Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Aero Products International, Inc. of Illinois, United States of America, represented by Brinks Hofer Gilson & Lione of United States of America.

The Respondent is Mattress Liquidation Specialists, C/O Ken Hightower, of Phoenix, Arizona, United States of America, represented by Gary R. Ilmanen, Esquire

of Riverside, California, United States of America.

The disputed domain name <aero-bed.com> is registered with Tucows.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2002. On October 7, 2002, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 9, 2002, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 18, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2002. The Response was filed with the Center on November 6, 2002.

The Center appointed Mark V.B. Partridge as the sole panelist in this matter on November 19, 2002. 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.

On December 4, 2002, the Panel granted a request for leave to make additional submissions, which have been received from both parties.

Complainant is engaged in the manufacture and sale of inflatable mattresses and bedding under the AEROBED and AERO marks. The AEROBED mark has been used since March 1999. The AEROBED mark is the subject of a pending U.S. trademark application filed on an "intent to use" basis. A Notice of Allowance has been issued. Complainant also owns registrations and applications for the AEROBED mark in various foreign jurisdictions. Complainant has also registered many domain names that incorporate the AEROBED mark, including "www.aerobed.com".

Complainant also owns an incontestable federal registration for the mark AERO for "inflatable furniture and bedding for indoor, outdoor and recreational use; air mattresses for camping; sleeping bags" and "air mattresses for recreational use" (Reg. No. 1,755,357).

Respondent is a engaged in the manufacture and sale of spring, foam and latex mattresses. On April 30, 2002, Respondent registered the disputed domain name <aerobed.com> ("the Domain Name"). Respondent has used this domain name to direct traffic to its website at "www.mattressliquidation.com", where it sells products in competition with Complainant.

After receiving an objection from Complainant, Respondent stopped using the Domain Name to redirect traffic and offered to sell the Domain Name for $25,000.

Complainant contends that the Domain Name is confusingly similar to marks in which it has prior rights; that Respondent has no legitimate right or interest in the Domain Name; and that Respondent has registered and used the Domain Name in bad faith by using it to redirect traffic to an competitor’s site and by offering to sell the Domain Name for profit.

Respondent contends that its use of the Domain Name to redirect traffic was temporary. Instead, Respondent claims it intended to use the Domain Name for an informational site about mattresses. Respondent also asserts that Complainant uses the marks in bad faith by misrepresenting the nature of its registrations for those marks. Nevertheless, Respondent does not contest the fact that the Domain Name is identical or confusingly similar to a mark in which the Complainant has rights.

Respondent admits that the Complainant at least has common law rights in the marks AERO and AEROBED and that the Domain Name is identical or confusingly similar to those marks. Thus, the first element of the claim is established.

Complainant has shown that Respondent is not known by the Domain Name and is not making bona fide use of the domain name.

Respondent contends that it has a legitimate interest in the Domain Name because it intends to use the Domain Name for a consumer education site. The Policy provides that legitimate interests may be found where the Respondent can show that it has a demonstrable plan for bona fide use of a domain name prior to notice of the Complainant’s objection.

In support of its position, Respondent submits an affidavit of its webmaster that states in relevant part that:

"Mr. Hightower [of the Respondent] directed me to arrange for Internet browsers reaching [the Domain Name] to be directed to his existing home page while we pursued further development of specific content. When the dispute with Aero Products arose, Mr. Hightower requested that I ‘unmap’ the domain name service direction, pending resolution of the dispute. Subsequently, Mr. Hightower requested that I remap the domain name to point to our incomplete educational page regarding air-type mattresses."

The affidavit of Mr. Hightower states in part: "My intent was for a temporary direction to the existing MATRESSES.NET home page while we developed web content that was specifically targeted to consumers who need information comparing air-type, latex-type, foam-type, and spring-type mattresses."

It appears that the Domain Name is now directs traffic to a site headed:

"MATTRESS LIQUIDATION. Premium Mattress – direct from the factory. Mattresses.net [Phone Number]

AeroBed? Welcome to Aero-Bed.com

Looking for an Aerobed?"

The site then makes advertising claims that a latex bed is far better than an AeroBed and includes a link to the AeroBed company website.

I do not believe the current website constitutes fair or non-commercial use under the policy. The current web pages advertise Respondent’s mattress business and is critical of AeroBed mattresses. The use of the Domain Name to lead Internet users to this advertisement and the prominent references to AeroBed go beyond the level of use permissible for legitimate fair use. Respondent erroneously claims this use is non-commercial because Respondent does not compete with Complainant in the sale of air mattresses. It is obvious from the advertising that currently appears at the Domain Name address that Respondent competes with Complainant in the sale of mattresses. The evidence thus shows that the Domain Name is currently used with the intent of reaping commercial gain through the sale of latex mattresses by misleadingly diverting consumers seeking Complainant’s products. Such use does not give rise to a legitimate interest in the Domain Name.

In addition, it appears from Respondent’s submissions, that any intent to use the Domain Name for a consumer education site, even if credible, arose after notice of Complainant’s objection. No objective evidence is given of any demonstrable plan for legitimate use existing prior to Complainant’s objection, leading to the conclusion that any such plan was an afterthought. Therefore, I find that Respondent has failed to rebut Complainant’s showing of a lack of right or legitimate interest.

Respondent’s offer to sell the Domain Name arose only after Respondent was contacted by Complainant. Respondent argues that its communications with Complainant constitute settlement negotiations that are inadmissible as evidence. Without ruling on that evidentiary issue, I will accept in the context of this case that the offer to sell the Domain Name for $25,000, while suspicious, may arguably be justified as a settlement offer without being conclusive proof of bad faith.

It appears, nevertheless, that the Domain Name was initially registered and used for the purpose of misdirecting Internet users to a website where Respondent sold mattresses in competition with Complainant. After an objection was made, Respondent changed the misdirection to a web page that advertised the benefits of its latex mattresses over AeroBed mattresses. In both cases, I find that Respondent was acting in a manner designed to disrupt the business of a competitor. Each instance results in a form of bait and switch. Complainant’s mark is used as bait to lead Internet users to Respondent’s latex mattress business. In each instance, Respondent relies on a likelihood of confusion with Complainant’s mark to attract business for commercial gain. Respondent does not even attempt to justify its initial use of the Domain Name as fair use and I find that its current use is not fair use for the reasons stated above.

In short, I believe the evidence shows that the Domain Name was deliberately registered and used to disrupt the business of a competitor and to misdirect Internet users to Respondent’s business for commercial gain based on confusion with Complainant’s mark.

I further find that Respondent’s allegations of Complainant’s unclean hands are not a defense or justification. The alleged misstatements about Complainant’s trademark applications and registrations are not material here since Respondent admits that Complainant has common law trademark rights and in fact identifies AEROBED as Complainant’s mark on its website.

I also reject Respondent’s request for a finding of reverse domain name hijacking since the evidence supports a finding on the main claim in Complainant’s favor.

The parties’ other arguments have been considered and not deemed material to the decision to the extent they have not been directly addressed in this decision. Although additional submissions were received, the evidence in the Complaint and Response provide sufficient basis for decision.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aero-bed.com> be transferred to the Complainant.