WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group, Inc. and Columbia Insurance Company v. The Visual Image Solution
Case No. D2008-1102
1. The Parties
The Complainant is Shaw Industries Group, Inc., Dalton, United States of America and Columbia Insurance Company, Omaha, Nebraska, United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is The Visual Image Solution, Macon, North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <shawbydesign.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2008. On July 22, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 22, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 15, 2008.
On August 25, 2008, the Complainant notified the Center that the Respondent had sent a Response to the Complainant on or before the Response due date of August 14, 2008. Although such a delivery to the Complainant and not to the Center does not comply with paragraph 5(a) of the Rules, the Panel, within the scope of its discretion to ensure a fair proceeding, as set forth in paragraph 10 of the Rules, has decided to consider the Response in rendering its decision below.
On August 25, 2008, the Complainant filed a reply to the Response. The Policy and Rules do not provide for the additional submission of materials in these proceedings. Thus, because the Panel believes that each party has had a fair opportunity to present its case in the Complaint and the Response, the Panel will not consider this reply in rendering its decision.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 20, 2008. 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 United States of America company that sells carpeting and flooring products. It owns a valid United States Patent and Trademark Office (the “USPTO”) registration for its trademark, SHAW (Registration No. 2291182; November 9, 1999). The Complainant also owns USPTO registrations that include the word “design.”
The Respondent owns the disputed domain name <shawbydesign.com>, and the record of registration was created on August 1, 2006. Currently, the website appearing at the name contains both references to the Complainant’s trademark and links to the websites of third parties that offer products that are directly competitive with those sold by the Complainant.
5. Parties’ Contentions
The Complainant is a United States of America corporation that markets carpeting and flooring goods directly to consumers throughout that country as well as internationally.
Since at least 1985, the Complainant has used its SHAW trademark in connection with its business. The Complainant owns a USPTO registration for its SHAW mark, as well as many others that incorporate it (e.g., SHAW TILE, COUTURE BY SHAW and SHAW LAMINATES). As the Complainant has spent millions of dollars promoting the marks, they are famous.
Moreover, the Complainant owns several USPTO registrations for marks that include the word “design” (e.g., DESIGN IS, DESIGN IN REAL TIME and DESIGNWEAVE).
The Complainant also owns numerous domain names, including <shawcarpet.com> and <shawfloors.com> and <shawdesigncenter.com.
The disputed domain name is confusingly similar to the Complainant’s SHAW mark. The addition of the words “by” and “design,” does not mitigate the confusion, especially in light of the Complainant’s other marks incorporating the word, “design.”
The Respondent has no rights or legitimate interests in the domain name at issue. It owns no trademark registrations corresponding to the disputed domain name, and has no affiliation with the Complainant. There is no evidence that the Respondent is commonly known by that name. The Respondent’s use of the disputed domain name to reference the Complainant’s mark and furnish links to third party competitors’ products is neither a bona fide offering of goods or services nor a noncommercial or fair use of the name.
The Respondent registered and is using the domain name in question in bad faith. The Respondent certainly knew of the Complainant’s well known SHAW trademark before registration, as attested by the fact that the Respondent’s website contains references to that mark. That website also provides Internet users with links to other carpeting and flooring companies’ websites. Thus, the Respondent is evidently using the disputed domain name for commercial gain by creating the likelihood of confusion with the Complainant’s mark to suggest a non-existent affiliation with the Complainant and its products.
The Complainant contacted the Respondent in April 2007 and was informed that a Ms. Gretta Shaw was going to use the name to offer fashion designs. This never happened, and the Respondent failed to reply to later communication attempts by the Complainant. Instead, the disputed domain name appears to be parked with the Registrar, generating so-called “click through” fees for the Respondent. All of this is further evidence of bad faith.
The Respondent registered the disputed domain name on behalf of Gretta Thompson-Shaw, who has possessed the latter name, Shaw, for at least thirty years. As this is a legitimate surname, she is allowed to include it in a domain name registration.
The disputed domain name was registered to provide a venue to sell ladies’ fashions and accessories, with a particular emphasis on batiks and ethnic wear items. Due to the declining health of a family member and the resultant reduction in funding, the fashion design website was not attached to the disputed domain name.
The Respondent is not a competitor of the Complainant – the former operates in the field of women’s fashion, the latter in the field of flooring products.
The Respondent parked the name with the Registrar, who decided on all of the advertising links – including those from competitors of the Complainant – now found at the website connected with the name. Although the Respondent believes that the Registrar collects fees from such linkage, the Respondent receives no remuneration.
As the Registrar is the largest and most reputable domain name registrar in the United States of America, it should have blocked the disputed domain name from registration if the name infringed anyone’s rights. It is unrealistic to place upon a small company the burden of conducting trademark registration searches to check for possible infringement.
6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Complainant may succeed in this proceeding and receive a transfer of the domain name at issue, <shawbydesign.com>, by demonstrating that:
– The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
– The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
– The disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
As the Complainant has furnished the Panel with good evidence of its valid USPTO registration for the trademark SHAW, the Panel concludes that the Complainant has rights in that mark sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy. See Mattel, Inc. v. KPF, Inc., NAF Case No. FA244073 (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”); and The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714.
Clearly the disputed domain name, <shawbydesign.com>, is not identical to the mark SHAW. However, that mark is included in its entirety as the first term of the name. The subsequent and, in the Panel’s opinion, subordinate terms, “by” and “design,” are common English language descriptive words. They can apply easily to the Complainant’s main line of business, carpeting and flooring products, because those goods relate to the interior design of dwellings. This is made clear by the Complainant’s ownership of both trademarks and domain names that contain the word “design.” The Panel believes that Internet user confusion would likely result from the similarity between the Complainant’s mark and the disputed domain name, as those users would reasonably, but wrongly, associate that name with the goods marketed under that mark. Thus, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. See for example, Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159 (finding the disputed domain name, <usagshop.com>, confusingly similar to the complainant’s mark, USAG); and Mattel, Inc., supra (where the panel found the disputed domain name <bellemodebarbie.com> to be confusingly similar to the trademark, BARBIE).
Accordingly, the Panel concludes that the Complainant has proven that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The prima facie case, made by the Complainant’s valid claim to a confusingly similar trademark and assertion that it is not affiliated with the Respondent, compels the Respondent to come forward with rebuttal evidence to convince the Panel of its rights or legitimate interests in the disputed domain name. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828 (finding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); and G.D. Searle & Co. v. Martin Marketing, NAF Case No. FA118277.
Citing implicitly the criterion justifying rights or legitimate interests in a domain name as set forth in paragraph 4(c)(ii) of the Policy (i.e. “the Respondent has been commonly known as the disputed domain name”), the Respondent contends that it is entitled to the disputed domain name because it was registered on behalf of Gretta Thompson-Shaw. In putting forth this contention, the Respondent asserts also that the disputed domain name, <shawbydesign.com>, which incorporates the latter part of this hyphenated surname, was intended to be used for a website offering women’s fashion related merchandise.
The Panel finds the Respondent’s contentions to be problematic on the present record. The Respondent furnished the Panel with no hard evidence of Ms. Thompson-Shaw’s existence or of how she is related to the Respondent. No written agreement between her and the Respondent is submitted with the Response. Moreover, the Respondent did not include one iota of evidence as to its or Ms. Thompson-Shaw’s involvement in fashion design: no letter-head; no recitation of sales or profits; no example of advertisement; no billing orders; etc. In short, the Respondent has failed to present the Panel with any concrete evidence that this woman, if she exists, is in business of any kind by herself or in connection with the Respondent. And, of course, most telling of all, the Respondent concedes that the disputed domain name has never been used to engage in the women’s fashion business.
Given the ease with which a respondent in a Policy proceeding might claim that someone with a name corresponding to the domain name in dispute is the intended beneficiary of its registration, a UDRP panel must demand the presentation of tangible evidence to support such a claim, otherwise the purpose of the Policy would be totally eviscerated. The Respondent’s failure to furnish such evidence in this case leaves the Panel with no alternative but to dismiss the Respondent’s contention. See Thierry Mugler S.A.S v. John Mugler, WIPO Case No. D2004-0951; and Oakley, Inc. v. Kenneth Watson, WIPO Case No. D2000-1658 (where the panel dismissed the respondent’s argument that it was commonly known as the domain names at issue, <oakleyshoes.com>, <oakleyfootwear.com> and <oakleywatches.com>, stating, “[The Panel] note[s] first that Oakley Watson is not the registrant and there is no indication in the record of Respondent obtaining any legal rights from Uncle Oakley Watson. More importantly there is nothing in the record to indicate that Oakley Watson or the Respondent ever made commercial use of Oakley Watson’s name in connection with the sale of any goods.”).
With respect to the remaining criteria cited in paragraph 4(c) of the Policy, the Panel discerns no rationale otherwise in the Response or record to sustain a finding that the Respondent has rights or legitimate interests in the disputed domain name. The linkage of the name to websites of the Complainant’s direct competitors – as contended by the Complainant and conceded by the Respondent – is not a bona fide offering of goods or services. See Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (“The Panel finds that Respondent’s registration and use of the Domain Name without Complainant’s permission for a website selling both Complainant’s products and directly competing products does not constitute a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy.”); and Compaq Information Technologies Group, L.P. v. Express Technology, Inc., NAF Case No. FA104186. Moreover, the use of the disputed domain name as described above constitutes neither noncommercial nor fair use of the same, so there is no compliance with the requirements of paragraph 4(c)(iii). Therefore, the Panel concludes that the Respondent has put forth insufficient rebuttal to the Complainant’s prima facie case.
As a result, the Panel determines that the Complainant has succeeded in showing that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that bad faith registration and use of the disputed domain name by the Respondent can be found by the Panel if the Panel concludes that:
by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.
The Complainant’s contention that the disputed domain name is being used to host links to websites owned by the Complainant’s competitors is agreed to by the Respondent and accepted by the Panel. This condition leads the Panel to conclude that the Respondent’s actions fit neatly into the requirements of paragraph 4(b)(iv). See, DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070 (finding bad faith per paragraph 4(b)(iv) of the Policy where “…use of the [disputed] domain name redirects a user to websites that offer advertisements for a variety of products or to websites that offer information about automobiles that compete with Complaints’ products.”); and Compaq Information, supra.
The Respondent’s contention that the fault for this linkage belongs to the registrar of the disputed domain name, who alone collects fees from the infringing use, is of no moment. See Vance International, Inc. v. Jason Abend, NAF Case No. FA970871; and State Farm Mutual Automobile Insurance Company v. Richard Pompilio, NAF Case No. FA1092410 (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used.”).
Therefore, the Panel rules that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.
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, <shawbydesign.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: September 3, 2008