Tuft & Needle, LLC v 郭田田 (guo tian tian)

WIPO Case No. D2022-1941

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tuft & Needle, LLC v. 郭田田 (guo tian tian)

Case No. D2022-1941

1. The Parties

The Complainant is Tuft & Needle, LLC, United States of America (“United States” or “U.S.”), represented by

Cantor Colburn LLP, United States.

The Respondent is 郭田田 (guo tian tian), China.

2. The Domain Name and Registrar

The disputed domain name <tuftneedlemattresses.com> (the “Domain Name”) is registered with Alibaba

Cloud Computing Ltd. d/b/a HiChina ( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, amended Complaint in English on June 8, 2022.

2022. On May 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification
in connection with the Domain Name. On May 31, 2022, the Registrar transmitted by email to the Center its
verification response disclosing registrant and contact information for the Domain Name which differed from
the named Respondent and contact information in the Complaint. The Center sent an email communication
to the Complainant on May 31, 2022, providing the registrant and contact information disclosed by the

On May 31, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 8, 2022, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the

proceeding.

The Center verified that the Complaint together with 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 accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 9, 2022. In accordance with the

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Rules, paragraph 5, the due date for Response was June 29, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2022.

The Center appointed Karen Fong as the sole panelist in this matter on July 6, 2022. 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, based in the United States, produces mattresses, bedding, pillows, mattress accessories, sleep accessories, and bedroom furniture under the brand TUFT & NEEDLE. The business was started in 2012 and the TUFT & NEEDLE trade mark used since then. The brand is registered in many jurisdictions including the United States, European Union, and Republic of Korea. The earliest trade mark registration submitted in evidence is United States Registration No. 4616761 which was registered on October 7, 2014 (the “Trade Mark”). The Complainant’s mattresses have won accolades from a large variety of publications including U.S. News, Men’s Health, and USA Today. Over one million consumers have purchased mattresses bearing the Trade Mark.

The Complainant and its related companies and affiliates own a portfolio of domain names including

<tuftandneedle.com>.

The Domain Name was registered by the Respondent, who is based in China, on January 12, 2022. The website of the Complainant but has hyperlinks titled “View on Amazon” which redirects Internet users to the Complainant’s products as well as that of their competitors on the Amazon.com website to generate pay-per-click revenue.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain

Name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii)          The Respondent has no rights or legitimate interests in respect of the Domain Name; and

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(iii)         The Domain Name was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

-	the Domain Name comprises Latin characters and not Chinese characters;
-	the Complainant is a company based in the United States and unable to communicate in Chinese;
and
-	the Complainant would be put to great expense and inconvenience to have to translate the

Complaint in Chinese, which would cause undue delay.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety except that it
is missing the ampersand or the word “and” between the words “tuft” and “needle” and includes the term
“mattresses”. The omission and addition of these terms do not prevent a finding of confusing similarity
between the Complainant’s Trade Mark and the Domain Name. For the purposes of assessing identity and
confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic
Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement
(section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”)).

The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

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D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a bona fide offering of goods

or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or

service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come

forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain
name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel
weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent is not commonly known by the Domain Name. It has not authorised, licensed, or otherwise permitted the Respondent to use the Trade Marks in the Domain Name or for any other purpose. Further, the use of pay-per-click links on a website which mimics that of the Complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the

Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the fame of the Trade Mark and the fact that the Domain Name incorporates the dominant parts of the Trade Mark, the use of images bearing the Complainant’s goods on the Website, the display of the Trade Mark on the Website, and the offering of the Complainant’s products as well as those of their competitors. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of

domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a

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complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests nor any explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain Name in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. The Website functions as a
pay-per-click site which had been set up for the commercial benefit of the Respondent. It is highly likely that
Internet users when typing the Domain Name into their browser, or finding them through a search engine
would have been looking for a site operated by the Complainant rather than the Respondent. The Domain
Name and the Website is likely to confuse Internet users trying to find the Complainant’s official website.
Such confusion will inevitably result due to the fact that both the Domain Name and Website contain the
Trade Mark.

The Respondent employs the fame of the Trade Mark to mislead Internet users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract, for commercial gain, by misleading Internet users into believing that the Respondent’s Website is that of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <tuftneedlemattresses.com> be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: July 17, 2022