DECISION

Kitt Carpet Sales d/b/a Signature Flooring + Design v. Terry Anderson c/o five21

Claim Number: FA0305000157295

PARTIES

Complainant is Kitt Carpet Sales d/b/a Signature Flooring + Design, Round Lake Beach, IL (“Complainant”) represented by Megan Miller. Respondent is Terry W. Anderson c/o five21, Barrington, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <signatureflooringanddesign.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

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.

Edmund P. Karem as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 12, 2003; the Forum received a hard copy of the Complaint on May 12, 2003.

On May 12, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <signatureflooringanddesign.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 9, 2003 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@signatureflooringanddesign.com by e-mail.

A timely Response was received and determined to be complete on June 5, 2003.

Complainant submitted a complete and timely Additional Submission on June 9, 2003.

On June 16, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that the “plus” sign cannot be used in a website address.  Potential customers looking for their site are misdirected to Respondent’s site when they type in signature flooring in a search request.  Such a search request leads them to <signatureflooringanddesign.com>, the domain name in issue, which is not Complainant’s site.  Complainant contends that the name <signatureflooringanddesign.com> is identical to their service mark signature flooring + design.

Complainant contends Respondent should not be considered as having any rights or legitimate interests in the domain name at issue because it is not their business name nor a trademark or service mark registered to Respondent.  The Respondent is not using the domain name in connection with a bona fide business and has not been known as signature flooring + design but was known as, “Complaints O Plenty, Inc.” as of April 8, 2002.

Finally the Complainant contends that Respondent intentionally attempted to attract Internet users to their website by creating a likelihood of confusion and in an attempt to disrupt or maliciously ruin Complainant’s business.  Complainant contends Respondent’s use of the mark is to prevent Complainant from reflecting their mark in a corresponding domain name.

B. Respondent

Respondent asserts that (+) cannot be considered identical to the word and Respondent states that nowhere has Complainant used signature flooring + design in a printed form.  Rather Complainant is using ampersand or the word “and,” and therefore their intention has always been to association with the word “plus” and not the word “and.”  To bolster this contention Respondent refers to several documents containing signature flooring + design.

Respondent contends the use of the domain name is a legitimate non-commercial fair use of the domain name.  Respondent acknowledges the domain name was originally registered as a narrative of the bad experience that Respondent had with the Complainant retailer.  Respondent alleges that after contact in May of 2002 by attorneys for Complainant, site content was removed and the website has remained simply a redirect site from which Respondent does not intend to gain commercially.  Complainant counters that the removed context were merely transferred to the redirected site.

Lastly Respondent contends the registration was not in bad faith nor is the use in bad faith.  Respondent does not intend to sell, grant or otherwise transfer the domain name to anyone in any effort to profit and alleges it has never intended to prevent Complainant from reflecting its mark in a corresponding site.  Respondent notes that Complainant registered and used <signatureflooring.org> since June 12, 2001.  Further Respondent contends that the registration of Complainant’s service mark was dated July 9, 2002 and the Respondent first registered <signatureflooringanddesign.com> on February 3, 2002.

C. Additional Submissions

Complainant timely submitted an additional response.  With the additional response was a CD containing radio spots that identify Complainant’s name as signature flooring and design.  Complainant asserts that the + sign in the mark is a creative way to say the word and.

Complainant further contends Respondent admits an intentional registration for the purpose of a narrative of his bad experience with signature flooring + design.  If in fact it were not intended as a registration in bad faith Complainant alleges it would not receive the constant emails and phone calls from potential customers and current customers regarding the domain name at issue.

Complainant also asserts that Respondent has not given any clear reason for having any legitimate interest in respect to the domain name and that when the original website <signatureflooring.org> was registered in July of 2001 the domain name <signatureflooringanddesign.com> was not available but was for sale.  Complainant contends they did not believe a disgruntled customer would purchase the website but having learned that was possible have now purchased all similar sites to avoid conflict with their service mark.

Though Respondent contends the service mark was registered on July 9^th Complainant points out it was filed for registration on April 8, 1998 long before Respondent first registered the domain name at issue on February 3, 2003.

FINDINGS

On April 8, 1998 Complainant filed for registration a service mark, “Signature Flooring + Design”.  Complainant first used the service mark in Commerce on September 30, 1998.

On July 12, 2001 the Complainant registered the domain name <signatureflooring.org>.  This registration was through 2008.  At the time of this registration the domain name at issue was not available but was for sale.

February 3, 2002 - Respondent first registered the domain name <signatureflooringanddesign.com>.

April 8, 2002 – Respondent is known as “Complaints O Plenty, Inc.”

June 9, 2002 - Complainant’s service mark, signature flooring + design was registered.

April 18, 2003 – Complainant registered the domain name <signatureflooringanddesign.net>.

 

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

Complainant obtained service mark registration with the United States Patent and Trademark office for the signature flooring and design mark on July 9, 2002.  This service mark related to wholesale distributorships and retail store services featuring carpeting, vinyl floor coverings, vinyl flooring sheets, vinyl flooring tiles, hardwood flooring, laminated flooring, ceramic tile, marble flooring, window treatments, wallpaper and fabrics for draperies and upholstering.  The service mark establishes Complainant’s rights in the service mark under ICANN Policy ¶ 4(a)(i). See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002).

Respondent’s domain name, <signatureflooringanddesign.com> is identical to signature flooring + design, Complainant’s service mark, because the “+” symbol cannot be used in a domain name on the internet. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).

Rights or Legitimate Interests

Respondent has no rights to or legitimate interests in the domain name because it is not Respondent’s business name or its service mark.  Respondent initially used the domain name to advise the Internet of his criticism of Complainant’s business practice and now uses the domain name to link users to other websites that criticize the Complainant’s business practices.  That is not a bona fide offering of goods or services pursuant to policy Section 4(c)(i) nor a legitimate non-commercial fair use pursuant to policy 4(c)(iii) because Respondent’s domain name is identical to Complainant’s mark. See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000). While Respondent’s website may enjoy First Amendment and fair use protection those protections do not create rights or legitimate interests with respect to a domain name confusingly similar to another’s service mark. See also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (finding that “[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”).  In addition Respondent is not commonly known by either signature flooring and design or signatureflooringanddesign.com. 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"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith

Respondent’s registration and use of the domain name identical to Complainant’s service mark in order to disrupt or adversely affect Complainant’s business demonstrates registration and use in bad faith with regard to Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the Respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding the Complainant’s organization on the confusingly similar website); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about the Complainant).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <signatureflooringanddesign.com> domain name be TRANSFERRED from Respondent to Complainant.

Edmund P. Karem, Panelist
Dated: June 30, 2003

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