DECISION

Milliken & Company v. Carpet Values Distributing

Claim Number:  FA0404000257085

PARTIES

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.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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).

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 <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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