World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc. and Columbia Insurance Company v. Texas Best Flooring Company Inc.

Case No. D2011-1676

1. The Parties

The Complainants are Shaw Industries Group, Inc. (“Shaw”) of Dalton, Georgia, United States of America (“U.S.”) and Columbia Insurance Company (“Columbia”) of Omaha, Nebraska, U.S., represented by Neal & McDevitt of Northfield, Illinois, U.S.

The Respondent is Texas Best Flooring Company Inc. of Dallas, Texas, U.S., self-represented.

2. The Domain Names and Registrar

The disputed domain names

<shawcarpetdfw.com>

<shawcarpethouston.com>

<shawflooringdallas.com>

<shawflooringdfw.com>

<shawflooringhouston.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2011. On October 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 4, 2011, GoDaddy.com, 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 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 25, 2011. The Response was filed with the Center on October 25, 2011.

On November 4, 2011, Complainant filed a Motion to Submit Reply to the Response along with a proposed Reply. On November 8, 2011, Respondent filed an Objection and Request to Strike Complainant’s Reply and Related Annexes as Improper and Inadmissible.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 4, 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

Complainant Columbia has incontestable trademark registrations for SHAW and related trademarks in class 27 and other classes dating back to at least 1999, and asserts that some of the marks have been in use since at least 1985. Complainant Shaw also has registered numerous domain names that incorporate the SHAW mark. Complainants Columbia and Shaw are both subsidiaries of Berkshire Hathaway, Inc. The disputed domain names were registered in January and February, 2011. Respondent is a reseller of flooring products including Shaw carpeting. Earlier this year Complainants and Respondent were involved in another UDRP proceeding involving the domain name <shawcarpetdallas.com>. In that case the disputed domain name was transferred from Respondent to Complainant. Shaw Industries Group, Inc. & Columbia Insurance Company v. Texas Best Flooring Company Inc., WIPO Case No. D2011-0462. In that earlier case the disputed domain name was being used for pay-per-click links to competitors’ carpets, whereas, among other things, in this case the disputed domain names lead to either the home page, or the “Shaw Carpets” page, of the website at “www.texasbestflooringcompany.com”.

5. Parties’ Contentions

A. Complainants

Complainants assert that the disputed domain names are identical or confusingly similar to the SHAW marks. Complainants assert that Respondent does not have any rights to the SHAW marks, has not applied to register the SHAW marks, is not licensed by Complainant to use the SHAW marks, and is not commonly known by any of the disputed domain names. Complainants further assert that Respondent has made no use of, nor any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, and that “[i]nstead, Respondent is apparently using the websites to derive revenues for carpeting and flooring products from competitors of Shaw, but not from Shaw.” Complainants assert that Respondent is hoping that Internet users will search for Shaw intending to find Complainants but will instead end up at one of the disputed domain names. Complainants also assert that Respondent registered domain names incorporating a well-known trademark for purposes of “opportunistic bad faith”.

B. Respondent

Respondent “acknowledges that the weight of authority supports a finding that the disputed domain name[s are] confusingly similar to the marks in which Complainants appear to have rights”, while noting that Complainants have not registered trademarks that are identical to any of the disputed domain names. Respondent also notes that while Complainants have many carpeting-related domain name registrations, Respondent has 2,555 domain names “and is currently using over 2,200 flooring domain names for carpet, wood floors, tile, and other flooring terms” – many more than Complainants. Respondent also notes that, with the exception of the prior case between these parties, the cases cited in Complainants’ Complaint are default cases where Respondent did not file a Response. Respondent further asserts that it has rights or legitimate interests in the disputed domain names under the Oki Data factors, and that it is making a bona fide offering of goods or services. In support of these assertions Respondent refers to cases such as Shaw

Industries Group, Inc. and Columbia Insurance Company v. Arcadia Publishing, Inc., WIPO Case No. D2007-0090; and Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555, in which resellers of Shaw carpeting were found to have rights or legitimate interests in the domain names <shawcarpetoutlet.com> and <shawrugsonline.com>. Respondent asserts that it is a legitimate registered business with over USD 500,000 in annual sales and that Complainant has acknowledged a business relationship between the companies through a voice mail message left by a Mr. Levante on Respondent’s answering machine. Respondent also asserts that Complainants link to Shaw resellers on Complainants’ website – including to resellers that also sell competing goods – and that Complainants provide sales materials to such resellers and allow such resellers to use the Shaw marks in connection with their businesses because doing so helps build the Shaw brand. Respondent asserts that, by virtue of these practices, “it is the right of Texas Best Flooring Company and all these other companies to sell what they want in their stores or online as they have paid for the use of Shaw’s name by buying these displays and other Shaw advertising material”. Respondent asserts that Complainants’ true purpose is to overrun small resellers by launching a series of Complainant-owned stores under the brand “Patina Floor Design” which will sell Shaw carpeting among other flooring-related goods and services. Respondent asserts that “Shaw should not be allowed nor should anyone; to sell its name on displays and product samples, allow other companies to do mailer, [I]nternet ads, radio, TV, etc. advertising of Shaw products at their own direct cost for years and then turn around and say all these thousands of flooring companies have no interest in Shaw’s name.” Respondent also asserts that it is not engaging in bait and switch tactics, and that there is a disclaimer in its Visitor Agreement – which “is required to be read, understood, and checked off before someone can buy a product online” – stating, among other things, that “Texas Best Flooring Company does not own any of the company’s trademarks listed on this site. Company names and brands are used to designate products made by that particular company. We have no any affiliation to these companies beyond offering their products for sale as a flooring retailer” and clarifying that Respondent offers competing products so consumers can have a choice but Respondent “do[es] not encourage or approve in any way of baiting and switching”. Respondent asserts that this disclaimer militates against a finding of bad faith based on paragraph 4(b)(iv) of the Policy, because the Visitor Agreement clarifies that Respondent is not affiliated with Complainants (thereby avoiding any likelihood of confusion). Respondent also recites the factors for a finding of bad faith in a case involving passive holding of a domain name, and asserts that it does not satisfy these factors.

6. Discussion and Findings

A. Motion to Submit Reply to the Response

Under Rule 12, “the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” As noted in Section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “[t]he party submitting its [supplemental] filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.” In their motion to submit a Reply Complainants state that “[a] Reply is essential in this case in order to clarify statements made by the Respondent in its Response.” However, in the Reply Complainants state that Respondent’s Response is “identical to its Response in the prior UDRP proceeding”. Thus, Complainants have not shown why they were unable to provide this information in their Complaint after seeing that Respondent had made all of the same arguments in a recent prior UDRP case. Moreover, allowing a Reply might also invite a Surreply and further delay the proceedings. In addition, Respondent moved for an extension of time to file a Response because Respondent was “not able to properly respond to this complaint as I am in a dangerous area in Pakistan with little access to the outside world”. Complainants did not consent to Respondent’s request for an extension and Respondent does not consent to Complainants’ request to file a Reply. Sometimes karma works that way. In any event, for the reasons previously mentioned, Complainants’ motion is denied.

B. UDRP Factors

Pursuant to paragraph 15(a) of the Rules, panels in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable”.

Under paragraph 4(a) of the Policy, Complainants must prove the following:

(i) The disputed domain names are 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

i. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainants must show that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which the complainant[s] ha[ve] rights”.

Respondent “acknowledges that the weight of authority supports a finding that the disputed domain name is confusingly similar to the marks in which Complainants appear to have rights”, and the Panel agrees. Shaw Industries Group, Inc. & Columbia Insurance Co. v. Texas Best Flooring Company Inc., WIPO Case No. D2011-0462.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to trademarks or service marks in which Complainants have rights, and that paragraph 4(a)(i) of the Policy is satisfied.

ii. Rights or Legitimate Interests

Complainants also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”. Paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name[s] or a name corresponding to the domain name[s] in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name[s], even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4(c).

Respondent asserts that as a reseller of Shaw carpeting it has rights or legitimate interests under the so-called Oki Data factors, which, in order to qualify for Policy safe-harbor protection as a reseller of trademark-branded goods, require that:

- Respondent must actually be offering the goods or services at issue.

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Section 4.2 of the WIPO Overview 2.0 notes that Oki Data reflects the majority view but that “[s]ome panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark”, while “[a] small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”

This is a subtle area and this Panel believes the Oki Data approach and the minority view do not fully describe (and perhaps in the context of expedited proceedings under the Policy were never intended to encapsulate all of) the nuances of the generally applicable trademark law in the U.S. (and the other approach, as stated, appears to be directed only at domain names that are identical to a trademark, rather than confusingly similar domain names). Nevertheless, the Panel notes that even under the Oki Data analysis the panel in the previous case between these parties held that “Respondent apparently intends to use the Disputed Domain Name to direct customers to a website where Complainants’ goods will be offered alongside competitors’ carpets. Such use is inconsistent with the Oki Data requirement that ‘[a] respondent must use the website to sell only the trademarked goods,’ and Respondent therefore has not made preparations to use the domain in connection with a bona fide offering of goods.” Shaw Industries Group, Inc., & Columbia Insurance Company v. Texas Best Flooring Company Inc., WIPO Case No. D2011-0462.

The Oki Data factors are based on various decisions where certain circumstances led to a finding of a lack of rights or legitimate interests. For example, for the requirement that the “Respondent must actually be offering the goods or services at issue”, the panel cites as authority the decision in World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306. In World Wrestling Federation the panel held that the lack of evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services demonstrated that the respondent did not have rights or legitimate interests. Thus, to this Panel it seems that the World Wrestling Federation decision did not in fact hold that there must be an actual offering of the goods or services at issue (which would seem to be contrary to Paragraph 4(c) of the Policy). Indeed, the panel in World Wrestling Federation stated that “[i]f Respondent had shown demonstrable preparations to offer WWF collectibles through an auction, the Panel might conceivably have concluded that Respondent had a legitimate interest, or it might instead have concluded that wwfauction implies too great a connection between Complainant and Respondent.” To this Panel, this highlights the logical fallacy behind the Oki Data factors. It is a logical fallacy to conclude that because “if A then B” is true (i.e., if there are no demonstrable preparations to use, then there are no rights or legitimate interests), that “if not A then not B” must also be true (i.e., if there are demonstrable preparations to use, then there are rights or legitimate interests). In logic this is known as the fallacy of “denying the antecedent”, a classic illustration of which is the statement “if I had all the gold in Fort Knox, then I would be rich” – depending on the speaker, they could be rich even if they did not have all the gold in Fort Knox. Further, while it might be tempting to rely upon paragraph 4(c)(i) of the Policy for the proposition that use or demonstrable preparations to use gives rise to rights or legitimate interests, this leaves out the critical factor under the Policy which requires that the use must be bona fide (which in turn requires that the use not be “a knowingly infringing use of a trademark to offer goods and services”, see U-Haul International, Inc. v. PrivacyProtect.org / Ken Gossett, WIPO Case No. D2011-0347).

This Panel also considers it worth noting that at least one dispute where the panel followed the Oki Data factors was subsequently litigated in a U.S. District Court case where the opposite result was reached. In Volvo Trademark Holding AB v. Volvospares / Keith White, WIPO Case No. D2008-1860, the panel – following Oki Data – found that the respondent had rights or legitimate interests in the use of the domain name <volvospares.com> to sell parts for Volvo cars. However, the case was subsequently litigated in U.S. District Court and Volvo Trademark Holding AB – the original complainant – prevailed on summary judgment. Volvo Trademark Holding AB v. Volvospares.com, 703 F.Supp.2d 563 (E.D. Va. 2010). In the District Court case, the Judge ruled that the use of the <volvospares.com> domain to “display[] images of Volvo automobiles and advertise[] the sale of ‘new, used, and reconditioned Volvo parts’” constituted “bad faith with intent to profit from use of the VOLVO mark in volvospares.com” and transferred the <volvospares.com> domain name to Volvo Trademark Holding AB.

Likewise, in this Panel’s assessment the minority view “that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark”, also is not a completely correct statement of the law in the U.S. – primarily because of the addition of “otherwise wholly incorporates the relevant trademark”. The purpose of the Lanham Act is to protect consumers against confusion and prevent unfair competition. As such, the Ninth Circuit has held that a domain name such as <we-are-definitely-not-lexus.com> – although it otherwise wholly incorporates the Lexus trademark – would not be prohibited. Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010). This Panel recognizes that the Policy and its jurisprudence was never intended to reflect a statement of law in the U.S. as such, but rather to be a framework in which disputes between parties from many jurisdictions around the world, including the U.S., could be workably and expeditiously resolved without precluding national court options. In reseller disputes such as this between two U.S. parties, however, the question of whether the Respondent’s use is bona fide may be critical, and the use is not bona fide if it consists of “a knowingly infringing use of a trademark to offer goods and services”. U-Haul International, Inc. v. PrivacyProtect.org / Ken Gossett, WIPO Case No. D2011-0347. Therefore, an examination of trademark infringement law may be relevant, and certainly the Policy grants panels discretion to consider applicable national law.

The middle view as stated in the WIPO Overview 2.0 – that “it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark” – is in this Panel’s view a correct statement, though it appears to be limited to domain names that are identical to a trademark. This Panel would extend that view to confusingly similar trademarks as well. In this Panel’s view, if a Complainant owns a trademark for SHAW in connection with carpets, it generally would be very difficult for another entity to use a confusingly similar mark for carpets without permission. That is, after all, what Section 43(a) of the Lanham Act (15 U.S.C. Section 1125) is meant to address. Of course, there are defenses to such claims of infringement such as parody, nominative fair use, etc., but in the case of a reseller selling the complainant’s goods and/or competitive goods it will be very difficult to use the domain name lawfully for such activities without a trademark license.

This conclusion is supported by U.S. trademark law, and as the present dispute under the Policy is between two U.S. parties, the Panel finds this to be a persuasive consideration. For example, as noted in Toyota v. Tabari, 610 F.3d at 1179, “[s]ites like [<]trademark-USA.com[>], [<]trademark-of-glendale.com[>] or [<]e-trademark.com[>] will also generally suggest sponsorship or endorsement by the trademark holder”. See also Caterpillar Inc. v. Telescan Technologies, L.L.C., 2002 WL 1301304 at *5 (C.D. Ill. 2002) (“the first sale doctrine flounders where the plaintiff manufacturer has an established network of authorized dealers and defendant’s activity misleads consumers into thinking that defendant is part of that network. Here, TeleScan’s use of the Caterpillar Marks in the disputed domain names and the claims that the disputed web sites were ‘A Listing Service of Caterpillar Equipment’ is likely to cause confusion beyond mere resale.”) (internal citations omitted); Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128 (N.D. Ill. 1997) (enjoining use of “Porshop” for a Porsche repair shop due to likelihood of trademark infringement and dilution); Volkswagenwerk Aktiengesellschaft v. Karadizian, 170 U.S.P.Q. 565 (C.D. Cal. 1971) (holding that, by selling cars under the name “Volkswagen Village,” the defendant infringed and diluted Volkswagen’s trademarks and committed unfair competition”).

Respondent argues that the Visitor Agreement on its website nevertheless alleviates any potential confusion, because “Texas best flooring company’s on line website Visitor Agreement with specific full disclosures is required to be read, understood, and checked off before someone can buy a product online.” However, this disclaimer would not dispel a consumer’s confusion up to the final step before confirming a purchase – i.e., it would not dispel initial interest confusion nor would it dispel the confusion of those who never make a purchase from Respondent’s site. In addition, courts have held that this type of disclaimer is not effective to prevent infringement. See, e.g., Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1239, 1240 (10th Cir. 2006) (“Defendants used Plaintiffs’ trademarks on Defendants’ Web sites. Defendants also placed Plaintiffs’ trademarks in the metatags of Defendants’ Web sites. Further, Defendants paid Overture.com to list Defendants in a preferred position whenever a computer user searched for Plaintiffs’ trademarks. All of these actions were attempts to divert traffic to Defendants’ Web sites. While viewing Defendants’ Web sites, consumers had the opportunity to purchase Products, but also to purchase lotions from Plaintiffs’ competitors. Moreover, Defendants continued to use the trademarks to divert [I]nternet traffic to their Web sites even when they were not selling Products. Thus, Defendants used the goodwill associated with Plaintiffs’ trademarks in such a way that consumers might be lured to the lotions from Plaintiffs’ competitors. This is a violation of the Lanham Act. […] Defendants attempted to prevent actual confusion by placing disclaimers on their Web sites-though because these disclaimers do not tie particular trademarks to particular holders, the disclaimers are inadequate. [fn. om.] More importantly, ‘a defendant’s website disclaimer, proclaiming its real source and disavowing any connection with its competitor, cannot prevent the damage of initial interest confusion, which will already have been done by the misdirection of consumers looking for the plaintiff’s websites.’ Buckman, 183 A.L.R. Fed. 553.”).

The Panel finds that, in this Policy dispute between two U.S. parties, there are no sufficiently mitigating factors to distinguish this case from the law cited above, and therefore that Respondent has no rights or legitimate interests in respect of the disputed domain names. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied by the Complainant.

iii. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name[s] ha[ve] been registered and [are] being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

Panels have held that the registration of a well-known mark can be evidence of an attempt to attract users to a web site by creating confusion with Complainant’s mark, ALSTOM v. STOCKMARKET DOMAINS, WIPO Case No. D2008-1542, and the panel in the prior case between these parties found that Respondent's registration of a confusingly similar domain name with knowledge of Complainants’ marks constituted registration in bad faith. Shaw Industries Group, Inc. & Columbia Insurance Company v. Texas Best Flooring Company Inc., WIPO Case No. D2011-0462. Also, the registration of multiple domain names corresponding to Complainants’ trademarks is further evidence of bad faith. Bayer Schering Pharma AG v. New World Express LLC / udrp D2010-1387, WIPO Case No. D2010-1387.

As noted by the panel in the prior case between these parties, “[i]t is well established that using a domain name which incorporates a trademark to advertise the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner.” Shaw Industries Group, Inc. & Columbia Insurance Co. v. Texas Best Flooring Company Inc., WIPO Case No. D2011-0462. Indeed, that panel contemplated something similar to this case when it noted that “Respondent has indicated that its future plans for the Disputed Domain Name apparently involve using it to direct potential Internet customers of Complainants to a website offering competing goods for sale. Together, this conduct demonstrates the sort of bad faith use described under Policy [p]aragraph 4(b)(iv).” As noted above, Respondent’s disclaimer is not legally sufficient to alter this conclusion.

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Appropriate Transferee

The Complaint in this matter does not fully describe the nature of each party’s rights in the SHAW mark. The Complaint provides evidence that Complainant Columbia owns trademarks with which the disputed domain names are confusingly similar, but states that Complainant Shaw owns and has used numerous domain names that incorporate the SHAW mark. The Complaint also notes that Complainants are related companies owned by the same corporate parent. These allegations appear to be adequate for the Complaint to be brought in the name of both Complainants. See Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661.

The Complaint simply requests that the disputed domain names be transferred “to the Complainants.” The Complaint does not indicate which Complainant has the trademark or license rights to hold the disputed domain names, and a review of prior cases involving Complainants shows a mix of cases that simply transfer the disputed domain names to “Complainant”, “Complainants”, and “Complainant Shaw”, with the domain names so transferred frequently ending up registered to Complainant Columbia.

Because Complainant Columbia owns the trademarks relied upon in the Complaint and has ended up as the registrant of several domain names transferred to “Complainant”, “Complainants”, and “Complainant Shaw”, the Panel concludes that Complainant Columbia is the appropriate transferee.

8. 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 names, <shawcarpetdfw.com>, <shawcarpethouston.com>, <shawflooringdallas.com>, <shawflooringdfw.com>, and <shawflooringhouston.com> be transferred to Complainant Columbia Insurance Company.

Bradley A. Slutsky
Sole Panelist
Dated: November 23, 2011

 

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