World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc., Columbia Insurance Company v. Royce Southerland

Case No. D2011-1743

1. The Parties

The 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, United States of America.

The Respondent is Royce Southerland of Bemidji, Minnesota, United States of America.

2. The Domain Name and Registrar

The disputed domain name <shawdesigncenter.biz> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 14, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On October 14, 2011 and October 19, 2011, Tucows 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” 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Response was filed with the Center on October 21, 2011.

The Center appointed William F. Hamilton as the sole panelist in this matter on November 22, 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

Since at least 1985, the Complainants have prominently used the SHAW trademark and name in connection with the manufacture and sale of carpeting and flooring related goods. The Complainants have registered with the United States Patent and Trademark Office numerous trademarks, both word and design, incorporating the SHAW trademark and have registered numerous domain names incorporating SHAW registered trademarks. See. e.g. United States Trademark Registration Nos. 2291182, 2877500, 3626430, 3688456, 3828340, 2587494 (SHAW HARDWOODS), 2677907 (SHAW LAMINATES), 1650849 (SHAWMARK), and 2547524 (COUTURE BY SHAW).

The Respondent is an authorized dealer of SHAW carpeting and flooring consumer products.

The disputed domain name was registered on May 28, 2011. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Respondent registered the disputed domain name as part of a pattern of serial cybersquatting. The Complainants assert that the disputed domain name is confusingly similar to the Complainants’ SHAW trademark as it incorporates the SHAW trademark entirely. The Complainants assert that the Respondent does not have any rights or legitimate interests in the disputed domain name or the SHAW trademark and that the Respondent was advised that the Respondent was not permitted to incorporate the Complainants’ SHAW trademark into any domain name. The Complainants contend the disputed domain name was registered and is being used in bad faith even though the disputed domain name is not currently linked to any website.

B. Respondent

The Respondent does not contest the Respondent’s use of the SHAW trademark in the disuted domain name, but asserts that the Respondent is an authorized SHAW carpeting and flooring dealer and thus entitled to use the SHAW trademark in the disputed domain name. The Respondent asserts that the Respondent is not precluded by any written contract with the Complainants from utilizing the SHAW trademark in any domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

ii) The 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. Identical or Confusingly Similar

The Panel finds the disputed domain name is confusingly similar to the Complainants’ mark. The Respondent admits the disputed domain name was created to suggest that the Respondent is a source of consumer products manufactured by the Complainants. The incorporation of a registered trademark in its entirety into a domain name merely surrounded by generic prefixes or suffixes may create confusing similarity. Pfizer, Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446.

B. Rights or Legitimate Interests

The Complainants assert that the Respondent was neither authorized to use the disputed domain name nor to incorporate the SHAW trademark in the disputed domain name. The Respondent asserts that its dealer agreement does not forbid the use of the SHAW mark in the disputed domain name. The Respondent misses the point. The issue is not what the dealer agreement permits, but what the Policy precludes. The Panel rejects the Respondent’s argument.

The Complainants assert that the Respondent was never known as “Shaw Design Center”. Indeed the Respondent admits that the Respondent does business under a different name.

The Complainants further assert that the Respondent is not conducting any bona fide business under the disputed domain name. The Respondent, however, claims to have legitimate rights and interests in the disputed domain name because the Respondent is an authorized dealer.

Legitimate rights and interests in a disputed domain name under the Policy are only afforded to dealers of branded products under limited circumstances: namely, (i) the site is used to sell only the trademarked goods; (ii) the site accurately and prominently discloses the registrant’s relationship to mark-holder; and (iii) respondent does not try to “corner the market” in domain names that reflect the mark. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; see generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, 2.30. All the necessary requirements are not present in this case. Although the Respondent may be an authorized reseller of SHAW branded products, the Respondent neither asserts nor demonstrates that the Respondent sells only SHAW carpeting and flooring products. Accordingly, the Panel finds that the Respondent’s argument fails.

The Panel thus concludes that the Complainants have established for the purposes of this proceeding that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainants assert that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name was admittedly registered by the Respondent to market and promote SHAW carpeting and flooring products at Respondent’s location. The Respondent was undoubtedly aware of the many domain names owned by the Complainants incorporating the SHAW trademark. The Complainants, however, are not required to register as domain names every conceivable combination of expressions involving the SHAW trademark for every gTLD. It is apparent to the Panel that the Respondent has attempt to exploit an “opening” in the .biz gTLD by registering the disputed domain name.

Finally the Panel notes that very similar facts to the instant case were presented in the recent case of Shaw Industrial Group, Inc. & Columbia Insurance Co. v. Royce Southerland, WIPO Case No. 2011-1644 where the panel in that case ordered the transfer of other disputed domain names registered by the Respondent that contained the SHAW trademark. The Panel thus finds a pattern of bad faith registration. The disputed domain name does not currently resolve to an active website. However, the Panel finds that the Respondent’s passive holding of the disputed domain name under the facts of this case warrant a finding of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel finds the disputed domain name was registered and is being used in bad faith.

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 <shawdesigncenter.biz> be transferred to the Complainants.

William F. Hamilton
Sole Panelist
Dated: December 3, 2011

 

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