Shihadeh Carpets v. Hutchinson Associates Inc.
Claim Number: FA0204000110775
Complainant is Shihadeh Carpets, Ardmore, PA (“Complainant”) represented by Peter L. Shihadeh. Respondent is Hutchinson Associates Inc., Chicago, IL (“Respondent”) represented by Richard J. Gurak, of Welsh & Katz, Ltd.
The domain name at issue is <orientalrugs.biz>, registered with Namescout.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne, Esq. as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, because Complainant timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel, and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 23, 2002; the Forum received a hard copy of the Complaint on May 22, 2002.
On May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
On June 17, 2002, Respondent requested an extension with which to file its Response. The Forum granted Respondent’s request on June 18, extending the Response deadline to July 1, 2002.
A timely Response was received and determined to be complete on June 28, 2002.
On July 12, 2002, pursuant to STOP Rule 6(b), the Forum appointed Linda M. Byrne, Esq. as the single Panelist.
The remedy sought is the transfer of the domain name from Respondent to Complainant.
Complainant contends that Respondent's domain name <ORIENTALRUGS.BIZ> is identical to a trademark in which the Complainant has rights, ORIENTALRUGS.COM; that the Respondent has no rights or legitimate interest in respect of the domain name; and that the domain name has been registered or is being used in bad faith.
Respondent contends the Complainant does not possess any trademark rights in ORIENTALRUGS.COM, that Respondent does have rights and a legitimate interest in <ORIENTALRUGS.BIZ>, and that Respondent has acted in good faith.
Complainant registered the domain name ORIENTALRUGS.COM in 1995, and it will be assumed that Complainant has used the domain name since that time. Complainant provided no documented support for its use of ORIENTALRUGS.COM during the past seven years, but there has been no claim to the contrary. Complainant's business sells rugs via the <ORIENTALRUGS.COM> website.
Complainant does not own a federal trademark registration for ORIENTALRUGS or ORIENTALRUGS.COM. Complainant alleges common law trademark rights in the term ORIENTALRUGS.COM.
Before any notice to Respondent of the dispute, Respondent created a website to sell oriental rugs. Respondent owns a company based in Chicago, Illinois called Fortunate Discoveries, which sells oriental rugs. The company has been selling oriental rugs since 1995. The website for Fortunate Discoveries, <fortunatediscoveries.com>, has been active since 1998. This website provides information about oriental rugs. In March, 2002, Respondent alleges that it registered the domain name <ORIENTALRUGS.BIZ> for use as the name of its existing website, currently located at <fortunatediscoveries.com>.
Paragraph 15(a) of the STOP Rules instructs this Panel to “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.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may be filed only when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (GTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Respondent has not proven any legal trademark rights or registration for the <ORIENTALRUGS.BIZ> domain name. Respondent has not provided evidence to prove the Respondent has been commonly known by the domain name <ORIENTALRUGS.BIZ>. Respondent stated that before any notice of this dispute, Respondent used the domain name <fortunatediscoveries.com>. Respondent alleged that it intended to use <ORIENTALRUGS.BIZ> domain name as the name of this existing website. However, Respondent submitted no evidence to support this intention or to support any preparations to effect this domain name change. Thus, this Panel concludes that Respondent has not clearly demonstrated its rights or legitimate interest in the <ORIENTALRUGS.BIZ> domain name. Nevertheless, this conclusion is irrelevant in view of the Panel's determination regarding the first factor.
Respondent is not using the domain name <ORIENTALRUGS.BIZ>, so it clearly is not being used in bad faith. This Panel concludes that no evidence was provided that the domain name was registered in bad faith, so Complainant has failed to provide any evidence to support the allegation of bad faith.
In summary, Complainant has failed to prove that it owns enforceable trademark rights in the term "ORIENTAL RUGS" or "ORIENTALRUGS.COM." In addition, Complainant has failed to prove that Respondent registered or used <ORIENTALRUGS.BIZ> in bad faith.
Accordingly, this Panel finds in favor of the Respondent. The Panel dismisses the complaint, and thereby denies Complainant's request for transfer of the <ORIENTALRUGS.BIZ> domain name from Respondent to Complainant. There are no further challenges pending against this domain name under the STOP Policy.
M. Byrne, Esq.
Dated: July 24, 2002
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