WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mohawk Brands, Inc v. iSMER
Case No. DBIZ2002-00242
1. The Parties
The Complainant is Mohawk Brands, Inc., a Delaware corporation with its principal place of business at 160 South Industrial Boulevard, Calhoun, Georgia 3071, United States of America.
The Respondent is iSMER, a United Kingdom based partnership located at 123/78 Marylebone High Street, London W1M 4AP, United Kingdom.
2. The Domain Name and Registrar
The contested domain name is <image.biz>.
The registrar is Phillipine Registry.com, Inc.
3. Procedural History
The electronic version of the Complaint was filed on May 17, 2002. The hardcopy of the Complaint was received on May 22, 2002.
In accordance with Paragraph 4(a) of the STOP Rules, the Center verified that the Complaint satisfies the formal requirements of the STOP Policy, the STOP Rules and the WIPO Supplemental STOP Rules.
Payment in the required amount was received by the Center.
On May 30, 2002, the WIPO Arbitration and Mediation Center ("the Center") formally notified the Respondent by courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The Respondent filed an electronic copy of a Response on June 18, 2002. A hard copy of the Response was received on June 20, 2002.
On June 21, 2002, the Complainant requested that the Center consider an additional submission in reply to the Response. The Center responded by email that same day advising that the STOP Rules do not allow for filing of additional submissions by either party, except in response to a deficiency notification or if requested by the Center or Panel. The Complainant filed an additional submission as a Reply on June 26, 2002.
On June 25, 2002, the Center contacted John Swinson and requested that he act as panelist in this case. Mr. Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On June 28, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 12, 2002.
The language of the proceeding was English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the STOP Rules; the Response was filed in accordance with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; the additional submission was not required by the STOP Rules and will not be considered; the administrative Panel was properly constituted.
4. Factual Background
The Complainant is the owner of the registered trademark "IMAGE" in a number of jurisdictions in relation to carpets and floor coverings, including the United States of America (registration no. 2031333) and Canada (registration no. TMA 424852).
The Respondent has registered the domain name <image.biz>.
5. Partiesí Contentions
The Complainant contends, in relation to the Complainantís business, that:
(a) it is one of the worldís leading manufacturers of carpet and flooring products, with sales exceeding $3 billion in 2000;
(b) it owns international registrations for the IMAGE trademark (in the United States of America and Canada), as well as common law rights in and to the IMAGE trademark;
(c) the IMAGE trademark has been used in connection with the manufacture and worldwide sale of carpets and rugs since at least as early as 1976;
(d) the IMAGE trademark is well known among the consuming public, carpet retailers, wholesalers and distributors;
(e) the Complainant has continuously and extensively advertised and promoted the IMAGE trademark in numerous print and communications media throughout the United States of America; and
(f) the Complainant has developed substantial goodwill and name recognition in the IMAGE trademark confirmed by a search of the NEXIS database which discloses 137 mentions in print articles of IMAGE for carpet manufactured by Mohawk or its predecessors in interest.
The Complainant contends that the Respondent:
(a) is not a licensed to use the IMAGE trademark;
(b) has no rights or legitimate interest in the domain name because:
(i) the Respondent does not operate a business or other organization under the IMAGE trademark;
(ii) the Respondent does not own any trademark or service mark rights for the IMAGE trademark;
(iii) the Respondent has not offered or sold any goods or services under the IMAGE mark, nor evidenced any bona fide objective intent to offer or sell any goods or services under an IMAGE mark anytime in the future;
(iv) the Respondent is not making any legitimate noncommercial or fair use of the domain name;
(c) registered and is using the domain name in bad faith by:
(i) not conducting any legitimate commercial or noncommercial business under any the IMAGE mark;
(ii) preventing the Complainant from reflecting the mark in a corresponding domain name;
(iii) engaging in a pattern of conduct of registering numerous other domain names for a profit, including <islamic.biz>, <koran.biz>, <currency.biz>, <iraq.biz>, <iowa.biz>, <judo.biz>, <mutual.biz>, <curry.biz>, <marriage.biz>, <pool.biz>, <rice.biz>, <satellite.biz>, <sexual.biz>, <cigar.biz>, <milk.biz>, <perfume.biz>, <abortion.biz>, <greenland.biz>, <ski.biz>, <syria.biz>, <pen.biz>, <shopper.biz>, <fur.biz>, <co-op.biz>, <clone.biz>, <maine.biz>, <milk.biz>, <toys.biz>, <iceland.biz>, and <torah.biz>;
(iv) most likely diverting consumers away from the Complainantís official .BIZ website; and
(v) registering a domain name containing the Respondentís IMAGE trademark that has a strong reputation and is widely known.
The Complainant asserts that Tarek Soliman, the Billing Contact and Technical Contact of the Respondent, has registered 128 generic domain names, such as <islamicradio.net>, <islamiclawyer.org> and <marryamuslim.com>. The Complainant also makes allegations relation to Phillipine Registry.com, Inc. and its possible bad conduct relating to its obtaining biz domain name registrations for Tarek Soliman.
The Complainant requests that the domain name be transferred to the Complainant.
The Respondent contends that:
(a) it was not aware of the Complainantís IMAGE trademark until it attempted to register the domain name;
(b) the Complainant only owns right, title and interest to the IMAGE trademark in relation to the Complainantís goods and services (of carpets and floor coverings), and not otherwise;
(c) the Respondent applied for the domain name in good faith;
(d) the word "image" and the domain name are generic and the Complainant is not entitled to claim exclusive rights to a domain name reflecting a generic word;
(e) it is not a competitor of the Complainant and is in a market where the Complainantís IMAGE trademark is either unknown or has insignificant market penetration;
(f) it wishes to distinguish its use of the domain name from the Complainantís IMAGE trademark;
(g) there is no possibility of confusing the Complainantís IMAGE trademark and the Respondentís use of the domain name;
(h) if the Complainant truly had exclusive rights to the word "image" as it claims and seeks to protect its intellectual property, it would have commenced an action challenging the registration of <image.com>, <image.net>, <image.org> and <image.info>;
(i) when conducting a Google search for "image", over 51 million results were obtained, therefore the 137 articles referred to in NEXIS by the Complainant are of little significance when compared with this fact;
(j) the project for which the domain name is intended to be used has been in the research phase for over two years and is the subject of a PhD thesis at University of London;
(k) the domain name was only registered on March 27, 2002, and 10 weeks is not sufficient time for the Respondent to complete its intended use of the domain name. The Respondent intends to use the domain name in a scientific context to host a site specializing in imaging using GIS (geographic information systems) technology;
(l) it is irrelevant that the Respondent has registered other generic domain names;
(m) the Respondent has no history of selling or leasing domain names and has no intention of selling the domain name;
(n) the Respondent intends to create a network of sites using domain names reflecting generic words to achieve high search engine rankings; and
(o) over 100 marks have been registered for "image" and over 3500 using "image" as part of a mark in the United States alone, therefore the Complainant cannot claim to have exclusive use of the word "image".
6. Discussion and Findings
As stated above, the Complainant submitted a Reply to the Response. The STOP Rules do not allow for a Reply. The Panel briefly reviewed the Reply after writing the first draft of the following decision, and concluded that nothing in the Reply was new evidence or would change the result of this dispute.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the STOP Policy, as approved by ICANN on May 11, 2001, namely:
(a) the domain name is identical to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
The onus of proving these elements is that of the Complainant.
6.1 Identical to a trade mark or service mark
The Panel finds that the Complainant is the owner of the registered trademark IMAGE (in relation to carpets and floor coverings) and that the domain name is identical to the IMAGE trademark, apart from the generic ".biz" identifier. The addition of the generic identifier ".biz" does nothing to deflect the impact of the viewer of the "image" mark.
The onus of proving absence of rights or legitimate interest in a disputed domain name is on the Complainant.
The Complainant submitted comprehensive search results from England and the United States to demonstrate the that Respondent and Tarek Soliman have no business named "Image" or trademark registrations or applications for "Image".
The Respondent does not explicitly rely upon any ground listed in Paragraph 4(c) of the STOP Rules.
The Respondent provided a letter on iSMER letterhead (with the subtitle "Internet Sport and Media Resources") from Waleed Al-Sabhan dated June 16, 2002, stating that the Respondent "is working on a project concerning land imaging using GIS and remote sensing based on my research at London University."
The Respondent also provided copies of research outlines, located at <www.kcl.ac.uk/kis/schools/hums/geog/phdprowa.htm> and <www.waleed.org/research.htm>.
However, the Respondent does not provide a business plan showing a verifiable intention to use the disputed domain name in connection with any particular business. The Respondentís evidence suggests that the Respondentís "partners" are not in total agreement as to exactly how the Respondent plans to use the disputed domain name.
The evidence of prior research relating to imaging and an intended use of the domain name (as a descriptor of the content of the intended web site) weakly suggests that the Respondent has a legitimate interest in the domain name.
The Respondent places great emphasis on the fact that the word "image" is a commonly used generic word.
As an ordinary English noun in common use, "image" has a variety of descriptive meanings and cannot belong exclusively to anyone. Despite its registration as a trademark for a limited field of use, the mark is inherently weak. In the case of generic marks and domain names, "in particular where they comprise no more than a single, short, common word, the rights/interests inquiry is more likely to favor the domain name owner": Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution).
The Panel has reviewed the following UDRP and STOP decisions involving generic domain names: The Boots Company Plc v Challenge Services, Inc. (CSI) WIPO Case No. DBIZ2002-00096 (June 18, 2002); Rollerblade, Inc. v. CBNO and Redican, WIPO Case No. D2000-0427 (August 24, 2000); CRS Tech. Corp. v. CondeNet, Inc., FA 93547 (Nat. Arb. Forum March 28, 2000); FreedomCard, Inc. v. Kim, WIPO Case No. D2001-1320 (January 20, 2000); NPES v. Ross LeBel, FA0204000110761 (Nat. Arb. Forum); fabric.com v. LinZan Song, FA0204000109701 (Nat. Arb. Forum); PartnerShip LLC v. Aly Ramzan, FA0204000112450 (Nat. Arb. Forum); Pipeline Inspection Company v. Marco Publishing Corporation, FA0204000112605 (Nat. Arb. Forum); EASY-FLO VACUUM SYSTEMS LTD. v. InfoSiteServer, FA0204000112530 (Nat. Arb. Forum). In each of these disputes involving generic domain names, for various reasons, the Complainant did not succeed. There are other STOP decisions that appear to reach the opposite conclusion on similar factual situations involving generic domain names.
In this dispute, because (a) the word "image" is generic; (b) the Respondent provided a credible (although weak) claim of potential future legitimate use of the dispute domain name; and (c) because the burden of proof is on the Complainant, the Panel finds (although only by a slight margin) that the Complainant has failed to establish this element.
6.3 Bad Faith
The Complainant provided no evidence of any correspondence or communication between the Complainant and the Respondent. In particular, there are no indications that Respondent registered the domain name for the purpose of selling or renting the domain name to Complainant or to a competitor of Complainant, nor are there any signs that Respondent intends to do so.
There is no evidence that the Respondent is or is likely to become a competitor of the Complainant.
As shown by the Respondent, the Complainant does not own or use the domain names <image.com>, <image.net> or <image.org>.
The Complainant provided no evidence of any use or registration of its trademark in England, where the Respondent is located.
It is probable that the Respondent registered the disputed domain name for a purpose completely unrelated to the Complainantís trademark or to the Complainantís business. The Complainant has not presented any evidence of the Respondentís knowledge or likely knowledge of the Complainantís business or trademark.
The Panel has reviewed the helpful Gene Logic decision (Gene Logic Inc v. Cho Kyu Bock, Claim Number: FA0112000103042), which discusses notice and bad faith. The Panel does not believe that the principles in the Gene Logic decision relating to bad faith have relevance where the disputed domain name is a generic word and where there is no evidence that the Complainant and the Respondent are competitors or potential competitors.
In Credit Suisse Group on behalf of Winterthur Insurance v. Pal-Ex Kft, Claim Number: FA0112000102971, the NAF Panel stated:
"Based on the fame of the WINTERTHUR mark in the European Community, Respondent was on notice in respect to Complainant's mark. Registration of the domain name despite this fact is evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests Ďopportunistic bad faithí"). The Panel finds that STOP ∂ 4(a)(iii) has been satisfied."
The Winterthur Insurance decision has limited application where the disputed domain name is a generic word.
Paragraph 4(b) of the STOP Policy sets out a non-exhaustive list of circumstances that are considered to be evidence of the registration or use of a domain name in bad faith.
To show bad faith, the Complainant relies upon Paragraph 4(b)(ii) of the STOP Policy, namely, that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. In order to show this, the Complainant relies upon registration by the Respondent of a large number of domain names, all for other generic terms. The Panel believes that the Respondentís registration of a large number of generic domain names does not show bad faith by the Respondent towards the Complainant or its mark, and in fact tends to suggest that the Respondent was not aware of the Complainant at all. The registration of the disputed domain name by the Respondent may have the effect of preventing the Complainant from reflecting the mark in a corresponding domain name, but that was clearly not the Respondentís intent.
In short, there is no evidence that the Respondent registered the disputed domain name for any of the purposes set out in Paragraph 4(b) of the STOP Policy.
The Complainant makes assertions relating to the Registrar. This is irrelevant.
The Complainant cites well-known U.S. case law, such as the Panavision case, and some U.S. statutory provisions. The Panavision case not on point, as the domain name owner in that case clearly registered the domain name in bad faith. If the Complainant believes that a U.S. statutory remedy is available, then the Complainant should file the appropriate claim in U.S. courts.
The Panel cannot find any other reasonable grounds in the Complaint and its annexed documents for a finding that Respondent registered the disputed domain name in bad faith.
The Panel is aware of another decision involving the same Respondent. See Bank for International Settlements v. iSMER, WIPO Case No. DBIZ2002-00040 (June 11, 2002). That dispute involved the domain name <interbank.biz>. In that decision, the panelist correctly stated:
"As to the third criterion, the Respondent (which seems to be a front for Mr. Soliman) must have known of the Complainant and its activities at the time of registration. Mr. Soliman claims to be a student of inter alia, international banking and to have had experience as a foreign exchange trader. No student of international banking could fail to have heard of the Complainant. It does not matter that Complainantís marks are not registered in the United Kingdom. For those involved in banking the marks of international banking institutions must be well-known."
That is not the situation here.
The Panel is unable to draw the required conclusions as to bad faith where the disputed domain name comprises a generic word, where the disputed domain name has not been used, and where the Complainant and Respondent are located in different countries. Domain Bank, Inc. v Sonic Co., Ltd, WIPO Case No. DBIZ2001-00014 (February 13, 2002).
The Panel decides that there is no evidence of bad faith.
Reverse Domain Name Hijacking
The Respondent asserts that the Complainant is reverse domain name hijacking.
STOP Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." To prevail on such a claim, Respondent must show either that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 (October 31, 2000) and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (January 2, 2001) or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993 (October 18, 2000).
The Panel considers this Complaint to have been misconceived but not to have been brought in bad faith. Accordingly it is not appropriate to make a finding of Reverse Domain Name Hijacking.
For the reasons set forth above, the Panel decides that the Complaint fails.
Dated: July 10, 2002