WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONOrganic Mattress, Inc. v. Jeffrey CikCase No. D2008-19221. The PartiesComplainant is Organic Mattress, Inc. of Yuba City, California, United States of America, represented by the law firm Hawley, Troxell, Ennis & Hawley, LLP, United States of America. Respondent is Jeffrey Cik of Cleveland of Ohio, United States of America, represented by the law firm Fulbright & Jaworski, LLP, United States of America. 2. The Domain Name and RegistrarThe disputed domain name <organicpedic.com> is registered with GoDaddy.com, Inc. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 17, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 20, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 7, 2009, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on January 9, 2009.1 The Center verified that the Amended 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 regard to the pending expiry of the disputed domain name, the Center sent an email communication to GoDaddy.com, Inc., requesting confirmation that the disputed domain name would be locked and whether any action of the parties was required to keep the disputed domain name locked. GoDaddy.com, Inc. informed that the disputed domain name would be locked during the procedure and that Complainant bore the burden of ensuring that the disputed domain name does not expire. Complainant paid the renewal fee for one year on January 12, 2009. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 4, 2009. The Response was filed with the Center on February 4, 2009. The Center appointed Richard G. Lyon as the sole panelist in this matter on February 12, 2009. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On February 13, 2009, Complainant filed with the Center by electronic mail a proposed Supplemental Filing. On February 16, 2009, following its customary practice the Center acknowledged this filing and advised the parties that the Rules, paragraphs 10 and 12, in effect left it to the discretion of the Panel whether or not to allow the Supplemental Filing. 4. Factual BackgroundComplainant and Respondent are both involved in the marketing and sale of “organic” mattresses. Complainant today sells mattresses branded as ORGANICPEDIC. Complainant holds a trademark registered with the United States Patent and Trademark Office (USPTO) for ORGANICPEDIC. It applied for registration in February 2005 and the registration issued in December 2007. The USPTO records indicate that the first use in commerce claimed by Complainant was on September 4, 2007.2 Respondent registered the domain name <naturepedic.com> in June 2004. In November 2004 Respondent applied for federal registration of its trademark NATUREPEDIC for mattresses. That registration issued in January 2006, with a claimed first use in commerce of July 15, 2004. The parties have known each other since 2003 or 2004. At that time they negotiated a private label arrangement under which Complainant would manufacture for Respondent mattresses to be sold under Respondent’s NATUREPEDIC brand. This private label arrangement had terminated by November 2005. Respondent registered the disputed domain name in January 2006. Respondent has registered forty-eight domain names that incorporate words implying environmental-friendly or customer friendly mattresses, most of which use word combinations that include “nature”, “organic”, “health”, “pedic”, or variants thereof. The first of these, <naturepedic.com>, was registered in June 2004; the last of them, <maturepedic.com>, in December 2008. Complainant’s counsel sent Respondent a cease-and-desist letter on July 22, 2008, demanding transfer of the disputed domain name from Respondent to Complainant. Respondent’s counsel replied August 21, 2008, denying that Complainant was entitled to recover the disputed domain name from Respondent under the Policy or the Anti-Cyber Squatting Consumer Protection Act. Respondent has never used the disputed domain name for an active website. At some point an Internet user who entered it into a browser was diverted to a site controlled by Respondent at which Respondent sold its products. When the Panel accessed the disputed domain name he received an “Under Construction” notice. 5. Parties’ ContentionsA. Complainant contends as follows:Complainant has rights in the word ORGANICPEDIC by virtue of its USPTO-registered trademark. The disputed domain name is identical to this mark except for the generic top-level domain, which is not relevant in any finding of identity. Complainant has never authorized Respondent to use its ORGANICPEDIC mark, and Respondent or its products have never been known by that word. Respondent had constructive notice of Complainant’s mark. Furthermore, Respondent had actual notice of Complainant’s earlier use of that mark. One of Complainant’s principal submits an affidavit in which he states that during the negotiations preceding the private label manufacturing agreement, he “specifically mentioned [to Respondent’s representative] that [Complainant’s] companies were going to use the ‘organicpedic’ brand, and that [Complainant] didn’t think [Respondent’s] proposed ‘naturepedic’ brand was going to be a problem for [Complainant]” . Complainant included several mattresses branded ORGANICPEDIC in its October 2005 catalog. This catalog was sent to Complainant’s mailing list, which included representatives of Respondent. Respondent’s registration of the disputed domain name following this notice of Complainant’s use or intended use of its Organicpedic products therefore is not legitimate or bona fide under the Policy. As Respondent had actual notice of Complainant and its mark, its registration of the disputed domain name was in bad faith, intentionally to take advantage of that mark to sell its own competing products. Respondent’s use of the mark prevents Complainant from using Complainant’s trademark in a corresponding domain name, and such use has been intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source of the sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s non-use (“passive” use is the term used by Complainant) of the disputed domain name is evidence of bad faith use under the “warehousing” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. B. Respondent contends as follows:The disputed domain name is not identical or similar to Complainant’s ORGANICPEDIC mark because Respondent’s rights in the disputed domain name predate Complainant’s rights in that mark. Respondent established its rights by registration of the disputed domain name in January 2006, several months prior to Complainant’s first use in commerce of the ORGANICPEDIC mark. Where Respondent’s registration of a domain name predates Complainant’s trademark rights, Respondent ipso facto has rights and legitimate interest in the disputed domain name. The disputed domain name is a generic term, as the phrase or suffix “pedic” is much used in the sale of mattresses and other orthopedically-friendly products. “organicpedic” is similarly descriptive of Respondent’s products, so under applicable trademark law Respondent is permitted to use it for this purpose. Respondent asserts that in fact it is Complainant who has infringed upon Respondent’s rights by using the phrase in its later-acquired trademark. Respondent’s use of the disputed domain name has not been “passive” as Complainant alleges, and furthermore even non-use may in certain circumstances be legitimate. Its registration of the disputed domain name was for a legitimate purpose and consistent with its practice of registering many domain names that incorporate “mattress”, “pedic”, “nature” or their equivalents. Its use has also not been in bad faith, as bad faith use requires that Respondent had actual notice of Complainant’s mark. Answering the statements in Complainant’s affidavit, one of Respondent’s principals, who participated in the negotiations for Respondent, declares under penalty of perjury that during the business negotiations between the parties Complainant never emphasized the use of the suffix “pedic”, never stated directly or indirectly that Complainant intended to use ORGANICPEDIC as its trademark, and never gave any other indication of its intent to use the word “organicpedic” in any way. Respondent’s declarant states that he has no recollection of receiving the 2005 catalog referred to in Complainant’s affidavit or if he did, he did not read it. Respondent questions whether Complainant in fact actually used ORGANICPEDIC in commerce in 2005, as Complainant’s affiant states, pointing to the 2007 first use in commerce declaration submitted under oath to the USPTO. 6. Discussion and FindingsA. Procedural IssueThe Panel will not consider Complainant’s proposed Supplemental Filing . There was nothing in the Response that Complainant could not or should not have anticipated, nor are there any other exceptional circumstances justifying a departure from the Policy’s stated practice of allowing each party but one pleading.3 B. The MeritsComplainant has plainly met the requirements of paragraph 4(a)(i) of the Policy. It has rights in its ORGANICPEDIC trademark by reason of its USPTO registration, and the disputed domain name is identical to that mark except for the gTLD, which as Complainant argues is not considered in determining identity or confusing similarity. The sufficiency of Complainant’s proof under paragraph 4(a)(i) is evaluated as of the date the Complaint was filed, and it is irrelevant that Respondent may have registered the disputed domain name prior to accrual of Complainant’s trademark rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “WIPO Overview”, paragraph 1.4, Consensus View; Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416. But “[w]hile the [timing of respondent’s registration] is not relevant in determining whether a complainant has established rights in a mark to which the domain name is identical or confusingly similar, it is indeed relevant for purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy”. Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038; see also Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. One element of paragraph 4(a)(iii) that Complainant must establish is that Respondent registered the disputed domain name in bad faith. Both parties impliedly acknowledge that this issue may turn on whether Respondent had knowledge of Complainant’s ORGANICPEDIC mark when that registration occurred in January 2006. Neither party has accurately stated the proper test for proof of registration and bad faith. Contrary to Complainant’s argument, the United States doctrine of constructive notice is rarely applied in a Policy proceeding.4 Except in extraordinary circumstances not present in this proceeding, Complainant must show that Respondent had knowledge of Complainant’s mark and selected the disputed name intentionally to take advantage of whatever goodwill attached to the mark or otherwise in bad faith.5 Contrary to Respondent’s contention, if Respondent had such knowledge bad faith may be found even if the mark at issue be “generic” or “descriptive” or incapable of registration.6 Actual knowledge of the mark may be proven directly or inferred from factual circumstances. As for direct proof, perhaps not surprisingly the parties’ sworn testimony is directly contradictory. Complainant swears that it raised the subject repeatedly, Respondent states under penalty of perjury that it was not discussed at all. Both parties have presented documentary evidence that to some extent supports their respective positions on whether Respondent had actual knowledge. Proof from which the Panel might infer actual knowledge varies with the circumstances of the particular case. See Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644, and cases there cited at fn. 3-11. Several circumstances here tend to support an inference of actual knowledge. The parties had business dealings regarding mattresses prior to Respondent’s registration of the disputed domain name; at that time the parties were business competitors; branding is a common, almost necessary, subject in private-label manufacturing negotiations; and the names selected by the parties for their respective products both use the suffix “pedic” which both parties acknowledge has some significance in the mattress industry. Complainant has submitted its October 2005 catalog that included Organicpedic mattresses, and proof of mailing to a mailing list that included at least one of Respondent’s representatives. Respondent’s version of the parties’ relationship and dealings is also credible and supported by documentary evidence. Complainant’s USPTO filings claim a first use in commerce well after the January 2006 registration of the disputed domain name. Respondent’s registration of numerous domain names employing both the “pedic” suffix and the word organic and other words with a similar connotation does not appear to be contrived or for any reason other than sound business practice,7 and provides a plausible explanation for registration of the disputed domain name that does not involve bad faith. Many companies register domain names that may at some point be used for future products; indeed many companies register domain names with common variants of their own trademark (in Respondent’s case, NATUREPEDIC, which it had applied for prior to registration of the disputed domain name). Respondent’s declaration that he either never received the catalog or, if it was received, read it, is not incredible; how many people read every catalog received in the mail or remember every catalog received four years ago? Complainant does not assert that the word ORGANICPEDIC was prominent or anything other than one among many brand names used. The Panel finds each party’s explanation equally believable. Unlike civil litigation, the Panel has no means to investigate these statements or surrounding context. Cross-examination and discovery are not a part of Policy proceedings. In these circumstances the Panel has no choice but to deny the Complaint. Complainant bears the burden of proof by a preponderance of the evidence on each of the Policy elements. When a disputed factual issue as to which both parties provide equally credible evidence of their position, that burden has not been carried. Two related Policy precedents and their rationale support the Panel’s decision to deny the Complaint. First, “In a close case, the panel should lean toward the Respondents’ view of things”. eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552 (citing Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003-0934 and Rug Doctor, L.P. v. Barry Bourdage, WIPO Case No. DTV2003-0002). The Policy was meant to combat cybersquatting and if the case be close – which this one certainly is – the likelihood of cyberquatting is diminished. Second, both parties reside in the United States and their identities and addresses are known to each other. Should Complainant be dissatisfied with the Panel’s decision it has ready recourse to United States courts. Particularly is a national court the preferred forum when the dispute turns on disputed factual matters. Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805. Since Complainant must establish each Policy element to succeed, the Panel need not address whether Respondent’s use of the disputed domain name was in bad faith or whether Respondent has a right or legitimate interest in the disputed domain name. As these issues similarly turn on disputed factual assertions that the Panel is incapable of resolving, and that may be the subject of litigation between the parties, such discussion is inadvisable as well as unnecessary. 7. DecisionFor all the foregoing reasons, the Complaint is denied. Richard G. Lyon Dated: February 20, 2009 1 All references to the “Complaint” in this decision are to the Amended Complaint. 2 United States of America trademark law allows an applicant to seek registration of a mark prior to actual use in commerce. Such an application, called “intent to use” application, requires an applicant to verify actual use when it occurs. 3 See Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097, for a discussion of the appropriate standard for allowing an unsolicited supplemental pleading. Following his normal practice the Panel has read Complainant’s proposed Supplemental Filing. Nothing in that document would have affected the outcome of this case had the Panel taken it into account in his decision. As has been the case all too often in this Panel’s experience, the unsolicited filing merely restated, albeit with different emphasis, an argument advanced in the Complaint. Also as has been the case all too often in this Panel’s experience, the effect of the supplemental filing was exactly the opposite of what likely was Complainant’s intent in submitting it. The matter emphasized in this document was something that the Panel could easily find on his own in the Complaint and accompanying evidence. By mentioning this matter in standalone fashion in the unsolicited filing Complainant merely emphasized to the Panel a deficiency (here not a fatal deficiency) in the Complaint. 4 WIPO Overview, paragraph 4.6, Consensus View; see Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172, regarding the exception stated in the WIPO Overview). 5 Factory Mutual Insurance Company v. Valuable Web Names, WIPO Case No. D2008-1014; Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103. 6 Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, supra. 7 Most of these domain names were registered in 2004-2006, well before any indication of a dispute between the parties.
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