WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group Inc. Columbia Insurance Company v. Adminstrator, Domain
Case No. D2007-0583
1. The Parties
1.1 The Complainants are Shaw Industries Group Inc., Dalton, Georgia, and Columbia Insurance Company of, Omaha, Nebraska, in the United States of America, and are both represented by Neal & McDevitt, LLC.
1.2 The Respondent is Adminstrator, Domain, of PO Box 558, West Bay, Grand Cayman, Cayman Islands.
2. The Domain Name and Registrar
2.1 The disputed domain name, , is registered with Network Solutions, LLC.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2007. On April 18, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 19, 2007, Network Solutions, LLC 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 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”).
3.2 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 May 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2007.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 7, 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
4.1 One of the Complainants, Shaw Industries Group Inc, offers goods and products in connection with carpeting and flooring. The other Complainant, Columbia Insurance Company is a company within the same corporate group as Shaw Industries Group Limited. The Complainants are the proprietors of various US registered trademarks that incorporate the word “SHAW”. Shaw Industries Group Inc has also registered numerous domain names incorporating the name SHAW, including for example, , and .
4.2 The identity of the Respondent is unknown.
4.3 The full WHOIS details provided for the Respondent are as follows:
Registrant:
Adminstrator,
Domain
PO Box 588
null
West Bay, Grand Cayman WB,
KY
Administrative Contact, Technical Contact:
Adminstrator,
Domain
service@
PO Box 588
null
West Bay, Grand Cayman WB,
KY
Phone: + 1.3459251600
Fax: null
4.4 The domain name (the “Domain Name”) was first registered on February 11, 1998.
4.5 At least in recent times the Domain Name has been linked to a website that bears all the hallmarks of a domain “parking service”. It would appear that in or about March 2007 the links on the website for the most part linked to other websites which offered for sale rugs and carpets. However, by June 2007, and as at the date of this decision, the links have become more varied, linking to pages that appear to be operated by “Domain Sponsor” and which in turn provide “sponsored links” on subjects ranging from “travel” and “business” to “entertainment”.
5. Parties’ Contentions
A. Complainant
5.1 The Complainants’ factual and legal contentions can be summarised as follows.
Identical or Confusingly Similar
5.2 The Complainants provide details of a large number of US trademarks that incorporate the word “shaw”. However, particular reference is made in the Complaint to the following trademarks:
(i) the SHAW (and Design), US registration No. 1444248 for “residential and commercial carpet, rugs, carpet padding, carpet samples, modular carpet tile and tile” in class 27 and issued on 23 June 1987;
(ii) SHAW, US registration No. 2291182 for “carpets” in class 27 and issued on 9 November 1999; and
(iii) SHAW, US registration No. 2877500 for “non-metal tiles and wooden flooring” in class 19 and issued on August 24, 2004.
5.3 The Domain Name is said to be confusingly similar to the “SHAW Registrations” and “SHAW Marks”. The Complainants allege that the fact that the Respondent has a domain name that contains the marks owned by the Complainants “leads to the inevitable conclusion” that the Respondent’s domain name is confusingly similar to a trademark in which the Complainants have rights. Further, the addition in the Domain Name of the term “international” is said to do “nothing to differentiate the domain name registration from the registered SHAW Marks and Registrations”.
Rights or legitimate interests
5.4 The Complainants assert that the Respondent has no right or legitimate interest with respect to the use of the Domain Name by virtue of the fact that the Respondent is not listed as an owner of any United States trademark “containing any SHAW formatives” nor has the Respondent applied for any such registrations. The Complainants add that there is no evidence that the Respondent’s use of the Domain Name is a bona fide offering of goods and services. Instead, it is claimed that the Domain Name is used to mislead and divert consumers.
Registered and Used in Bad Faith
5.5 The Complainants contend that this case falls within the scope of paragraph 4(a)(iii) of the Policy. In particular, the Complainants allege that:
(a) as a result of various advertising, marketing and promotional efforts since 1985, “Shaw is one of the United States’ leading carpeting and flooring companies and is also well known internationally”.
(b) by using the Domain Name, the Respondent has intentionally attempted to attract internet users to the Respondents website by “creating a likelihood of confusion with the Complainants’ Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website”. The Respondent “must reasonably have been aware” of Shaw and consequently has acted in bad faith. In support of its position, the Complainants rely upon the decision in Veuve Clicquot Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co., WIPO Case No. D2000-0163;
(c) the Respondent’s website contains numerous links to websites of various flooring and carpet companies and there is nothing within the offending website that makes it explicitly clear that it is not associated with the Complainants; and
(d) the websites “appears to be designed to present users with search engine results” and “potentially derive revenue [for the Respondent] from ‘click-throughs’ from confused web users who were looking for a Shaw website or information about Shaw”.
5.6 The Complainants also contend that the Respondent has gone “to the trouble of devising another variation [of a domain name that incorporates the SHAW name] not contemplated by the Complainants”. The Complainants rely in this respect upon the decision in Shaw Industries Group Inc., Columbia Insurance Company v Marathon Triad, WIPO Case No. D2006-1408.
B. Respondent
5.7 The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining this dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Nevertheless, even in the absence of a Response, it remains incumbent on the Complainants to make out their case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Panel will address each of these elements in turn.
A. Identical or Confusingly Similar
6.3 The Complainants, in their submissions, have put sufficient evidence before the Panel to support their contention that they are the owners of various US registered trademarks that incorporate the “Shaw” name. These include US registered trademarks nos. 2291182 and 2877500 for the word “SHAW” in classes 27 and 19 respectively.
6.4 The most sensible reading of the Domain Name is that it incorporates and combines the two words “shaw” and “international”. The Complainants maintain that where, as here, a domain name incorporates a registered trademark in its “entirety”, then this leads to the “inevitable conclusion” of confusing similarity. The Panel believes that this statement goes too far. Whether or not there is confusing similarity in any particular case will always depend upon the nature of the mark and the exact manner in which it is incorporated.
6.5 However, the Panel does accept that there is confusing similarity between the Domain Name and two word marks relied upon in this case. The only difference between the Domain Name and these trademarks (once the “.com” TLD is discounted) is the word “international”. The Panel accepts that the addition of this descriptive word does little to distinguish the Domain Name from the relevant trademarks.
6.6 There is a slight complication in this case that each of these two trademarks post-date the date of the registration of the Domain Name. However, as is recorded at paragraph 1.4 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions (supported inter alia by the cases cited therein), the consensus view amongst panelists is that:
“Registration of a domain name before a complaint acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights”.
6.7 Further and in any event, the Complainants rely upon a third trademark that pre-dates the date of registration i.e. registered trademark 1,444,248. That trademark is not a simple word mark but takes the form of a design. However, a prominent, if not the predominant, element of that mark is the word “Shaw” in a cursive script. In the circumstances, the Panel also finds that the Domain Name is confusingly similar to this mark.
6.8 In the circumstances, the Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.9 In this case the Complainants assert (and the Respondent does not deny) that the Respondent has no US trademark registrations that uses or incorporates the “Shaw” name. It is unclear why the Complainants have limited their assertions here to the US only, particularly given that registered address given for the Respondent is not in the United States of America but in the Cayman Islands. Nevertheless, the Panel accepts that given the use made of the Domain Name in this case, it is extremely unlikely that the Respondent is the owner of any registered trademark right.
6.10 Similarly, although it is not expressly alleged, it is clear that the Respondent has not been authorized by the Complainant to use the “Shaw” name in any domain name.
6.11 Further, the Complainants contend and the Panel accepts that the Respondent has not been commonly known by the “Shaw” name. Instead, it is alleged that the Domain Name is being used by the Respondent to generate “click through” revenue. Again the Panel accepts that this is correct given that, as has already been described earlier in this decision, the websites that have operated at various times from the Domain Name, bear the tell tale signs of being generated by a domain name parking service.
6.12 There is nothing per se illegitimate in the use of a domain parking service. However, for the reasons that are described in greater detail under the heading “bad faith” below, the Panel believes that the Domain Name was chosen because of its similarity to a name in which the Complainants had an interest. This was done in the hope and expectation that internet users searching for the Complainants (and Shaw Industries Group Inc in particular) would instead come across the Respondent’s site. Such use of a domain name does not provide a legitimate interest under the Policy (see for example the decision of the three person panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.13 The Panel, therefore, finds that the Respondent lacks rights or legitimate interests in the Domain Name and that the Complainants have made out paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.14 Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that demonstrate evidence of bad faith in the registration and use of a domain name. These include, the following:
“(iv) by using the domain name, you [i.e. the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website”.
The Complainants contend that the circumstances of paragraph 4(b)(iv) of the Policy arise in this case.
6.15 As has already been described, the Respondent in this case has used the Domain Name in conjunction with a domain parking service operated by “Domain Sponsor”. “Domain Sponsor”, appears then to have created a website page with various advertisements and “sponsored links”. A parking service provider will usually be paid a sum “per click through” when internet users click on such advertisements and links and will often pass on an element of that income to the owner of the domain name. The Panel therefore has little difficulty in concluding that this is what has occurred in this case.
6.16 The Panel accepts that it is bad faith use of a domain name within the scope of paragraph 4(b) of the Policy to register that domain name with such a parking service in the hope and expectation that the similarity between the domain name and the trademark of another entity will result in internet users searching for that other entity arriving at the site. An example of another case where use of the Domain Sponsor parking service used by the Respondent was held to be bad faith use for the purposes of the Policy is Lockton Companies, Inc. v. Chabbewalweb, WIPO Case No. D2005-1330.
6.17 If the Complainants are to succeed on this basis, it is crucial that they show that the Domain Name was registered by the Respondent in this case with knowledge of the Complainants’ (and in particular of the Shaw business’) interest in the “Shaw” name.
6.18 In this respect the Complainants contend that the “Shaw” name is “well-known worldwide” as a result of “the millions of dollars complainants have expended promoting, selling and advertising SHAW products … throughout the world”.
6.19 No further evidence is supplied to support that assertion nor is there any attempt to expressly address the issue of the reputation and level of fame of the “Shaw” name in 1998; i.e. the year in which the Domain name was registered. However, the Complainants do expressly assert that the “Shaw” name has been “prominently used” since 1985. Therefore, in the absence of any assertion or evidence to the contrary from the Respondent, the Panel is prepared to accept that the name had gained a significant reputation by 1998.
6.20 The Complainants also rely upon the fact that the website operating from the Domain Name has at times had links to competitors of the Complainants.
6.21 Although in some cases there may be questions as to how such links are generated, once again in the absence of any explanation from the Respondent as to how these links were generated, the Panel is prepared to accept that it had some involvement in the selection process.
6.22 Lastly, there is the very nature of the Domain Name itself. There is no obvious “generic” meaning of the words “shaw” and “international“ in combination. The Domain Name is at least suggestive of some business that to some degree or other trades under the “Shaw” name.
6.23 In the circumstances, the Panel accepts that the Complainants have shown on the balance of probabilities that the Respondent was aware of the Shaw business at the time of registration of the Domain Name.
6.24 There is, unfortunately, no evidence before the Panel as to how the Domain Name has been used by the Respondent in the 9 years or so that have passed between the date of registration of the Domain Name and its use in conjunction with a domain name parking service. Nevertheless, the Panel is prepared to infer from the recent use of the Domain Name (and in the absence of any evidence or assertion by the Respondent to the contrary) that it was with this or a similar bad faith use in mind that the Domain Name was originally registered.
6.25 Accordingly, the Panel finds that the domain name has been registered and is being used by the Respondent in bad faith and that the Complainants have made out paragraph 4(a)(iii) of the Policy.
6.26 There are two other factors in this case that the Panel considers it worthwhile to mention. Whilst the Panel has not based its decision on these two factors (and had it done so, the Panel would have put these to the Respondent for comment), it notes that they tend to support the Panel’s finding of bad faith.
6.27 The first factor is that it is apparent from the WHOIS details provided for the Domain Name that the Respondent has gone to some lengths to disguise its true identity. No person or company is registered as the owner of the Domain Name and the address given is simply a PO Box number in the Cayman Islands.
6.28 The second factor is that the Panel has become aware of at least one other example of a person or entity with the same registration details as the Respondent having been found by a panel to have registered a domain name in bad faith. The case in question is E, Inc v. Domain Administrator WIPO Case No. D2006-1195. The full WHOIS address details for the registrant in that case are set out in footnote 1 to that decision. Whilst the PO Box number in those details is slightly different, the fact that the same telephone number is used, indicates at least some connection between the registrants.
7. Decision
7.1 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 Shaw Industries Group Inc.
Matthew S. Harris
Sole Panelist
Date: June 21, 2007
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