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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belk Stores Services, Inc. v. Ed Momeni, 1001 Rugs, Inc.

Case No. D2017-1496

1. The Parties

The Complainant is Belk Stores Services, Inc. of Charlotte, North Carolina, United States of America ("United States"), represented by Shumaker, Loop & Kendrick, LLP, United States.

The Respondent is Ed Momeni, 1001 Rugs, Inc. of Scottsdale, Arizona, United States.

2. The Domain Name and Registrar

The disputed domain name <belkrugs.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 8, 2017, to correct an administrative formality.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. The Response was filed with the Center on August 15, 2017.

The Center appointed William F. Hamilton as the sole panelist in this matter on September 8, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a department store company based in Charlotte, North Carolina. The Complainant operates 293 stores in 16 states and offers an assortment of national brands and private label fashion apparel, shoes, accessories, cosmetics and home merchandise, including rugs. The Complainant's BELK mark (the "Mark") was registered in 1969 under United States trademark registration number 0876226. The Complainant has used the Mark in commerce in the United States for over a century.

The Respondent owns and operates the "Arizona Rug Company" with retail operations in Tempe and Scottsdale, Arizona. The Respondent claims to be the region's premier and largest rug company. The Respondent operates the website "www.arizonarugs.com".

The Respondent registered the disputed domain name on October 6, 2013. The disputed domain name redirects users to the Respondent's website "www.arizonarug.com".

5. Parties' Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Complainant's Mark because the disputed domain name is composed only of the Mark and the descriptive suffix "rug". The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has never been known by the disputed domain name or the Mark and the Complainant has never authorized or licensed the Respondent to use the Mark or the disputed domain name. The Complainant asserts that the disputed domain name was registered and is being used in bad faith to attract Internet customers seeking the Complainant's goods and services who are then diverted to the Respondent's website which sells competitive commercial products, namely rugs. The Complainant asserts that prior to instituting this proceeding the Complainant requested the transfer of the disputed domain name. The Respondent has rebuffed the Complainant's demands.

B. Respondent

The Respondent asserts that the disputed domain name was registered in anticipation of a possible business venture with the Complainant. Although the business negotiations failed, the Respondent asserts that there remains the possibility of a future business engagement with the Complainant. The Respondent asserts that the Mark owned by the Complainant is not "BELK RUGS" but merely BELK. The Respondent asserts that as the disputed domain was registered five years ago and therefore the Complainant may be barred from bringing this proceeding by an unspecified "statute of limitations." The Respondent asserts that that disputed domain name was never offered for sale to the Complainant, although the Respondent asserts that the Respondent "might" review and consider an offer from the Complainant to purchase the disputed domain name.

6. Discussion and Findings

As a preliminary matter, the Respondent raises a "statute of limitations" defense. While a UDRP panel may consider a knowing and excessive delay that creates prejudice to a respondent, a "statute of limitations" defense per se is not available in UDRP proceedings. Deville SA v. Baileys Inc., WIPO Case No. D2013-0157 ("no statute of limitations within which a complainant must bring an action under the UDRP"). The Panel finds that the five year period between the Respondent's registration of the disputed domain name and the commencement of this proceeding has not caused the Respondent any prejudice. Accordingly, the Panel will proceed to address the merits.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name is confusingly similar to the Complainant's Mark. It is axiomatic that attaching a descriptive suffix to a registered mark when composing a domain name may not avoid confusing similarity. Indeed, the mere addition of a descriptive or geographic term to a trademark will not mitigate confusing similarity, but instead may actually reinforce confusion if the added terms, as here, relate to the goods or services offered. In this case, the descriptive term "rug" is attached as a suffix to the Mark. Accordingly, the Panel finds that disputed domain name is confusingly similar to the Mark. Comerica Bank v. Will Rote, WIPO Case No. D2016-0419 (transferring <my-comerica-alert.com>); Mastercard International Incorporated v. Dolancer Outsourcing, Inc., WIPO Case No. D2012-0619 (transferring <my-mastercard.info>); Societé Française du Radiotelephone – SFR v. Tobadoros Musicania, WIPO Case No. D2011-0815 (transferring <alert-information-sfr.com>); Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies, Pty, Ltd., WIPO Case No. D2001-0110 (transferring <ansellcondoms.com>); Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500 (transferring <crocsoutlet.org).

Contrary to the Respondent's argument, the Complainant is not required to register a separate trademark for every product sold by the Complainant, such as BELKRUGS, in order to bring a UDRP proceeding based on the registered Mark. The Policy only requires a demonstration of "confusing similarity", not identity.

The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Prior to the registration of the disputed domain name, the Respondent did not conduct business under the Mark. The Respondent conducted business as the Arizona Rug Company and continues to operate business as the Arizona Rug Company. See "www.arizonarugs.com". The Respondent alleges that the disputed domain name was registered in connection with negotiations with the Complainant regarding a possible business relationship. Absent approval by the Complainant, the Respondent's unannounced registration appropriating the Complainant's registered Mark does not establish bona fide business activity sufficient to establish rights or legitimate interests in the Mark or the disputed domain name. The Complainant has specifically stated that the Respondent was never authorized to utilize the Mark or the disputed domain name. Significantly, the Respondent does not allege the Complainant approved the Respondent's registration of the disputed domain name.

The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Respondent's registration of the disputed domain name utilizing the Mark was unauthorized. The Respondent lacked authority or permission from the Complainant to register the disputed domain name, even if the Respondent genuinely believed the disputed domain name might have subsequently facilitated a future business relationship between the Complainant and the Respondent. Moreover, when the alleged negotiations between the Respondent and the Complainant failed five years ago, the Respondent could simply have abandoned the disputed domain name or offered the disputed domain name to the Complainant. Instead, the Respondent redirected disputed domain name traffic to its own website, "www.arizonarugs.com" that offered the Respondent's competitive merchandise for sale. Surely, the Respondent could not have reasonably believed that the Respondent was free to use the disputed domain name primarily composed of the Complainant's Mark after the alleged negotiations failed to produce a mutually beneficial business relationship with the Complainant. Accordingly, the Panel finds that the disputed domain was registered and used in bad faith.

The Respondent's defense that the disputed domain name was never offered for sale does not preclude a finding of bad faith registration and use. Offering a disputed domain name for sale is merely one indicium among many that may inform a decision of bad faith registration and use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.1.

The Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <belkrugs.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: September 11, 2017

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