Complainants are Shaw Industries Group, Inc. (“Complainant Shaw”), of Dalton, Georgia, United States of America; and Columbia Insurance Company (“Complainant Columbia Insurance”) of Omaha, Nebraska, United States of America, represented by Neal & McDevitt, LLC, of Northfield, Illinois, United States of America.1
Respondent is The Flor Stor2 of Laguna Hills, California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, United States of America.
The disputed domain name <shawfloorcleaner.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009. On August 13, 2009, the Center transmitted by e-mail to Network Solutions, LLC, a request for registrar verification in connection with the Disputed Domain Name. On August 13, 2009, Network Solutions, LLC, transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2009. The Response was filed with the Center on September 12, 2009.
Complainants submitted a “Reply to the Response” on September 17, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 24, 2009. 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.
Complainants state that Complainant Columbia Insurance is the registrant of various federally registered trademarks in the United States that consist of or include the mark SHAW, including, inter alia, U.S. Reg. No. 2,291,182, for the mark SHAW, for use in connection with carpets, first used in commerce on November 25, 1985; U.S. Reg. No. 2,587,494 for the mark SHAW HARDWOODS, for use in connection with wood flooring, first used in commerce on December 1, 1999; and U.S. Reg. No. 3,626,430 for the mark SHAW for use in connection with carpet, rug and hard surface flooring cleaners, first used in commerce on July 23, 2003. These registrations are referred to hereafter as the “SHAW Trademark.”
Complainants state that Complainant Shaw “is one of the United States leading carpeting and flooring companies and is well-known internationally.”
Complainants state that .they “are related companies owned by the same corporate parent” and that Complainant Columbia Insurance “has granted [Complainant] Shaw a license to use” the SHAW Trademark.
The Disputed Domain Name was registered on May 1, 2009.
Complainants contend, in relevant part, as follows:
- Complainants have rights in the SHAW Trademark as a result of its numerous federal trademark registrations in the United States, and the Disputed Domain Name is confusingly similar to the SHAW Trademark because it includes the SHAW Trademark in its entirety plus two words (“floor” and “cleaner”) that are descriptive and “do nothing to differentiate” the Disputed Domain Name from the SHAW Trademark, especially U.S. Reg. No. 3,626,430, which is used in connection with carpet, rug and hard surface flooring cleaners.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence that Respondent has any trademark rights in the SHAW Trademark; Respondent is not commonly known by the Disputed Domain Name; Respondent is not using the Disputed Domain Name in a bona fide manner because Respondent's website using the Disputed Domain Name “divert[s] consumers to non-Shaw associated websites includ[ing] links to products for Shaw's competitors.”
- The Disputed Domain Name was registered and is being used in bad faith because “Respondent's website creates the impression that it is affiliated, sponsored, or endorsed by Complainants” and because Respondent is using the SHAW Trademark “simply for the purpose of driving traffic to Respondent's website and to other websites.”
Respondent contends, in relevant part, as follows:
- The Disputed Domain Name “is not identical to any of the trademarks listed in the Complaint” and although the Disputed Domain Name includes the trademark SHAW, it does so only “in a descriptive phrase, since Respondent is offering for sale authentic Shaw floor cleaning products.”
- Respondent has rights or legitimate interests in respect of the Disputed Domain Name because “Respondent offers for sale only authentic Shaw floor cleaning products via the” Disputed Domain Name, which “consists of one web page dedicated to notifying consumers where they can buy authentic Shaw floor care and cleaning products from Respondent.” Further, “Respondent accurately and prominently identifies itself as a reseller of floor care products and does not falsely suggest that it is Complainant or that [the Disputed Domain Name] is Complainant's official website.” The website using the Disputed Domain Name was “amended” by Respondent to add the following disclaimer: “NOTE WE ARE NOT THE SHAW COMPANY WE ONLY SELL THEIR CLEANING PRODUCTS.” And, “Respondent has registered only one descriptive Shaw-containing domain name.”
- Respondent has acted in good faith because “Respondent's intention in registering the [Disputed Domain Name] was to offer for sale authentic Shaw floor care products” and “Respondent is not aware of any instances of consumer confusion.”
Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which [it] has rights.”
Based on the information provided by Complainants, as well as the Panel's independent research of records at the website for the U.S. Patent and Trademark Office, the Panel is convinced that Complainants have rights in the SHAW Trademark. (However, the Panel agrees with Respondent's observation that two of the registrations cited by Complainants – U.S. Reg. Nos. 1,444,248 and 2,514,801 – have been cancelled. The fact that Complainants cited these registrations is disturbing but, in light of the other apparently valid registrations, does not diminish Complainants' rights in the SHAW Trademark for purposes of this proceeding.)
As to whether the Disputed Domain Name is identical or confusingly similar to the SHAW Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “shawfloorcleaner”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
Although Respondent is correct that the Disputed Domain Name is not identical to any of the SHAW Trademarks, a domain name is confusingly similar to a trademark where, as here, the domain name contains a complainant's trademark in its entirety plus additional words that describe the goods or services associated with the trademark. See, e.g., Gateway Inc. v. Exotic Design Group, WIPO Case No. D2008-0051 (finding the domain name <gatewaylaptops.com> confusingly similar to the trademark GATEWAY because “[t]he Disputed Domain Name contains the key name and mark of the Complainant gateway and the central element of the Complainant's GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”) (quoting Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604); The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc, WIPO Case No. D2006-0800 (finding the domain name <elizabethtaylorperfume.com> confusingly similar to the trademark ELIZABETH TAYLOR because “the ‘disputed domain name incorporates the whole of the Complainant's trademark… together with [a] descriptive [phrase]… associated with the Complainant and its renowned activities'“) (quoting Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the SHAW Trademark and that Complainants have proven the first element of the Policy.
Respondent states in its Response that it uses the Disputed Domain Name to direct visitors to a one-page website that informs visitors where they can purchase “authentic Shaw floor care and cleaning products from Respondent.” While this may be true, it appears from the record that this single web page directs visitors to another website at which products from various vendors – not just Complainants – are available. Further, it appears from the record that the disclaimer on the website associated with the Disputed Domain Name was not added until after the filing of the Complaint in this proceeding. Accordingly, the Panel here agrees with the panel in a previous proceeding brought by Complainants, Shaw Industries Group, Inc., Columbia Insurance Company v. Marathon Triad, WIPO Case No. D2006-1408. In the decision in that case, the panel wrote:
Respondent appears from the available evidence to be a dealer of Shaw carpets. However, Complainants assert that dealers are never authorized to use SHAW or any formative thereof as part of a domain name. There is no evidence of any agreement between Shaw and Respondent in which Respondent is authorized to use Complainants' marks in or as a domain name. There appears from the evidence provided to be no accurate disclosure of the relationship (or lack thereof) between Respondent and Complainant on the website at the domain name at issue.
Similarly here, although Respondent may have offered for sale Complainants' own products, Respondent was not authorized by Complainants to use the SHAW Trademark in a domain name. Further, this Panel is of the opinion that the disclaimer is irrelevant because it apparently was not present at the time the Complaint was filed.
Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the Disputed Domain Name, and Complainants have proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Complainants specifically allege that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In support thereof, Complainants cite various decisions under the Policy in which the disputed domain names were being used in connection with parking pages that contained links to competitors of the complainants. Such decisions appear to be less than entirely analogous in this proceeding, given that Respondent's website was not a parking page.
Respondent relies heavily on the oft-cited decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the panel stated that a Respondent must “actually be offering the goods or services at issue”, “use the site to sell only the trademarked goods”, “accurately disclose the registrant's relationship with the trademark owner” and “not try to corner the market in all domain names” to make a bona fide use of a domain name under paragraph 4(a)(ii) of the Policy. Respondent appears to allege by analogy that these same requirements apply to paragraph 4(b) of the Policy, although the Oki Data decision does not expressly state as much. Furthermore, Respondent notes that the Oki Data decision was cited favorably by the panel in another proceeding brought (and lost) by Complainants in this case, Shaw Industries Group Inc. and Columbia Insurance Company v. Arcadia Publishing Inc., WIPO Case No. D2007-0090. In the Arcadia Publishing case, the panel refused to transfer the domain name <shawcarpetoutlet.com> to the Complainants in part because the respondent there was “an apparently authorized dealer” of Complainants and did not “act in any fashion contrary to its authorization.”
The panel here finds that the Arcadia Publishing decision is inapplicable because of the important factual difference, just cited, that the respondent there was “an apparently authorized dealer” of Complainants and did not “act in any fashion contrary to its authorization.” In this proceeding, Respondent had no authorization from Complainants to engage in any activity with respect to the SHAW Trademark.
As for the applicability of the Oki Data decision to the facts of this case, the Panel finds that Respondent failed to satisfy all of the Oki Data criteria because Respondent apparently uses its website to offer for sale – even if indirectly – goods other than those using the SHAW Trademark, via links to other websites operated by Respondent. Further, as stated above, this Panel gives no consideration to the disclaimer that was added to Respondent's website following the filing of the Complaint in this proceeding; to do so would permit respondents to undermine the Policy.
Accordingly, the Panel finds that Respondent registered and has used Disputed Domain Name in bad faith, and Complainants have proven the second element of the Policy.
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, <shawfloorcleaner.com> be transferred to Complainant Shaw, as requested in the Complaint.
Douglas M. Isenberg
Dated: October 8, 2009
1 Although neither the Policy nor the Rules addresses the issue of a proceeding brought by more than one complainant, panels have permitted multiple complainants that have “a common legal interest” and where “it would be equitable and procedurally efficient to permit the consolidation of complaints.” Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, , WIPO Case No. D2009-0331. Given the relationship between the two complainants in this proceeding (as explained in this decision) and the single domain name in dispute, the panel deems the consolidated complaint appropriate.
2 In its Response, Respondent states that The Flor Stor is a “dba” for Tom Industries, Inc.