WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group, Inc., Columbia Insurance Company v. Marathon Triad
Case No.�D2006-1408
1. The Parties
The Complainants are Shaw Industries Group, Inc., Daltan, Georgia, United�States�of�America and Columbia Insurance Company, Omaha, Nebraska, United�States�of�America, represented by Lisa A. Iverson, United�States�of�America.
The Respondent is Marathon Triad, c/o Richard Katnik, Santa Ana, California, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom,�Inc. dba D, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on November�6,�2006. On November�6,�2006, the Center transmitted by email to eNom, Inc. dba D, Inc. a request for registrar verification in connection with the domain name at issue. On November 15, 2006,, eNom,�Inc. dba D, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November�22,�2006. 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”), 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 November�27,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was November�17,�2006. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default on December�19.
The Center appointed Lynda�J.�Zadra-Symes as the sole panelist in this matter on January�10,�2007. 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 Shaw Industries Group, Inc. (“Shaw”) is one of the United States’ leading carpeting and flooring companies. Since at least 1985, Complainant Shaw has used the mark SHAW in connection with carpeting and flooring related goods provided directly to the consumer. Together with Complainant Columbia Insurance Company, Complainant Shaw owns several U.S. trademark registrations and applications for the mark SHAW, including the following:
U.S Reg. No.�1444248, issued June�23,�1987, for SHAW (and Design), for use in connection with residential and commercial carpet, rugs, carpet padding, carpet samples, modular carpet, modular carpet tile and tile;
U.S. Reg. No.�2291182, issued November�9,�1999, for SHAW, for use in connection with carpets;
U.S. Reg. No.�2877500, issued August�24,�2004, for SHAW, for use in connection with non-metal floor tiles and wooden flooring.
In addition to the above registrations, Complainants also own numerous other registrations and applications for variations of the mark SHAW for use in connection with carpeting and flooring related goods and products.
Because U.S. Reg. Nos. 1444248 and 2291182 have been in continuous use for five consecutive years subsequent to the date of registration, and are still in use in commerce, they are deemed incontestable under United States trademark law, � 15 U.S.C. � 1065.
In addition to the above-referenced trademark registrations, Complainant Shaw also owns and has registered numerous domain names containing the mark SHAW, including the domain name , and .
5. Parties’ Contentions
A. Complainants
Complainants contend that the domain name is confusingly similar to the trademark SHAW, in which the Complainants have rights, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed on their claim, Complainants must demonstrate that all of the elements enumerated in Paragraph�4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
Paragraph�15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainants’ SHAW trademark in which Complainants own U.S. trademark registrations claiming use since�1985. The domain name incorporates Complainants’ registered SHAW trademark in its entirety. The addition of the descriptive term “carpet mill outlet” does not in the Panel’s view avoid a finding of confusing similarity in the present case.
The Panel finds that the first criterion has been met.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding.
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. Further, there is no evidence that the Respondent has been commonly known by the domain name.
At the time Complainants filed their initial Complaint, Respondent’s domain name resolved to a page offering carpet products under the name SHAW, but used the SHAW mark in a manner not authorized by Complainants. Currently, the domain name resolves to a blank page with the notice “under construction” displayed on the top of the blank page. Thus, there is no evidence that Respondent is using the mark in a bona fide manner.
The Panel finds that the Respondent lacks rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or 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 the Complainant, for valuable consideration in excess of the 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 website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The registration of the disputed domain name took place on February�7,�2005, and was subsequently transferred to the Respondent who is a dealer of Shaw carpets. Upon considering the numerous variations of Complainants’ SHAW mark registered as domain names by the Complainants, including , it is the view of this Panel that the person who registered the domain name prior to transferring it to Respondent, went to the trouble of devising another variation not contemplated by the Complainants. Complainants contend that dealers are never authorized to use SHAW, or any formative thereof, as part of a domain name and that Respondent is not authorized to use Complainants’ marks in or as a domain name. Respondent’s use of Complainants’ mark is not reasonably necessary for Respondent to be able to resell Complainant Shaw’s carpet products. To the contrary, Respondent could use any domain name for its business without using Complainants’ mark in the domain name.
By using the disputed domain name, the Panel finds that Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of Respondents’ website.
Accordingly, the Panel finds the disputed domain name to be registered and 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 domain name, be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: January�24,�2007
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