Complainant is Sleepcare Diagnostics, Inc. (“Complainant”), a corporation incorporated under the laws of the State of Ohio, United States of America, represented by Katz, Teller, Brant & Hild, Cincinnati, Ohio, United States of America

Complainant identifies Respondent as midPhase Services, Inc. located in Chicago, Illinois, United States of America. The Response is filed on behalf of T.L. White Corporation located in Boulder, Colorado, United States of America. These entities are collectively referred to as “Respondent”.

2. The Domain Name and Registrar

The domain name at issue is <snorenomore.net> (the “Domain Name”). The registrar is eNom, Inc. (the “Registrar”).

3. Procedural History

On May 24, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email.

On May 26, 2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On May 29, 2006, the Center received hardcopy of the Complaint. On May 29, 2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On June 1, 2006, the Center requested amendment of the Complaint. On June 6, 2006, the Center received an Amendment to the Complaint from Complainant via email.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On June 8, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On June 23, 2006, the Center received the Response of Respondent via email. On June 27, 2006, the Center received the Response of Respondent in hardcopy.

On July 6, 2006, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

4. Factual Background

Complainant runs sleep disorder diagnostic facilities, has registered the domain name <snorenomore.com> and advertises using the phrase “snorenomore.” Complainant appears to offer its services in a distinct portion of the State of Ohio in the United States of America.

Respondent sells an anti-snoring ring using advertising in the print media and using the <snorenomore.net> website. . Email messages have been provided to the Center advising the Panel that the Domain Name is owned and used by T.L. White Corporation and not by midPhase Services, Inc.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has common law service mark rights in the phrase SNORENOMORE (the “Mark”). Complainant further contends that the Mark is used in connection with the provision of diagnosis and treatment of sleep disorders in sleep diagnostic facilities staffed with leading physicians and technicians to test, diagnose and treat all forms of sleep disorders. Complainant attached copies of its advertising using the phrase “snorenomore” to its Complaint. Complainant does not allege that it has any registrations of the purported Mark.

ii. Complainant argues that the Domain Name is confusingly similar to the Mark, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark with the addition of “.net.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), because Respondent has no registrations of “snorenomore.”

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii) because Respondent has attempted to attract for financial gain, Internet users to Respondent’s website or to other online locations by creating a likelihood of confusion with the Complainant’s Mark. Complainant further contends that the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website could result in substantial harm to the Complainant’s Mark.

B. Respondent’s contentions

i. Respondent asserts that Complainant has not made a sufficient showing that it has a service mark in the phrase “snorenomore.” Respondent asserts that Complainant has no registered trademark or service mark in SNORENOMORE. Respondent argues that the only evidence offered by Complainant of any common law mark is the script of a radio spot and a print ad which contain reference to Complainant’s domain name <snorenomore.com>. Respondent argues that the registration and maintenance of a domain name does not confer a trademark or service mark upon Complainant.

ii. Respondent does not contest that the Domain Name is identical to the purported service mark except for the extension “.net” at the end of the Domain Name.

iii. Respondent asserts that it has rights to or legitimate interests in the Domain Name because it used the Domain Name as part of a bona fide offering for sale of an anti-snoring ring with no notice of Complainant’s alleged rights in the Mark. Respondent registered the Domain Name on November 10, 2004. Respondent contends that it did not know of this dispute until it received a demand letter on May 22, 2006.

iv. Respondent denies that it registered or used the Domain Name in bad faith. Respondent continues that Complainant has not alleged any facts in support of the bad faith requirement.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant does not allege that it has any registrations of the purported Mark. Therefore, in order to meet the requirement of the Policy, Paragraph 4(a)(i), Complainant must show by a preponderance of the evidence that its purported Mark has acquired secondary meaning as the source of goods and/or services. To demonstrate common law rights, Complainant must show that the mark has acquired a secondary meaning by having been used for so long and so exclusively by one merchant with reference to the particular article that in that trade and to the particular branch of the purchasing public, the word or phrase has come to mean that the article was the product of the merchant in question. Broadway Trading, LLC v. Gene Weissman, National Arbitration Forum (NAF) Case No. FA94310. Having made this showing, Complainant would then have common law service mark rights in the phrase “snorenomore.”

Complainant contends that the Mark is used in connection with the provision of diagnosis and treatment of sleep disorders in sleep diagnostic facilities staffed with leading physicians and technicians to test, diagnose and treat all forms of sleep disorders. Complainant attached copies of its advertising using the phrase “sleepnomore” to its Complaint. Only two samples are attached: one of a radio script and another of a published ad.

Respondent asserts that Complainant has not made a sufficient showing that it has a service mark in the phrase “snorenomore.” Respondent argues that the only evidence offered by Complainant of any common law mark is the script of a radio spot and a print ad which contain reference to Complainant’s domain name <snorenomore.com>. Respondent argues that the registration and maintenance of a domain name does not confer a trademark or service mark upon Complainant.

The Panel agrees with Respondent that the evidence presented by Complainant is insufficient to establish common law service mark rights for purposes of this proceeding. Therefore, any confusing similarity between the Doman Name <snorenomore.net> and Complainant’s domain name <snorenomore.com> is not relevant. Complainant has failed to meet the requirements of the Policy, paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), because Respondent has no trademark or service mark registrations of “snorenomore.”

Respondent asserts that it has rights to or legitimate interests in the Domain Name because it used the Domain Name as part of a bona fide offering for sale of an anti-snoring ring with no notice of Complainant’s alleged rights in the Mark. Respondent registered the Domain Name on November 10, 2004. Respondent contends that it did not know of this dispute until it received a demand letter on May 22, 2006.

Respondent’s lack of registration of a trademark or service mark is not sufficient to defeat Respondent’s claim that it has rights to or legitimate interests in the Domain Name. Complainant has not provided evidence to contradict Respondent’s assertion of a bona fide offering for sale of goods using the Domain Name.

Therefore, the Panel finds that Respondent has established the elements of the Policy, paragraph 4(c)(i) and has rights to and legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of a domain name:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(b)(iv) because Respondent has attempted to attract for financial gain, Internet users to Respondent’s website or to other online locations by creating a likelihood of confusion with the Complainant’s Mark. Complainant further contends that the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website could result in substantial harm to the Complainant’s Mark.

Respondent denies that it registered or used the Domain Name in bad faith. Respondent continues that Complainant did not even allege any facts in support of this allegation.

The Panel agrees with Respondent that the allegations of Complainant are not supported by any evidentiary basis. Therefore, the Panel finds that Complainant has failed to satisfy the requirements of any of the subsections paragraph 4(b)(i)-(iv) and has not shown the existence of bad faith required under the Policy, paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that for purposes of this proceeding, Complainant does not have protectable trademark rights in the phrase “snorenomore”; (b) that Respondent has established rights or legitimate interests in the Domain Name; and (c) that Respondent did not register and uses the Domain Name in bad faith. Therefore, the Panel denies Complainant’s request pursuant to paragraphs 4(i) of the Policy and 15 of the Rules that the Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: July 23, 2006