Mt. Vernon Mills, Inc. v.
Claim Number: FA1005001325214
PARTIES
Complainant is Mt. Vernon Mills, Inc. (“Complainant”), represented by Douglas
W. Kim, of McNair Law Firm, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <textraw.net> and <textraw.org>
(“the Domain Names”), registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted electronically to the National Arbitration Forum
on May 18, 2010 a Complaint and on May 24,
2010 an Amended Complaint.
On May 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the Domain Names are registered with Godaddy.com, Inc. and that Respondent is the
current registrant of the Domain Names. Godaddy.com, Inc. has verified that Respondent
is bound by the Godaddy.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On May 25, 2010, the Forum served the Amended Complaint and all
Annexes, including a Written Notice of the Complaint, setting a deadline of
June 14, 2010 by which Respondent could file a Response to the Amended Complaint,
via e-mail to all entities and persons listed on Respondent’s registration as
technical, administrative, and billing contacts, and to postmaster@textraw.net
and postmaster@textraw.org. Also on May
25, 2010, the Written Notice of the Complaint, notifying Respondent of the
email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on June 14, 2010.
Complainant’s Additional Submission was received on June 18, 2010 and
deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on June 23, 2010 and
deemed to be in compliance with Supplemental Rule 7.
On June 25, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant claims rights in the trademark TEXTRAW in connection with artificial straw products. It says the Domain Names are identical to that mark and that Respondent has no rights or legitimate interests in the Domain Names, which were registered and are being used in bad faith.
B. Respondent
Respondent asserts rights of its own in the TEXTRAW mark and denies all
of Complainant’s assertions.
FINDINGS
The parties entered into an agreement on March 16, 2009 which expired on March 15, 2010. The Domain Names were registered by Respondent during the course of that agreement. Now Complainant and Respondent both assert rights to the TEXTRAW mark, to the exclusion of the other.
The day after filing the Complaint, on May 19, 2010, Complainant commenced
court proceedings against Respondent and others in the Court of Common Pleas, Greenville County, South
Carolina, C.A. No. 2010-CP-23-4101 in connection with and relating to, inter
alia, the TEXTRAW trademark and the Domain Names (“the Court Proceedings”).
Damages are claimed in respect of Respondent’s use of the Domain Names and its
refusal to transfer them to Complainant, although no order is sought for their
transfer to Complainant.
By Notice filed on May 26, 2010, Complainant is currently opposing
before the Trademark Trial and Appeal Board of the United States Patent and
Trademark Office an application by Respondent to register the mark TEXTRAW
(“the Opposition Proceedings”).
Respondent states that in both proceedings it intends to dispute
Complainant’s rights and to assert Respondent’s ownership of the TEXTRAW mark
and of the Domain Names.
Paragraph 18(a) of the Rules gives
the Panel discretion to suspend or terminate a UDRP proceeding where the Domain
Name is the subject of other legal proceedings. Since the issue as to whether
either party has rights in the TEXTRAW mark will be determined in one or both
of the Court Proceedings and the Opposition Proceedings and is critical to the
outcome of this Administrative Proceeding, it is inappropriate for this Panel
to determine that issue under the ICANN Policy. See
e.g. Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183
and Knipping Kozijnen B.V. v. R.T.P.
Hanssen, WIPO Case No. D2006-0622.
DECISION
Accordingly, the Panel concludes that relief shall be DENIED, without prejudice to any refiled Complaint
Complainant may wish to bring following the determination of the Court Proceedings
and/or the Opposition Proceedings.
Alan L. Limbury, Panelist
Dated: July 1, 2010
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