In the recent case of Mancini’s Sleepworld v Laksh Internet Solutions Private Limited, WIPO D2008-1036 September 30, 2008, the Complainant found out the importance of getting a trademark registration. The Complainant, Mancini’s Sleepworld, is a sleep products retailer based in California, who has been in business for approximately 36 years. They operate with approximately 30 locations across California and have an internet presence at www.sleepworld.com. The domain at issue was www.mancincinissleepworld.com.

The Panel in reviewing the facts of the case, did not address the second and third prongs of the Policy requirements and only focused on the first prong, namely whether the domain was identical or confusingly similar. The Panel acknowledged that the domain name was identical but questioned whether Complainant had demonstrated the existence of common law trademark rights. The Panel noted:

The amended Complaint contains nothing by way of text or exhibits to support the Complainant’s claim to common law rights in respect of the name “Mancini’s Sleepworld”. The Complainant has made no effort to support its claims with any evidence.

As a result the Panel DENIED the request for transfer.