Shihadeh Carpets v. Hutchinson Associates
Inc.
Claim Number: FA0204000110775
PARTIES
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.
A.
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.
B.
Respondent
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.
DECISION
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.
Linda
M. Byrne, Esq.
Dated: July 24, 2002
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