Standard Textile Co., Inc. v. Standard
Textiles c/o Lubna Jamil Horani
Claim Number: FA0501000399561
PARTIES
Complainant
is Standard Textile Co., Inc. (“Complainant”),
represented by Kathryn E. Smith, of Wood, Herron and Evans LLP,
2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Standard Textiles c/o Lubna Jamil Horani (“Respondent”), represented by Khurram Gul Ghory, of Ali & Associates, 6-8 Shaheen Towers, 23-A,
P.E.C.H.S., Block-VI, Main Shahrah-e-Faisal, Karachi, Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <standardtextiles.com>,
registered with Enom, Inc..
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
The
Honourable Sir Ian Barker Q.C.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 11, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <standardtextiles.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has verified
that Respondent is bound by the Enom, 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
January 20, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 9, 2005 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@standardtextiles.com by e-mail.
A
timely Response was received and determined to be complete on February 7, 2005.
A
timely Additional Submission was received from the Complainant.
On February 16, 2005 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed the Honourable Sir Ian
Barker, Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
(a)
The
disputed domain name is confusingly similar to registered trademarks in which
Complainant has rights.
(b)
Respondent
has no rights or legitimate interests in the disputed domain name.
(c)
Respondent
has registered and uses the disputed domain name in bad faith.
B.
Respondent
(a)
Complainant
has not made out a case and, in any event, is guilty of laches and
acquiescence.
(b)
Respondent
is an export house trading from Pakistan in various textile items under the
name “Standard Textiles.”
(c)
Respondent’s
trade name for its products is used in its website under the disputed domain
name.
(d)
Respondent
has exported from Pakistan under the name “Standard Textiles,” goods to the
value of millions of rupees.
(e)
Complainant
has no reputation or goodwill in Pakistan.
(f)
Complainant
has not made out a case of deception or confusion.
(g)
The words
‘standard’ and ‘textile’ are in common parlance and Respondent is the bona fide
user of the STANDARD TEXTILES trade name.
(h)
Complainant
has not made out a case for bad faith and did not challenge Respondent’s use of
the disputed domain name until January 2005.
C.
Complainant’s Additional Submissions
(a)
Respondent’s
response offers no evidence to support its assertions, which are mere puffery.
(b)
Its use of
the name “Standard Textiles” for 18 months does not entitle it to claim that its
mark is famous.
(c)
Complainant
does much business in Pakistan, from which country it buys textiles to make
products which are labeled “Standard Textile – made in Pakistan.” It has imported millions of US dollars worth
of goods from Pakistan where it employs a sourcing manager.
(d)
Complainant
requires its suppliers in Pakistan to manufacture textile products according to
its precise specifications. Therefore,
goods which it sources from Pakistan bearing the “Standard Textile” label,
should not be confused with lesser quality goods bearing the “Standard
Textiles” label.
(e)
The claim
for laches is spurious.
FINDINGS
(a)
Complainant
is the owner of several U.S. registered trademarks for the STANDARD TEXTILE
mark (with or without a design) for a wide variety of textile products and
clothing. These trademarks are
registered in a number of other countries, but not in Pakistan.
(b)
By reason
of its trading under the STANDARD TEXTILE mark for 63 years, Complainant has
become well-known worldwide as a supplier of textile products.
(c)
Complainant
purchases much of its raw product from Pakistan where various textile items are
manufactured by local suppliers on Complainant’s behalf.
(d)
It is
highly likely that anybody in the textile trade in Pakistan such as Respondent,
would have known of Complainant and its activities.
(e)
Respondent
registered the disputed domain name on November 23, 2003.
(f)
Respondent
emailed Complainant on October 14, 2004 enquiring about doing business with
Complainant. In this email, Respondent
indicated that it had changed its name from time to time. The words used were “we have been trading
under different titles.”
(g)
The
disputed domain name directs Internet users to a website that advertises
Respondent’s services in the field of textile goods.
(h)
Respondent’s
response is strong on rhetoric but short on fact. As well as there being no supporting evidence given, there are no
dates as to when Respondent set up in business under the name “Standard
Textiles.” Nor is there any
corroborated information as to sales or production.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The <standardtextiles.com>
domain name registered by Respondent is confusingly similar to Complainant’s
STANDARD TEXTILE mark. The domain name
incorporates Complainant’s mark in its entirety, adding only the letter “s” and
the “.com” generic top-level domain (gTLD) and removing a space. The mere addition of a single letter and a
gTLD to Complainant’s registered mark and the removal of a space are irrelevant
and fail to distinguish the disputed domain name.
The argument that the words of the
registered trademark are ‘generic’ does not assist the Respondent. The Policy speaks of marks in which
Complainant has rights. Clearly by the
registration of the trademarks, Complainant has acquired rights in them. Whether the trademark ought not to have been
registered on account of genericism, is not for the Panel to determine.
Respondent did
not register the <standardtextiles.com> domain name until November
24, 2003, more than 60 years after Complainant began using its STANDARD TEXTILE
mark. Respondent’s WHOIS information indicates that the registrant
of the disputed domain name is known as “Standard Textiles c/o Lubna Jamil
Horani.” No evidence suggests that
Respondent is commonly known by the disputed domain name under Policy ¶
4(c)(ii). See 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”).
Respondent is not using the <standardtextiles.com>
domain name in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and Respondent is not making a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Respondent’s domain name redirects
Internet users to Respondent’s commercial website, which offers products that
are in competition with Complainant’s products. Respondent commercially benefits from this diversion. Respondent
makes opportunistic use of Complainant’s mark in order to capitalize on the
goodwill and fame associated with the STANDARD TEXTILE name and fails to
establish rights in the domain name. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant’s site to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find that a bona
fide offering of services in a respondent’s operation of [a] web-site using
a domain name which is confusingly similar to the complainant’s mark and for the
same business.”).
Once Complainant makes a prima facie
case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish
rights or legitimate interests in the domain name. In the view of the Panel, Respondent has failed to discharge this.
Respondent’s confusingly similar
variation of Complainant’s STANDARD TEXTILE mark can ensnare unsuspecting
Internet users and redirect them to its competing commercial website. Respondent commercially benefits by diverting
Internet users searching under Complainant’s mark.
Complainant argues that Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to a website that offers
products that compete with those offered by Complainant. Respondent’s use of the <standardtextiles.com>
domain name establishes that Respondent registered and used the domain name for
the purpose of disrupting the business of a competitor pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant’s marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant’s business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent diverted
business from Complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)).
Complainant argues that Respondent had
actual or constructive knowledge of Complainant’s rights in the STANDARD
TEXTILE mark because the mark is famous and because the mark is registered with
the U.S. Patent and Trademark Office.
Moreover, Complainant alleges that correspondence between Complainant
and Respondent in the record evidences that Respondent had constructive
knowledge of Complainant’s rights in its mark.
Moreover Respondent, although living in
Pakistan, must have known of Complainant and its mark by reason of
Complainant’s heavy involvement with Pakistani textile suppliers and
manufacturers.
Therefore the Panel has no hesitation in
finding that the disputed domain name was registered in bad faith and continues
to be used in bad faith. The claim for
laches based on a delay of 3 months between Respondent’s email to Complainant
and the commencement of this proceeding just does not warrant any serious
consideration.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <standardtextiles.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honourable Sir Ian Barker Q.C. Panelist
Dated: February 28, 2005
National
Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page