Complainants are Shaw Industries Group, Inc. of Dalton, Georgia, United States of America (“Shaw”) and Columbia Insurance Company of Omaha, Nebraska, United States (“Columbia”), represented by Neal & McDevitt, United States.
Respondent is Sam Jones of Belton, South Carolina, United States.
The disputed domain name <shaw-rugs.com> is registered with DomainPeople, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2009. On September 24, 2009, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name. On September 28, 2009, DomainPeople, Inc. 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 October 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 23, 2009.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on October 30, 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 are owners of several trademarks registered in the United States. The most relevant is Complainant Shaw's word trademark SHAW, United States registration number 2,291,182 in International Class 27, registered November 9, 1999 with a first use in commerce dating from 1985.
Complainant Shaw also owned the SHAW RUGS word trademark, United States registration number 2,686,164 in International Class 27, registered February 11, 2003 with a first use in commerce dating from 1993. The United States Patent and Trademark Office cancelled that registration on September 19, 2009 for failure to comply with Section 8 of the Lanham Act, 15 U.S.C. §1058 (requiring the owner to file a sworn statement that the mark is in use in commerce between five and six years after the registration date).
The Complaint was filed four days after the cancellation and prominently relied on the cancelled mark, among others. Complainants should have informed the Center and the Panel of the cancellation but did not.1 The SHAW RUGS registration was nonetheless in force when the disputed domain name was registered on July 4, 2005, which, as elaborated below, has relevance to this proceeding.
The disputed domain name routes to a website promoting rug sales. The website includes links to products of Complainant Shaw and products of third parties.
Complainant Shaw also owns registrations to several domain names that incorporate the word “Shaw,” including <shawrugs.com> (registered December 22, 1997) and <shawrug.com> (registered May 15, 1999). Both of those URLs currently redirect to Complainant Shaw's “www.shawfloors.com” website. Complainant Shaw's “www.shawrugs.com” website, from at least as early as 2000, displayed information about Complainant Shaw's rug products business. “web.archive.org/web/20001204144900/http://www.shawrugs.com/” The “www.shawrug.com” website displayed only a parking page at that time.
Complainants represent that they “are related companies owned by the same corporate parent and have a sufficient common interest in the domain name at issue in this proceeding.” The Complaint lists and refers to a large number of trademarks including the word “Shaw,” owned by one or the other Complainant. Complainants aver that:
“Since at least as early as 1985, Shaw has prominently used some of the SHAW® Marks and names in connection with carpeting and flooring related goods, including rugs, provided directly to consumers. Complainants have spent millions of dollars displaying, promoting, and advertising the SHAW® Marks. As a result of these efforts, Shaw is one of the United States [sic] leading carpeting and flooring companies and is well-known internationally.”
First, in reliance upon the general group of “Shaw” marks, Complainants contend that because the disputed domain name contains words identical to Complainants' marks, the disputed domain name is confusingly similar and/or identical to marks in which Complainants have rights. Complainants continue, alleging that the addition of the word “rugs” does not diminish this confusing similarity. Complainants also specifically rely upon the now-cancelled registration for the SHAW RUGS trademark.
Second, averring that Respondent owns no United States trademark registrations or applications containing the term “Shaw,” Complainants allege that there is no evidence that Respondent has been commonly known by the disputed domain name. Complainants also allege that Respondent has made no use of the disputed domain name in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate non-commercial or fair use of the name.
Instead, Complainants contend, “Respondent is blatantly using the domain name with intent for commercial gain and to misleadingly divert consumers,” therefore Respondent has no right or legitimate interest with respect to the disputed domain name. Noting that Respondent's website includes links to Complainants' competitors, Complainants add that Respondent acquired the disputed domain name without the intention of utilizing it in connection with the provision of legitimate goods or services.
Finally, relying largely on their assertion that the “Shaw” group of marks are well known, Complainants contend that the disputed domain name was registered and is being used in bad faith. As demonstrated by references on Respondent's website to Complainants' allegedly well-known trademarks, and the offering of links to products of third parties in the carpeting and flooring field, Complainants contend that Respondent is creating the impression that its website is affiliated with, or sponsored or endorsed by, Complainants. Complainants note that there is no disclaimer on Respondent's website to counter this impression.
Complainants allege that registration of a well-known trademark constitutes opportunistic bad faith (see, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Complainants also cite decisions under the Policy stating that the use of a disputed domain name to redirect Internet users to websites with links to external websites of competitors evidences bad faith. See DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc. WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
Complainants allege that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Based upon the foregoing contentions, Complainants seek transfer of the disputed domain name to Complainant Shaw.
Respondent did not reply to Complainants' contentions.
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company indicated that the street in Respondent's WhoIs record does not exist. The Center also notified Respondent by using an email address provided by the registrar in its verification response to the Center, but the electronic notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(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.
A complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees with Complainants that the disputed domain name is confusingly similar to a trademark in which Complainant Shaw has rights. Based upon the record, the Panel has doubts, however, that the presence of Complainant Columbia and its registered trademarks substantially contributes to this proceeding.
The Complaint states that Complainant Columbia owns three trademark registrations, SHAW and design, and two for SHAW. Complainants apparently include these marks to show that there is a well-known or famous “Shaw” group of marks, which includes some 30 United States trademark registrations in the field of flooring and carpeting.
The evidence provided by Complainants with respect to Columbia's trademarks is weak. Despite summary allegations that Complainants have spent heavily on promotion of the “Shaw” group of marks, Complainants provide no evidence of their spending, or of the “Shaw” group of marks' well-known status. In any case, the Panel has determined that Columbia's trademarks need not be considered, as explained below.2
The Panel is prepared to accept that Complainant's SHAW trademark, United States Registration Number 2,291,182, evidences ownership of sufficient rights for the Panel to proceed to the question whether the disputed domain name is identical or confusingly similar to a mark in which Complainants have rights.
The Complaint itself does not provide any proof of the public's association of the extremely common name “Shaw” with rugs or Complainants' products. However, the Panel has on its own found that there is a public association between the SHAW trademark 2,291,182 and rugs. The Panel bases this finding on the substantial duration of use of Complainant Shaw's trademark in the International Class that includes rugs, carpeting and flooring; the content appearing for several years on Complainant Shaw's “www.shawrugs.com” website; and several prior UDRP decisions involving Complainants' trademarks. See, e.g., Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; Shaw Industries Group Inc. and Columbia Insurance Company v. Arcadia Publishing Inc., WIPO Case No. D2007-0090; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555.
Panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the suffix, the disputed domain name wholly incorporates the SHAW trademark and adds a word that is descriptive of goods that have been associated with the trademark. The fact that Respondent's domain name adds a hyphen does not change the Panel's conclusion that the domain name is confusingly similar to Complainant Shaw's SHAW trademark. E.g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; V. de C. v. P. B., WIPO Case No. D2007-1863 (considering confusing similarity between “VICTOIRE DE CASTELLANE” trademark and <victoire-de-castellane.com>, citing Carrefour SA contre Laretoucherie, WIPO Case No. D2003-0587).
The Panel finds, therefore, that the disputed domain name is confusingly similar to a trademark of Complainant Shaw and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Respondent's website presently offers the commercial display of products including Complainant Shaw's products, as well as the products of others. By clicking on a thumbnail picture of a rug, users are routed to a third-party website, “www.rugstown.com.” The WhoIs directory service indicates that the <rugstown.com> website is registered to a third party.3
By diverting traffic to third parties and their products, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the SHAW mark in its domain name and that Respondent is not commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainant's widely known marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainants' prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the provision of false contact details in violation of the registration agreement, or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain name in 2005 with awareness of Complainant Shaw and its business for the following reasons: (1) the SHAW RUGS mark was registered in 2003 (with a first use in commerce in 1993), and, though it is presently cancelled on the United States register, the SHAW RUGS mark enjoyed an apparently valid registration in 2005; (2) Complainant Shaw's website “www.shawrugs.com” promoted Complainant Shaw's rug products from at least as early as 2000; (3) Complainant Shaw had rights in the SHAW trademarks in classes that included rugs from as early as 1985, and as explained above, this Panel has found that there existed a public association between the SHAW mark and the rug business.
The Panel's inference that Respondent had awareness of Complainant Shaw's rights is further supported by the content of Respondent's website, which includes commercial references to Complainant Shaw's products.4
The Panel finds therefore that the original domain name registration was made with the intention of trading on the value of Complainant Shaw's trademarks. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. Under the circumstances, this constitutes registration in bad faith for purposes of the Policy.
The Panel also concludes that the circumstances show bad faith use of the disputed domain name by Respondent, as elaborated below.
Respondent's website shows that the disputed domain name is used not only to promote sales of Complainants' products, but also to promote the products of competitors of Complainant Shaw. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., supra. Respondent's failure to provide accurate contact details in accordance with his obligations under the registration agreement, and the absence of a response to the Complaint, provides further support for the Panel's finding of bad faith.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) 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 <shaw-rugs.com> be transferred to Complainant Shaw Industries Group, Inc.
Jeffrey D. Steinhardt
Dated: November 13, 2009
1 This also raises some concerns respecting the Complainant's signed certification in the Complaint as required under the Rules, paragraph 3(b)(xiv). In the Panel's estimation, however, it does not appear that counsel made a deliberate misrepresentation at the time that counsel signed the Complaint, four days after the cancellation.
2 Apart from Columbia's trademarks, which the Panel does not consider to reach its decision, the Panel finds that the interest of Complainant Columbia in this proceeding is not adequately described. The Panel has also determined that the Complaint does not establish that the “Shaw” group of marks are well known, but the Panel concludes that a finding on that question is not essential to granting the requested remedy. See note 4 below.
3 The Panel has undertaken limited research by visiting other websites, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5. The Panel has also viewed the WhoIs directory service for the “www.rugstown.com” website at “whois.domaintools.com/rugstown.com”.
4 This inference is not based on Complainants' assertion that they own a well-known or famous group of “Shaw” marks, since the Complaint does not provide proof of this point. The name “Shaw” is a commonly used commercial name, and several third parties have rights in marks that incorporate the name. For instance, a brief search of the United States Patent and Trademark Office's Trademark Electronic Search System reveals more than 250 different entries, the majority of which have no apparent relationship to Complainants' trademarks. Therefore, Complainants' listing of their 30 marks incorporating the name “Shaw” misses the target and does not, without more, establish the existence of a well-known “Shaw” group of marks which might be relevant to this proceeding.