WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group, Inc. and Columbia Insurance Company v. Click Consulting Ltd.
Case No. D2006-1422
1. The Parties
The Complainants are Shaw Industries Group, Inc. and Columbia Insurance Company of Dalton, Georgia, and Omaha, Nebraska, United States of America, respectively, represented by Neal & McDevitt, LLC, Northfield, Illinois, United States of America.
The Respondent is Click Consulting Ltd., Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names and are registered with DomainDoorman LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November�7,�2006. On November�9,�2006, the Center transmitted a request for registrar verification by email to DomainDoorman LLC in connection with the domain names at issue. On November�10,�2006, DomainDoorman LLC transmitted its verification response by email to the Center confirming that the registrant was Click Consulting Ltd. and providing the contact details for the administrative and technical contact. The Center verified that 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�22,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�7,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11,�2006.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on December�20,�2006. 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
Shaw is a leading carpeting and flooring company in the United States of America and abroad.
The relevant trademarks at issue in this proceeding are SHAW and various formulations thereof. They are used in connection with carpeting and flooring related goods and products. Attached to the Complaint was a list of such marks together with the corresponding applications and registrations.
The Complainant Columbia Insurance Company is the sole and exclusive owner of the United States of America registered trademarks SHAW (and Design), U.S. Reg. No. 1444248, SHAW U.S. Reg. No. 2291182, and SHAW U.S. Reg. Nos. 2877500. In addition, the Complainants use, own and have owned for numerous years various applications and registrations for the SHAW marks and various formulations thereof.
Since at least 1985, the Complainant Shaw Industries Group, Inc. has used some of the SHAW marks and names in connection with carpeting and flooring related goods provided directly to consumers. The Complainants allege that they have spent substantial sums of money to display, promote and advertise the SHAW marks.
The Respondent registered the domain names, and > on June�28,�2006, and August�29,�2006, respectively.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that:
The disputed domain names and registered by the Respondent are identical and confusingly similar to the marks held by the Complainants in which the Complainants enjoy substantial goodwill.
Shaw Industries Group, Inc. owns and has registered many domain names containing the SHAW marks, including and . Attached to the Complaint as Annex E was a list of domain names owned by Shaw Industries Group, Inc.
The Respondent has no rights or legitimate interests in respect of the domain names. The Respondent is not listed as an owner of any United States of America trademark containing SHAW formulations. Nor is there any evidence that it owns or has applied for any U.S. trademark registrations. There is no evidence that the Respondent has been commonly known by the domain names, even if it has acquired no trademark or service mark rights.
Nor is there any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to them in connection with a bona fide offering of goods or services. Rather, the Respondent is using the domain names with intent for commercial gain and to misleadingly divert consumers.
The Respondent employs “Shaw” of various formulations thereof and has website links that divert the consumer to websites that are not associated with the Complainants. In doing so, it lists products of the Complainants’ competitors. This diverts Internet traffic from the disputed domain names to websites containing sponsored links.
The Respondent is attempting to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or a product or service listed on the Respondent’s websites.
The Respondent has no affiliation with the Complainants, yet on its websites, it refers to various formulations of the SHAW marks and is using them in an unauthorized manner. The Respondent’s websites also give the impression that it is affiliated with the Complainants in some fashion. There are also links to some of Complainants’ competitors. There is no statement on the websites making it clear that they are not associated with the Complainants. Rather, the websites are designed to look like legitimate websites for a flooring and carpet company and appear to present users with search engine results. Thus, they may derive revenue from “click-throughs” from confused web users who were looking for one of the Complainants’ websites or information about the Complainants. This creates a likelihood of confusion with the Complainants’ marks and on previous authority amounts to bad faith.
In short, the use of the Complainants’ marks simply for the purpose of driving traffic to the Respondent’s websites and to other websites is not a bona fide attempt to offer goods and services to the public. Such conduct constitutes bad faith under paragraph 4(b)(iv) of the UDRP Policy.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph�4(a) of the Policy, that:
(i) the contested domain name 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants claim and the Panel has verified to its satisfaction that the Complainant Columbia Insurance Company is the owner of the SHAW marks and that the Complainant Shaw Industries Group, Inc. is the user of some of the SHAW marks in connection with carpeting and flooring related goods. The Panel also verified that the Complainants operate websites at “www.” and “www..”
The domain names in dispute, and , are confusingly similar to the Complainants’ trademarks. The disputed domain names differ from the Complainants’ trademark only in that the disputed domain names add the words “covering” or “coverings”; both words could be expected to be associated with flooring products. The addition of such words creates a word that is confusingly similar to the SHAW marks.
The contested domain names are confusingly similar to marks in which the Complainants have rights. The Complainants have fulfilled the requirements of paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants must prove that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainants have proven that the Respondent has no rights to the domain names. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
The Respondent has no connection with the Complainants, nor has it been licensed or authorized by the foregoing to use the disputed domain names. The disputed domain names are not the name of the Respondent nor are the domain names similar or connected with the name under which the Respondent Click Consulting Ltd. holds the domain names’ registrations. Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain names.
The Panel agrees with the Complainants therefore that the Respondent has no rights or legitimate interests in the disputed domain names within the meaning of paragraph�4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It must be shown that the domain names at issue have been registered and are being used in bad faith.
The Respondent’s domain names serve to divert users to websites containing sponsored links. By exploiting the addition of the words “covering” and “coverings” to the Shaw name and the SHAW marks, the Respondent has misled consumers by diverting Internet traffic away from the Complainants’ websites at “www.” and “www.” in an attempt to generate business by luring Complainants’ customers to the Respondent’s own websites.
In the circumstances, the Panel finds that the domain names were registered and are 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 domain names and be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Sole Panelist
Dated: January 3,�2007
Full & Egal Universal Law Academy