? SLEEP ORGANIC! mark per Policy ¶ 4(a)(i).

While Respondent contends that the disputed domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name: i) Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given permission to Respondent to use the EAT ORGANIC? SLEEP ORGANIC! Mark; ii) Respondent does not use the disputed domain name for any bona fide offering of goods or services, or legitimate noncommercial or fair use; and iii) Respondent fails to make active use of the disputed domain name but uses it to host pay-per-click links to Complainant’s competitors.

Given Complainant’s contentions above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.

Respondent rebuts that it has rights and legitimate interests in the disputed domain name because: i) Respondent purchased the disputed domain name with the intention of using it in connection with its retail operations; ii) Complainant does not have exclusive rights to the phrase “sleep organic” which is not a “coined” or unique phrase, rather, it is a common phrase widely used by numerous parties within the organic and natural mattress and bedding industry; iii) Respondent selected <sleeporganic.com> domain name because it incorporates two short, common words in a common commercial phrase in Complainant’s and true Respondent’s shared industry to which no single party has exclusive rights; iv) according to the records of the USPTO over 800+ live trademarks disclaim “sleep” in their mark and over 2700+ live trademarks disclaim “organic” in the registered marks; v) it did not acquire the disputed domain with Complaint’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark; and vi) Respondent did not acquire the disputed domain name with intent to sell it to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website.

A respondent may have rights and legitimate interests in a disputed domain name where it registers the domain name with the intent to use it in connection with its business under Policy ¶ 4(a)(ii). See Genting Berhad v. Tan Kim Sin, FA 94735 (Forum June 28, 2000) (finding that the respondent had legitimate interests in the domain name where the respondent had made preparations to use the domain for his newly formed business); see also Canal + Image UK Ltd. v. VanityMail Servs., Inc., FA 94946 (Forum July 18, 2000) (finding that a draft of an unimplemented business plan was sufficient to show the respondent’s legitimate interest in the domain name). Respondent argues it originally intended to use the phrase “sleep organic” in connection with its retail operations, so it purchased the disputed domain name when it became available. See Resp. Annex 2.

The Panel finds that the use of the disputed domain name by Respondent constitutes the use as a generic name in a common way. There is no evidence that Respondent specifically targeted Complainant. Complainant’s trademark was not particularly well known prior to the registration date of July 8, 2009 of the disputed domain name. There is no evidence that Complainant’s mark was prominent enough to put Respondent on any sort of notice that it existed. The Panel finds that there is no specific proof of intent of Respondent to profit from Complainant’s mark. Respondent did not target Complainant or do anything to do it damage.

As the Panel agrees with Respondent’s contentions, it finds that Respondent has successfully rebutted the prima facie case against it, and thus it finds that Respondent has rights or legitimate interests in the disputed domain name.

Therefore, the Panel concludes that Complainant failed to establish the second element of paragraph 4(a) of the Policy.

Registration and Use in Bad Faith

As the Panel finds Complainant failed to satisfy the second element of paragraph 4(a) of the Policy (rights or legitimate interests), the Panel declines to analyze the third element of paragraph 4(a) of the Policy (bad faith registration and use). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <sleeporganic.com> domain name REMAIN WITH Respondent.

Ho Hyun Nahm, Esq., Panelist

Dated: February 25, 2020


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