WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Shaw Industries Group, Inc., Columbia Insurance Company v. Domain Discreet/Sarah Raudales, Arizona Vacation Rental Homes Case No. D2008-1251
1. The Parties
Complainants are Shaw Industries Group, Inc. Dalton, Georgia, United States of America, and Columbia Insurance Company, Omaha, Nebraska, United States of America represented by Neal & McDevitt, LLC, United States of America.
Respondents are Domain Discreet of Funchal, Madeira Portugal, Sarah Raudales, Arizona Vacation Rental Homes, Flagstaff, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 18, 2008, R transmitted by email to the Center its verification response disclosing 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 Complainants on August 19, 2008 providing the registrant and contact information disclosed by the registrar, and inviting them to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 19, 2008. 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 Respondents of the Complaint, and the proceedings commenced on August 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2008. On August 23, 2008 the Center received an email communication from Respondent Arizona Vacation Rental Home's contact stating:
“We are a retailer exclusively of shaw carpets, we did choose a domain for people searching for that product in our area to find us and get information about the shaw carpets. We are in the process of building our website now. We bought it legally, are using it because it represents what we offer as a flooring store and helps clients find the shaw carpet showroom in this area. I don't understand the big uproar about this. If the name was so important to them, why didn't shaw have a claim on it? I'm betting they could afford the $8.95. per year if it was that serious that no one else use it. It applies to our business directly. We did buy it legally. We plan to use it. I will appreciate any input you have on this.”
In response to this communicaton, Complainants requested from Arizona Vacation Rental Homes its full name, the name of its dealership and its contact information. Respondents failed to respond.
The Center acknowledged receipt of Respondent's email communication and requested Respondent Arizona Vacation Rental Homes to confirm if the communication could be regarded as its complete Response. The Center further stated that if it received such confirmation the communication would be regarded as such. Respondent failed to respond to the Center's inquiry and did not file any further Response. Accordingly, on September 12, 2008, the Center advised Respondent that because the date for responding had lapsed, the Center would proceed with the appointment of an administrative Panel and the consideration or otherwise of any late submission of Response would be left to the discretion of the Panel (on appointment). Again, Respondents filed no further Response.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 22, 2008. 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 Columbia Insurance Company (“Columbia”) is the sole and exclusive owner of various United States trademark registrations consisting of the SHAW mark, for example: SHAW (and Design), U.S. Reg. No. 1,444,248, which issued on June 23, 1987 and has been in use since at least as early as November 25, 1985; SHAW, U.S. Reg. No. 2,291,182, which issued on November 9, 1999 and has been in use since at least as early as 1985; and SHAW, U.S. Reg. No. 2,877,500 (collectively the “SHAW Marks”). Complainants also own and have been using numerous other United States trademark applications and registrations incorporating the SHAW Mark for carpeting and flooring related goods and products, including: COUTURE BY SHAW (and Design), U.S. Reg. No. 2,547,524, SHAW (and Design), U.S. Reg. No. 2,692,764; SHAW (and Design), U.S. Reg. No. 1,444,248, SHAW CONTRACT, U.S. Reg. No. 2,811,298; SHAW CONTRACT GROUP, U.S. Reg. No. 3,191,367, SHAW HOSPITALITY, U.S. Reg. No. 2,675,008; SHAW RUGS, U.S. Reg. No. 2,686,164; and SHAW S/C, and U.S. Reg. No. 2,881,343.
In addition, Shaw owns a host of domain names that include: , ; ; ; and (the SHAW Domain Names).
5. Parties' Contentions A. Complainants
The Domain Name is confusingly similar to the SHAW Marks insofar as it contains the SHAW Marks in their entirety. The addition of “carpet” and “info” do not distinguish the Domain Name from the SHAW Marks. Respondent has no rights or legitimate interests in the Domain Name. Respondent registered and is using the Domain Name in bad faith. B. Respondents
Respondents did not file a reply to Complainants' contentions other than as stated above in section 3.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004. Insofar as Respondents have defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondents. Nonetheless, paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have 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
Complainants have established rights in the SHAW Marks from use and registration on the Principal Register of the United States Patent and Trademark Office (“PTO”). Those registrations are entitled to a presumption of validity, which Respondents have not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261. Thus, the principal issue here is whether, taken as a whole, is confusingly similar to the SHAW Marks. The Panel determines that it is. The Domain Name incorporates the entirety of the SHAW Marks. See, e.g., Dolce International Holdings, Inc. v. Dolce Hotels,WIPO Case No. D2005-0269 (holding is confusingly similar to the family of DOLCE marks for use in connection with hotels and resort related services); The Boston Consulting Group, Inc. v. Rodney Thomas,WIPO Case No. D2005-0259 (holding is confusingly similar to “the Boston Consulting Group”).
The addition of “.info” to the SHAW Marks does not eliminate the confusing similarity. See Microsoft Corp. v. Amit Mehrotra,WIPO Case No. D2000-0053. Likewise, Respondents' use of the descriptive word “carpets” in the Domain Name does not avoid confusion. To the contrary, it increases the likelihood of confusion to consumers because the word “carpets” is descriptive of the products advertised and sold by Complainants and promoted by Respondents using the Domain Name. As a result, an Internet user interested in a SHAW brand carpet may well be confused into believing that Respondents' website is related to or affiliated with Complainants.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
It is uncontested that Complainants have not licensed or otherwise authorized Respondents to use the SHAW Marks e.g., in a domain name. Insofar as Complainants have made a prima facie showing that Respondents lack rights or legitimate interests to the Domain Name (Spencer Douglass, MGA case, supra),WIPO Case No. D2004-0261, this shifts the burden to Respondents to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Complainants' facts as set out above without contrary evidence from Respondents are sufficient to permit a finding in Complainants' favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007.
The Panel therefore holds that Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product.”
These criteria are not exclusive and the panel may conclude that Respondents acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, that Respondents have registered and used the Domain Name in bad faith. Respondents have registered and used a domain name that is confusingly similar to the SHAW Marks in advertising and selling goods that overlap with those of Complainants', namely, various kinds of flooring materials and covering.
Respondents either knew, or should have known, of the SHAW Marks at the time they registered the Domain Name insofar as the SHAW Marks were being used and/or registered with the PTO in connection with similar and competing services as those promoted on Respondents' website. Respondents surely had actual knowledge of the SHAW Marks because they are advertising Complainants' (SHAW brand) products on their website associated with the Domain Name. Despite this knowledge, Respondents selected a domain name that not only incorporates the SHAW Marks in their entirety, but also, is similar to the SHAW Domain Names (, , , ). Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384. To have proceeded with registration of the Domain Name knowing of Complainants' rights in the SHAW Marks and SHAW Domain Names demonstrates Respondents' bad faith. See, America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004 (Respondent's knowledge of Complainant's mark before he registered the disputed domain name constitutes bad faith, especially where Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name); see also, Educational Testing Service v. Park Jeong Foreign Language Institute,WIPO Case No. D2001-1064; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Respondents' bad faith is also demonstrated by the fact that Respondents are using the Domain Name in connection with a website that offers competing products to those of Complainants and, thus, Respondents are intentionally attempting to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the SHAW Marks as to the source, sponsorship, affiliation, or endorsement of the website. Respondents accomplish this through the structure of their website which (1) provides sponsored links to companies that directly compete with Complainants in the sale of flooring and floor coverings, and (2) launches a variety of “pop-up” advertisements.
Finally, it bears noting that Complainants own numerous domain names, many of which contain the SHAW Marks (e.g., the SHAW Domain Names). It is obvious that Respondents simply devised a slightly different rendition of the SHAW Domain Names (e.g., using “.info” instead of “.com”, adding descriptive term “carpets”) when registering the Domain Name. In view of the fact that (1) it is uncontested Complainants did not give Respondents the right to use the SHAW Marks, (2) the Domain Name is virtually identical to the SHAW Domain Names, and (3) Respondents could have chosen a noninfringing domain name for its website, the Panel finds these circumstances are further evidence of bad faith.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 Complainants.
Harrie R. Samaras
Sole Panelist
Dated: October 6, 2008
Full & Egal Universal Law Academy