WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group Inc. and Columbia Insurance Company v. Marketing Total SA
Case No. D2007-0224
1. The Parties
The Complainants are Shaw Industries Group Inc. and Columbia Insurance Company, United States of America; of United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is Marketing Total SA, of Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <shawhardsurfaces.com>is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2007. On February 19, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On February 20, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2007.
The Center appointed James McNeish Innes as the sole panelist in this matter on March 30, 2007. 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 Complainants are Shaw Industries Group Inc, a Georgia corporation, and Columbia Insurance Company, a Nebraska corporation. The Complainants are related companies controlled by the same corporate parent. Columbia is the sole owner of famous United States trademarks SHAW and various formatives thereof. Shaw Industries is one of the United States leading carpeting and flooring companies. The Complainants have since 1985 invested considerable funds in promoting their trademarks. The Respondent is a company domiciled in Charlestown, West Indies. The disputed domain name was first registered by the Respondent on June 14, 2005.
5. Parties’ Contentions
Complainant’s contentions include the following:
(i) The SHAW Marks, as evidenced by the number of applications and registrations owned by the Complainants for various formatives of the mark SHAW and also evidenced by the number of years in use, are distinctive and well known in the carpeting and flooring industry.
(ii) The Respondent’s domain name is confusingly similar to the SHAW® Registrations and the SHAW Marks. The domain name contains the identical SHAW Registrations and the SHAW Marks, i.e., <shawhardsurfaces.com>.
(iii) The fact that the Respondent has a domain name that contains marks and registrations owned by the Complainants leads to the inevitable conclusion that Respondent’s domain name is confusingly similar to registrations in which the Complainants have rights.
(iv) The domain name <shawhardsurfaces.com> is confusingly similar to the SHAW Registrations and the SHAW Marks. The domain name is confusingly similar to the Complainants’ Marks in which Complainants enjoy substantial goodwill. Respondent has no right or legitimate interest with respect to its use of the domain name.
(v) The Respondent is not listed as an owner of any United States trademark containing any SHAW formatives. Nor is there any evidence that the Respondent owns any or has applied for any United States trademark registrations. There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if the Respondent has acquired no trademark or service mark rights.
(vi) There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Respondent is not making a legitimate non-commercial or fair use of the domain names. Rather, the Respondent is blatantly using the domain names with intent for commercial gain and to misleadingly divert consumers.
(vii) The Respondent is using a domain name which is identical or confusingly similar to a trademark in which the Complainants have rights. By using the domain name <shawsurfaces.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ Marks.
(viii) The Respondent has no affiliation with the Complainants. Despite this the Respondent’s website creates the impression that it is affiliated, sponsored or endorsed by the Complainants. There are numerous references to flooring and carpet companies on the offending website. In addition, the website consists of links to other websites such as flooring and carpet companies, as well as competitors of Complainants, and other non-flooring/carpeting related websites. Conspicuously absent from the offending website is any statement of any kind that makes it explicitly clear that the offending website is not associated with the Complainants in order to reduce the likelihood of confusion as to the existence of such an association.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a Complainant must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Two separate issues fall for consideration. (1) Do the Complainants have rights in the mark and (2) is the domain name identical or confusingly similar to any such mark. On the record the Complainants have established rights in their marks and registrations. They have also demonstrated continued commercial usage since 1985.
The Complainants argue that the domain name is identical or confusingly similar to its marks for the following reasons:
“Respondent’s domain name is confusingly similar to the SHAW® Registrations and the SHAW® Marks. The domain name contains the identical SHAW® Registrations and the SHAW® Marks, i.e., <shawsurfaces.com>.
The fact that the Respondent has a domain name that contains marks and registrations owned by the Complainants leads to the inevitable conclusion that Respondent’s domain name is confusingly similar to a registration in which the Complainants have rights.
“Not only does the Respondent’s domain name contain the identical SHAW® Registrations, but the terms “hard” and “surface” are added. The presence of these terms does nothing to differentiate the domain name registration from the registered SHAW® Marks. In fact, WIPO panelists have accepted that, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it. Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423, E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206, Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159.”
The Panelist accepts the Complainants’ contentions. The disputed domain name is confusingly similar to the Complainants’ marks. The Panel finds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii):
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not given the Respondent permission to use its trademark. The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the domain name. The Panel finds that Policy, Paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4 (b) or the Policy contains the following provisions Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark form reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the endorsement of your Website or location or of a product or service on your website or location.
The Complainants have made contentions that would lead to situations mentioned in Paragraph 4 (b). The Respondent has made no response in this connection. The Panel accepts the Complainants’ assertion that the Respondent has attempted to attract users to its Website by creating a confusion with the Complainants’ marks. The Panel finds that Policy, Paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <shawhardsurfaces.com> be transferred to the Complainants.
James McNeish Innes
Dated: April 14, 2007