Milliken & Company v. Carpet Values
Distributing
Claim
Number: FA0404000257085
Complainant is Milliken & Company (“Complainant”),
represented by Adesh Bhargava, of Dykema Gossett, PLLC,
1300 I Street, N.W., Suite 300 West, Washington, DC 20005-3306. Respondent is Carpet Values Distributing (“Respondent”), 3255 County Road 211,
Kingdom City, MO 65262.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <rugsbymilliken.com>, registered with Tucows
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 16, 2004; the Forum received a hard copy of the
Complaint on April 19, 2004.
On
April 19, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <rugsbymilliken.com> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
April 21, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 11, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@rugsbymilliken.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 24, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rugsbymilliken.com>
domain name is confusingly similar to Complainant’s MILLIKEN mark.
2. Respondent does not have any rights or
legitimate interests in the <rugsbymilliken.com> domain name.
3. Respondent registered and used the <rugsbymilliken.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Milliken & Company, is a textile research and manufacturing company
established in 1865, manufacturing, inter alia, textile rugs, carpets,
and floor mats for home and commercial use.
Complainant holds various registrations with the U.S. Patent and
Trademark Office (“USPTO”) for the MILLIKEN mark, including Reg. Nos. 898,986
(for textile rugs and carpets), 908,674 (for textile rugs, carpets and
carpeting, including towels, wool textiles, and cottons and synthetics), and
1,710,105 (for textile fabrics made of natural and/or synthetic fibers),
registered on August 18, 1970, February 23, 1971, and August 25, 1992,
respectively.
Respondent,
Carpet Values Distributing, registered the <rugsbymilliken.com>
domain name on April 11, 2002.
Respondent is using the disputed domain name to refer Internet traffic
to rug manufacturers such as Oriental Renaissance, Surya, Home Dynamix,
Oriental Weavers of America, United Weavers, Radici USA, 828 International
Trading Co., Carpet Art Deco, Kas Oriental, Oriental Weavers Sphinx, Balta,
Associated Weavers, and MSM Rug Pads.
Paragraph 15(a)
of the 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the MILLIKEN mark through registration with the USPTO and
use in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
Respondent’s <rugsbymilliken.com>
domain name is confusingly similar to Complainant’s MILLIKEN mark. The only difference is the addition of the
words “rugs” and “by” which do not significantly distinguish the domain name
from the mark, especially because the added words refer to Complainant’s goods.
See Elder Mfg. Co., Inc. v. Recker,
FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar it is beyond
refute that Respondent’s domain names are virtually identical, and thus
confusingly similar to Elder’s trademarks. Any superficial differences between
the domain names and the Elder trademarks are de minimis and of no legal
consequence”); see also Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a complainant’s registered mark is sufficient to establish
[identical] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”).
The Panel finds
that Complainant has fulfilled Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has no right or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Woolworths
plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent
evidence of preparation to use the domain name for a legitimate purpose, the
burden of proof lies with Respondent to demonstrate that it has rights or
legitimate interests).
Respondent
is appropriating Complainant’s mark in the disputed domain name to host a
website that links to Complainant’s competitors. Using Complainant’s mark to market its competitors’ rugs is
neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use of a domain name pursuant to Policy
¶ 4(c)(iii). See Yahoo! Inc. v. Web
Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that
Respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with Complainant, was not a bona
fide offering of goods or services); see also Computerized Sec. Sys., Inc.
d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services).
Nothing
in the record, including the WHOIS domain name registration information,
suggests that Respondent is commonly known by the domain name or by
Complainant’s mark pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
The Panel finds
that Complainant has fulfilled Policy ¶ 4(a)(ii).
Respondent
registered a domain name that contains in its entirety Complainant’s well-known
mark and did so for Respondent’s commercial gain. Respondent is using the <rugsbymilliken.com> domain
name to advertise and sell rugs.
Complainant’s business also sells rugs.
The Panel finds that, by creating confusion around Complainant’s mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to
sell goods and services similar to Complainant’s goods and services is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb.
5, 2001) (finding that, given the competitive relationship between Complainant
and Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see
also Franpin SA v. Paint Tools S.L.,
D2000-0052 (WIPO May 25, 2000) (finding bad faith where Respondent, a company
financially linked to Complainant’s main competitor, registered and used the
domain name in question to disrupt Complainant’s business).
Respondent is
wholly appropriating Complainant’s mark to lead Complainant’s customers to an
online shop to buy similar products from Complainant’s competitors. The Panel finds that Respondent is
intentionally creating a likelihood of confusion to attract Internet users for
Respondent’s commercial gain which evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) (finding that, if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Complainant has fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <rugsbymilliken.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 4, 2004
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