WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group, Inc., Columbia Insurance Company v. Shaw Hardwood Floors / Domains by Proxy, Inc.
Case No. D2011-0770
1. The Parties
Complainants are Shaw Industries Group, Inc. of Dalton, Georgia, United States of America and Columbia Insurance Company of Omaha, Nebraska, United States of America, represented by Neal & McDevitt, LLC, United States of America.
Respondents are Shaw Hardwood Floors of Lebanon, Ohio, United States of America and Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America.
2. The Disputed Domain Name and Registrar
The Disputed Domain Name, <floorsbyshaw.com>, (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 5, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on May 6, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on May 10, 2011. 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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on May 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 31, 2011. No official Response was filed with the Center; however, Respondent sent email communications on May 11, 2011, June 2 and June 15, 2011.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 27, 2011. 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
Complainants in this administrative proceeding are Shaw Industries Group, Inc. and Columbia Insurance Company. Shaw Industries Group, Inc. uses the trademarks relevant to this proceeding in its flooring business Columbia is the exclusive owner of the following federally registered trademarks: SHAW, U.S. Reg. No. 2,291,182, which issued on November 9, 1999 and has been in use since at least as early as 1985; SHAW(and Design), Reg. No. 2,692,764, which issued on March 4, 2003 and has been in use since at least as early as 2001; and SHAW, Reg. No. 2,877,500,which issued on July 29, 2003 and has been in use since at least as early as 2001. Complainants are related companies, both owned by Berkshire Hathaway, Inc.
According to the WhoIs database, Respondents in this administrative proceeding are Domains by Proxy, Inc. and Shaw Hardwood Floors, registrants of the Disputed Domain Name, <floorsbyshaw.com>.
Complainants use and have owned for numerous years registrations for certain federally registered trademarks, including, but not limited to, SHAW®, SHAW HARDWOODS®, and other similar trademarks, for carpeting, flooring and associated goods and services. In particular, Complainant Columbia Insurance Company is the owner of the following registered trademarks in SHAW and trademarks incorporating SHAW in the United States, dating from as early as 1999 and covering carpeting, flooring, and related goods and services:
Trademark U.S. Reg. No.
SHAWMARK 1,650,849
SHAW 2,291,182
COUTURE BY SHAW (and Design) 2,547,524
SHAW CERAMICS 2,577,579
SHAW HARDWOODS 2,587,494
SHAW HOSPITALITY 2,675,008
SHAW LAMINATES (and Design) 2,677,907
SHAW (and Design) 2,692,764
SHAW WHERE GREAT FLOORS
BEGIN (and Design) 2,774,722
SHAWGARD 2,795,208
SHAW CONTRACT 2,811,298
SHAW 2,877,500
SHAWSHIELD 2,924,696
SHAWSHIELD (and Design) 2,924,697
SHAW FIBERS 2,951,390
SHAW LIVING 3,010,847
SHAW INNOVATION 3,053,066
SHAW CONTRACT GROUP 3,191,367
SHAW GREEN EDGE 3,427,557
SHAW GREEN EDGE INITIATIVE 3,447,349
THAT’S THE SHAW GREEN
EDGE (and Design) 3,447,442
THAT’S THE SHAW GREEN EDGE 3,447,443
SHAW GREEN EDGE (and Design) 3,496,445
SHAW PROPERTY SOLUTIONS 3,573,882
SHAW (and Design) 3,626,424
SHAW 3,626,430
SHAW (and Design) 3,626,431
SHAW 3,688,456
SHAW VISIONS 3,691,119
SHAW (and Design) 3,825,135
SHAW 3,828,340
SHAW INTEGRATED
SOLUTIONS (and Design) 3,926,199
In addition, Complainant Shaw Industries Group, Inc. has registered and owns the following domain names containing the SHAW® trademark:
Domain Names
<shawcarpet.com>
<shawcarpets.com>
<shawcarpeting.com>
<shaw-carpets.com>
<shawcarpets.net>
<ishawcarpet.com>
<ishawcarpets.com>
<shawcarpet.org>
<shawcarpets.net>
<shawcarpetstore.com>
<shawcarpettile.com>
<shawcarpettiles.com>
<shawcarpetvalue.com>
<shawscarpet.com>
<shaw-carpet.info>
<shawcarpetflooring.com>
<shawcarpetindustries.com>
<shawcarpetmilloutlet.com>
<shawcarpetoutlet.com>
<shawcarpetoutlets.com>
<ishawfloors.com>
<shawcleanfloors.com>
<shawcleanfloors.net>
<shawenvironmental.com>
<shawfloor.com>
<shawfloores.com>
<shawflooring.com>
<shaw-flooring.info>
<shawsfloor.com>
<shawsflooring.com>
<shawlaminatefloors.com>
<shawhardwoodfloors.com>
<shawhardwoods.com>
<shawflores.com>
<shawfloring.com>
<shawflors.com>
<shawfooring.com>
<shawfoos.com>
<shaw-flooring.com>
<shawnfloor.com>
<shawflooringalliance.com>
<shawfloors.com>
<shawflooringinc.com>
<shawhardwoodflooring.info>
<shawlaminateflooring.net>
<shawlaminateflooring.info>
<shawhardwoodflooring.com>
<shawlaminate.com>
<shawfloorjobs.com>
<shawcarpetmn.com>
<shawcarpetchicago.com>
<shaw-hardwood-floors>
Since at least as early as 1985, Shaw has prominently used the SHAW® trademarks in connection with carpeting and flooring-related goods, provided directly to consumers. Complainants have spent a substantial amount of money displaying, promoting, and advertising the SHAW® trademarks.
Complainants contacted Respondents on November 22, 2010, claiming infringement of their trade name and the Disputed Domain Name. On December 9, 2010, Adam Shaw of Shaw Hardwood Flooring LLC responded, stating that his company had begun the process of changing its trade name and website to Adam’s Hardwood Flooring. While Mr. Shaw assured Complainants that he was ceasing all use of the trade name and the Disputed Domain Name, he made no mention of transferring the Disputed Domain Name, <floorsbyshaw.com>, to Complainants. Only on May 6, 2011, after the filing of Complainants’ Complaint in this administrative proceeding, did Mr. Shaw respond regarding the Disputed Domain Name. In that correspondence, Mr. Shaw offered to sell the Disputed Domain Name to Complainants for USD8000.00. Then, in response to submissions from the Center and Complainants related to this proceeding, Mr. Shaw questioned the purpose of the proceeding. He sent e-mails on May 11, 2011 (“The domain has been dissolved. Leave me alone.”), June 2 (“I do not understand the following email. This domain is no longer use [sic]”), and June 15, 2011 (“This is getting ridiculous, what else do you want me to do?”).
At first, the website set up by Respondents using the Disputed Domain Name resolved to “www.adamshardwareflooring.com”, a website devoted to Mr. Shaw’s flooring business. However, as of the date of this decision, the “www.floorsbyshaw.com” website is linked to the website of Complainant Shaw Industries Group, Inc.
ANALYSIS
The Policy, which is the substantive law governing this proceeding, provides that an owner must transfer a domain name to a complainant/trademark owner if:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the owner of the domain name has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
5. Parties’ Contentions
A. Complainants
Complainants in this administrative proceeding are Shaw Industries Group, Inc., a Georgia corporation, with its principal place of business in Dalton, Georgia, and Columbia Insurance Company, a Nebraska corporation, with its principal place of business in Omaha, Nebraska.
Complainants claim that Respondent has deliberately infringed and diluted Complainants’ invaluable rights in their SHAW® trademarks through the unlawful registration of the Disputed Domain Name, <floorsbyshaw.com>. They claim that they have satisfied the three requisite elements under the Policy and request that the Disputed Domain Name be transferred to them.
Complainants contend that the Disputed Domain Name is confusingly similar to their SHAW® trademarks, as well as the domain name <shawfloors.com>. The Disputed Domain Name, <floorsbyshaw.com>, contains the identical SHAW® trademark. The fact that Respondents own the Disputed Domain Name that contains an identical mark owned by the Complainants leads to the inevitable conclusion that the Disputed Domain Name is confusingly similar to registrations in which the Complainants have rights.
Complainants further contend that Respondents have no rights or legitimate interests with respect to their use of the Disputed Domain Name. Respondents are not listed as owners of any United States trademark containing the term “Shaw.” Nor is there any evidence that Respondents own any, or have applied for any, U.S. trademark registrations. Moreover, there is no evidence that Respondents, as individuals, businesses or other organizations, have been commonly known by the Disputed Domain Name, even if the Respondents have acquired no trademark or service mark rights.
Finally, Complainants contend that Respondents have registered and are using the Disputed Domain Name in bad faith. By using the Disputed Domain Name <floorsbyshaw.com>, Complainants claim that Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website by creating a likelihood of confusion with the SHAW® trademarks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website. In addition, Respondents offered for sale to the Complainants the Disputed Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name, which is further evidence of their registration and use in bad faith.
B. Respondents
According to the WhoIs database submitted as an annex by Complainants, the Respondents in this administrative proceeding are Domains by Proxy, Inc. and Shaw Hardwood Floors, registrants of the Disputed Domain Name, <floorsbyshaw.com>. The Respondents did not submit an official Response and are in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide this matter on the basis of the Complaint and shall draw such inferences as it considers appropriate from the Respondents’ default.
6. Discussion and Findings
In order for the Complainants to prevail and have the Disputed Domain Name transferred to the Complainants, the Complainants must prove the following (the Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The relevant trademarks in this Complaint are SHAW®, SHAW HARDWOODS®, and other similar trademarks related thereto, which Shaw Industries Group, Inc. uses in connection with carpet, flooring, and related goods and services.
The Panel finds that the Disputed Domain Name and the SHAW trademarks are confusingly similar for purposes of paragraph 4(a)(i) of the Policy. The test of confusing similarity under the first element is an objective comparison between the domain name and the complainant’s trademark in appearance, sound, meaning, and overall impression. See, e.g., Hertz System, Inc. v. Jeff Park, WIPO Case No. D2007-1120 (and cases cited therein); Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231. Since “SHAW” is the distinctive portion of the Complainants’ trademarks, the Panel finds that the Disputed Domain Name meets this objective test of confusing similarity.
In addition, the presence of the descriptive wording “floors by” does nothing to differentiate the Disputed Domain Name from the registered SHAW® trademarks. In light of the fact that Complainants own various trademark registrations for SHAW® in connection with flooring goods and services, as well as numerous “shaw” domain names, the addition of the wording “floors by” simply lends more strength to the argument that the Disputed Domain Name is confusingly similar to the SHAW® trademarks. Therefore, the Panel finds that the first element of the Complaint has been met.
B. Rights or Legitimate Interests
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the respondent carries the burden of showing that he does indeed have such a right or interest. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainants have put forward a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name. There is nothing on the record to indicate that the Respondents might possess such a right or legitimate interest. As noted by the Complainants, there is no evidence that the Respondent’s own any trademark rights in a name corresponding to neither the Disputed Domain Name, nor that they have been commonly known by such name. Indeed, Respondents have recently linked the Disputed Domain Name to Complainant Shaw Industries Group Inc.’s website, further demonstrating that Respondents have no rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel finds that the second element of the Complaint has been met.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, Complainants have demonstrated the existence of Respondents’ bad faith pursuant to paragraph 4(b)(iv) of the Policy.
First, by initially using the Disputed Domain Name <floorsbyshaw.com> to create a website that resolved to Respondents’ flooring business, “Adam’s Hardware Flooring”. Respondents intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website by creating a likelihood of confusion with the SHAW® trademarks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website. However, as noted herein, as of the date of this decision, Respondents’ website is redirected to the website of Complainant Shaw Industries Group, Inc.
Second, Respondents are familiar with Shaw, its flooring products, and its well known trademarks. Among other things, this is evidenced by the fact that Respondents have linked the “www.floorsbyshaw.com” website to the website of Complainant Shaw Industries Group, Inc. The inclusion of a well known trademark in a domain name, of which the respondent must reasonably have been aware, constitutes opportunistic bad faith. See VeuveClicquotPonsardin, MaisonFondee en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163.
Moreover, Complainants’ counsel contacted Mr. Adam Shaw on November 22, 2010 to request that he cease all use of the trade name Shaw Hardwood Flooring and the Disputed Domain Name <floorsbyshaw.com>. Mr. Shaw responded on December 9, 2010, agreeing to cease all use of the trade name Shaw Hardwood Flooring, although he ignored counsel’s follow-up correspondence requesting the transfer of the Disputed Domain Name <floorsbyshaw.com>. Only on May 6, 2011, after the filing of this Complaint, did Mr. Shaw respond regarding the Disputed Domain Name. In that correspondence, Mr. Shaw offered to sell the Disputed Domain Name to Complainants for USD8,000.00.
Under the Policy, an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith. Policy, paragraph 4(b)(i). The only exception to this is where the respondent can show that it has rights to or legitimate interests in the domain name. Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046. Here, the registrar for the Disputed Domain Name is Go Daddy, according to WhoIs records. Go Daddy’s website details the per-year pricing for domain name registration. For a “.com” domain name, for example, such is at issue here, the annual registration costs are USD11.99. Thus, the USD8,000.00 is substantially higher than Respondents’ out-of-pocket costs directly related to the Disputed Domain Name. Since, as explained above, Respondents failed to demonstrate that they have rights or legitimate interests in the Disputed Domain Name, their offer to sell the Disputed Domain Name also demonstrates bad faith.
In sum, the Panel finds that the third element of the Complaint has been met.
7. Decision
For all 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, <floorsbyshaw.com>, be transferred to the Complainants.
Lynda M. Braun
Sole Panelist
Dated: July 3, 2011