National Arbitration Forum

 

DECISION

 

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.

 

Identical and/or Confusingly Similar

 

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.

 

 

Rights or Legitimate Interests

 

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.

 

 

Registration and Use in Bad Faith

 

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