WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah
Case No. D2007-1368
1. The Parties
Complainant is Shaw Industries Group, Inc., Georgia, United States of America, and Columbia Insurance Company, Nebraska, United States of America, represented by Neal & McDevitt, LLC, Illinois, United States of America.
Respondent is Parth Shah, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2007. On September 17, 2007, the Center transmitted by email to Go GoD, Inc. a request for registrar verification in connection with the domain name at issue. On September 17, 2007, GoD, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 28, 2007 providing the underlying registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 3, 2007. 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 Respondent of the Complaint, and the proceedings commenced on October 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2007.
The Center appointed Frederick M. Abbott, Timothy D. Casey and M. Scott Donahey as panelists in this matter on November 22, 2007. The Panel finds that it was properly constituted. Each member of 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.
The Panel notes that the Registrar has identified “Parth Shah” as the registered owner of the disputed domain name, and that Complainant has named that person as the Respondent by an amendment to its Complaint. Respondent initially named by Complainant, “DomainsByProxy, Inc.”, is simply a registration privacy service. In these circumstances, the Panel will treat Parth Shah as Respondent.
4. Factual Background
Complainants Shaw Industries Group, Inc. and Columbia Insurance Company are related companies owned by the same corporate parent and have a common interest in the domain name at issue in this proceeding. The Panel will hereinafter refer to these parties as “Complainant”, and will not distinguish ownership of trademark rights (including registrations) as between them.
Complainant has registered the word, and word and design, trademark SHAW on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 2,291,182 (word), dated November 9, 1999, in International Class (IC) 27, covering “carpets”, claiming date of first use and first use in commerce of November 25, 1985, and; registration number 2,877,500 (word), dated August 24, 2004, in IC 19, covering “non-metal floor tiles and wooden flooring”, claiming date of first use and first use in commerce of March 31, 2001. Complainant has also registered various SHAW-formative marks on the Principal Register, including SHAW HARDWOODS, registration number 2,587,494, dated July 2, 2002, in IC 19, covering “wood flooring”, and claiming date of first use and first use in commerce of December 1, 1999. Other SHAW-formative registrations on the Principal Register include SHAW LAMINATES, SHAW TILE, SHAW INNOVATION and SHAW CONTRACT. (Complaint, Annex C)
Complainant has registered a substantial number of domain names that incorporate the SHAW marks, including and (Complaint, Annex D). Complainant operates a commercial Internet website at “www.”. (Panel visit of December 5, 2007)
Since as early as 1985, Complainant has used the SHAW and SHAW-formative marks in connection with the promotion and sale of carpeting and other flooring goods directly to the consumer. Complainant has spent millions of dollars advertising its products under the SHAW marks, and is a leading U.S. carpeting and flooring company. (Complaint)
According to the Registrar’s Verification, Respondent Parth Shah is registrant of the disputed domain name, . According to that report, the record of registration for the disputed domain name was created on February 11, 2007.
Respondent has used the disputed domain name to direct Internet users to a website the homepage of which is headed “Home Improvement Help”. Prominently displayed along the left-hand border of the homepage is the statement “Visit Our Sponsors”, with a list of companies following, including “Custom Order Online”, “Hurd Windows and Doors” and “Masonite”. An “About Us” section of the homepage refers to free research resources for home improvement, with links to those resources, including information concerning window-related products, “Decks” and “Decking”. Clicking through on the link for “Custom Order Online”, by way of illustration, connects an Internet user to various boxes, one of which is labeled “EasyDeck Decks”, and one of which is labeled “Flooring”. Clicking through on “EasyDeck Decks” leads to promotion and ordering information for the EasyDeck product line. Clicking through on “Flooring” leads to an announcement that the proprietor is “currently seeking vendors for this product line”, and inviting contact from interested vendors. (Complaint, Annex E and Panel visit of December 5, 2007)
The Registration Agreement in effect between Respondent and GoD, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant asserts that it is the holder of rights in the trademark SHAW and various SHAW-formative marks, which it refers to as the SHAW Marks, based on long use in commerce and as evidenced by registration at the USPTO.
Complainant argues that the disputed domain name is confusingly similar to the SHAW Marks. Complainant contends that the mere addition of the term “flooring” to the SHAW mark does not differentiate the domain name from the mark. To the contrary, Complainant argues, because the added term specifically refers to Complainant’s line of business, that this strengthens the likelihood of Internet user confusion.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent has not registered any SHAW-formative mark, and that there is no evidence that Respondent has been commonly known by the disputed domain name. Complainant argues that Respondent did not make a bona fide offer of goods or services prior to notice of the dispute, and is not making legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent is “blatantly using the domain names [sic] with intent for commercial gain to misleadingly divert consumers”. Complainant argues that Respondent is not authorized by Complainant to use the SHAW Marks in any domain name. Complainant indicates that Respondent likely registered and is using the disputed domain name deliberately to divert Internet users to Respondent’s website.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith, in particular by attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website. Complainant notes that Respondent must have been aware of its well-known trademark when it registered the disputed domain name, and further notes that there is no disclaimer of affiliation with Complainant on Respondent’s website. Complainant indicates that Respondent presumably obtains revenues from sponsors listed on its website for click-throughs by confused Internet users. Complainant notes that since it has registered a large number of variations of its marks as domain names, Respondent must have taken considerable effort to successfully find an open variation intended to confuse Internet users.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The case file transmitted by the Center to the Panel includes a courier tracking record showing that documents in connection with this proceeding were successfully delivered to the address of Respondent indicated in its record of registration for the disputed domain name. The Center also transmitted notifications to Respondent by e-mail, and the records of the Center do not indicate any problem in the delivery of those messages. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the owner of registrations for the trademark SHAW and various SHAW-formative marks on the Principal Register of the USPTO (see Factual Background supra). Such registrations establish on behalf of Complainant a presumption of validity and ownership rights in those trademarks under U.S. law. Complainant has used the SHAW trademarks in commerce in the United States for a substantial period of time, with one registration of the SHAW mark dated November 9, 1999. Complainant has established rights in the SHAW trademark. The Panel notes that those rights predate Respondent’s registration of the disputed domain name on February 11, 2007.
The disputed domain name, , directly incorporates Complainant’s trademark and adds the term “flooring” (following a hyphen) to that term. Complainant’s trademark is registered in at least two classes of goods covering flooring material, and Complainant is actively in the business of promoting and selling “flooring”. The addition of “flooring” to Complainant’s SHAW trademark does not distinguish the disputed domain name from the trademark. By specifically identifying Complainant’s line of products, the additional term may well promote Internet user confusion between the mark and the disputed domain name because Internet users would expect Complainant to use its mark in connection with its line of products. The addition of the generic top level domain (gTLD) identifier “.info” does not distinguish the disputed domain name from Complainant’s mark for purposes of the Policy. The Panel determines that the disputed domain name is confusingly similar to Complainant’s SHAW trademark.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its SHAW trademark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent is using Complainant’s distinctive SHAW trademark in the disputed domain name to direct Internet users to a website offering a variety of home improvement-related products, including decking and flooring. Complainant is not one of Respondent’s identified vendors. There is no evident business or consumer information relationship between Respondent’s website and Complainant’s branded products that would in any sense appear to justify Respondent’s incorporation of Complainant’s mark in the disputed domain name. The only evident purpose for using Complainant’s distinctive trademark is to draw Internet users to Respondent’s website. This does not constitute making bona fide use of Complainant’s mark for the offering of goods because there is no reasonable connection to Complainant or its goods. Respondent’s use of the disputed domain name is plainly not “noncommercial”, and it is not “fair use” in any generally accepted sense of that term as a matter of trademark law. Respondent is not using Complainant’s mark for comparative advertisement, or to fairly describe products or services, or for other generally accepted fair use purposes. Respondent is merely using Complainant’s mark to misleadingly attract Internet users to its website.
Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 or of a product or service on your website or location” (id., paragraph 4(b)(iv)).
Respondent has used the disputed domain name, which is confusingly similar to Complainant’s trademark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Although Complainant’s trademark is used in Respondent’s domain name, Complainant’s products are not listed on Respondent’s website, although similar products of third-party vendors are so listed. There is no evident connection between Complainant’s distinctive trademark and Respondent’s website, except that Complainant’s trademark is being used by Respondent to attract Internet users to its website. Respondent is presumably receiving some form of compensation for click-throughs to third party vendors listed on and linked to its website. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy.
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 Complainant.
Frederick M. Abbott
Presiding Panelist
Timothy D. Casey
Panelist
M. Scott Donahey
|Panelist
Dated: December 6, 2007
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