WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shaw Industries Group, Inc., Columbia Insurance Company v. freewayfloorbrokers Case No. D2008-1905 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.
Respondent is freewayfloorbrokers, Anaheim, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2008. On December 15, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 16, 2008, GoD, Inc. 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 December 18, 2008 providing the registrant and contact information disclosed by the Registrar and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on December 22, 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” or “UDRP”), 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 December 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 20, 2009.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on January 22, 2009. 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
Complainants manufacture and sell carpeting and flooring products using the SHAW trademark and various formatives of that mark.
Complainants own a number of live trademark registrations on the United States Patent and Trademark Office (USPTO) Principal Register for SHAW and related formative marks in connection with carpeting and flooring products, including but not limited to: (1) Registration No. 1,444,248 for SHAW (and Design), based on first use as early as November 25, 1985 and registered June 23, 1987; (2) Registration No. 2,291,182 for SHAW, based on first use as of November 25, 1985 and registered November 9, 1999; (3) Registration No. 2,877,500 for SHAW, based on first use as of March 31, 2001 and registered August 24, 2004. These registrations are current and incontestable as a matter of United States law under Section 15 of the Lanham Act, 15 U.S.C. § 1065.
In addition, Complainants own and have used for a number of years in connection with carpeting and flooring products registrations for various formatives of the SHAW mark, including COUTURE BY SHAW (and Design), Registration No. 2,547,524 (March 12, 2002); SHAW CONTRACT, Registration No. 2,811,298 (February 3, 2004); SHAW CONTRACT GROUP, Registration No. 3,191,367 (January 2, 2007); SHAW HOSPITALITY, Registration No. 2,675,008 (January 14, 2003); SHAW LIVING, Registration No. 3,010,847 (November 1, 2005); SHAW RUGS, Registration No. 2,686,164 (February 11, 2003); and several others.
Complainants have also registered and used the domain names ; ; ; ; and , among others.
Respondent registered the Domain Name on August 14, 2008. The Domain Name resolves to a parked site which exhibits links to many carpet, rug and flooring-related sites, some using the Shaw name and a number of them directed to Shaw competitors. 5. Parties' Contentions A. Complainant
Complainants contend that Shaw is one of the leading carpeting and flooring companies in the United States and is well-known internationally, that it has used the SHAW mark in connection with carpeting and flooring since at least as early as 1985, and that it has spent millions of dollars displaying, promoting, and advertising the SHAW marks.
Complainants contend that they own the SHAW mark and various formatives by reason of their registrations in the United States and Complainants' use of the marks over many years.
Complainants further contend that the Domain Name is confusingly similar to their SHAW marks. The addition of the words “carpet” and “for less” to the SHAW mark does nothing to differentiate the Domain Name from Complainants' marks. The addition of “.com” is an irrelevant distinction.
Complainants contend that Respondent has no right or legitimate interest in the Domain Name. There is no evidence that Respondent has been commonly known by the Domain Name or that Respondent has registered or applied to register any trademark containing the name Shaw or any formatives of that name.
Complainants contend that there is no evidence that Respondent has used or is preparing to use the Domain Name in connection with a bona fide offering of goods or services. Nor is Respondent making a legitimate noncommercial or fair use of the Domain Name. Respondent, Complainants contend, is instead using the Domain Name misleadingly to divert customers from their websites to its own for commercial gain. Respondent likely obtained the Domain Name based on its similarity to Complainants' marks in the hope that Internet users searching for Complainants' websites would come across Respondent's site. This, Complainants contend, does not provide a legitimate interest in the Domain Name under the Policy.
Complainants further contend that Respondent registered and is using the Domain Name in bad faith. Respondent has intentionally attempted to attract Internet users to Respondent's website, for commercial gain, by creating a likelihood of confusion with Complainants' marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website.
Respondent has incorporated a well-known trademark in its Domain Name, without authorization from Complainants and without having any affiliation with Complainants. The website hosts links to external websites, including websites of Complainants' competitors.
The website is “parked free” with the Registrar and contains advertising for the Registrar, which has been found to constitute evidence of bad faith.
Finally, Respondent “went to the trouble of devising another variation [of Complainants' marks] not contemplated by the Complainants,” which Complainants contend constitutes further evidence of bad faith.
Complainants request transfer of the Domain Name to Complainant Shaw Industries Group, Inc. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier to Respondent at the addresses provided in Respondent's registration information and available in the WhoIs. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainants must prove each of the following three elements of their case in order to obtain the requested relief:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent's Domain Name was registered and is being used in bad faith.
The Panel considers the elements in order. A. Identical or Confusingly Similar
Complainants clearly possess legal rights in the SHAW trademarks by reason of their longstanding use of the marks in commerce and by registrations of the marks in the United States on the Principal Register of the USPTO. See Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media,WIPO Case No. D2007-1426; Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503.
The Panel finds that the Domain Name, , is confusingly similar to Complainants' SHAW trademarks. The Domain Name incorporates Complainants' SHAW trademark in its entirety with the correct spelling. Complainants' basic trademark and the distinctive, dominant component of the Domain Name are the same.
The addition to Complainants' SHAW trademark of the words “carpet for less” does not obviate the likelihood of confusion. “Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 2005); Pfizer, Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446. See Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Eastman Chemical Company. v. Manila Industries, Inc., NAF Claim No. FA 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Claim No. FA 444468. Prior UDRP panels have found the likelihood of confusing similarity has not been avoided by the addition of descriptive content even where entire words have been added to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677 (COCA-COLA and “cocacoladrinks” held confusingly similar); America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004, citing Sporty's Farm LLC. v. Sportsman's Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo! Inc. v. CPIC NET and Syed Hussain,WIPO Case No. D2001-0195; America Online, Inc., v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055. The words “carpet for less” are generic, descriptive and non-distinctive here and do not diminish likelihood of confusion with Complainants' trademarks.
Moreover, use of the word “carpet”, a product strongly associated with Complainants' trademarks, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainants' marks. See Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li,WIPO Case No. D2004-0296 (descriptive term “tires” in increases confusion); Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. v. Cupcake City and null John Zuccarini a/k/a John Zuccarini,WIPO Case No. D2001-0235 (addition of “sports” and “weather” to name of newspaper caused confusion); Capital Broadcasting Company, Inc. v. Private,WIPO Case No. D2000-1609 (addition of “weather” heightened confusion with television call letter mark).
Complainants have established confusing similarity of the Domain Name and Complainants' trademarks, the first element of their case. Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainants make a sufficient prima facie case that Respondent possesses no rights or legitimate interests in the Domain Name. Respondent has no apparent connection to Complainants, and Complainants have not authorized Respondent to use the SHAW trademarks. Sanrio Company Ltd and Sanrio v. Neric Lau,WIPO Case No. D2000-0172 (interests in the domain name not legitimate where there is no authorized association with trademark owner).
There is no evidence that Respondent has been commonly known by the Domain Name or that Respondent has registered or applied to register any trademark containing the name Shaw or any formatives of that name. Policy, paragraph 4(c)(ii).
Further, the evidence shows that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy paragraph 4(c)(i). The evidence of record shows that Respondent is using the SHAW name and trademark intentionally to divert Internet traffic from Complainants to a website with which Complainants have no relationship and which, in fact, contains links to some of Complainants' competitors. Respondent thus is creating a false impression of association or sponsorship between Complainants and Respondent's website which is deceptive to the Internet user and presumptively harmful to Complainants' goodwill in the SHAW mark. This cannot be considered a bona fide offering of services by Respondent. See Shaw Industries Group, Inc., Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583; Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The evidence suggests also that Respondent is not making either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii). The website appears clearly to be commercial in nature in that it provides the user with links to a number of commercial sites, lists several sponsored results including links to Complainants' competitors), and carries registrar advertising.
Respondent has defaulted here. It has thus failed to come forward with any evidence to counter Complainants' prima facie case and has not, therefore, established that it has rights or legitimate interests in the Domain Name.
Complainants have established that Respondent has no rights or legitimate interests in the Domain Name, the second element of their case. Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainants must demonstrate that Respondent registered and is using the Domain Name in bad faith. Policy, paragraph 4(a)(iii).
Prior UDRP panels have held that in certain circumstances actual or constructive knowledge of complainant's rights in trademarks may be a factor indicating bad faith registration. Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551); The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038. Based upon Complainants' multiple registrations and use of the SHAW trademarks in connection with the manufacture and sale of carpet, the Panel finds that Respondent had actual and constructive knowledge of Complainants' trademarks when it registered the Domain Name. See 15 U.S.C. § 1072; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (Respondent had prior constructive or actual knowledge of complainant's trademark because the mark was registered); Waterman, S.A.S. v. Brian Art,WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant's mark was well-known); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090 (registration of a mark puts respondent on constructive notice); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington,WIPO Case No. D2003-0501 (“It is not reasonable to expect the Respondent to register the disputed domain names if the Respondent had no knowledge of the Complainant's trademark and services in connection thereto”).
Registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark may itself be evidence of bad faith registration and use. Sporty's Farm L.L.C. v. Sportsman's Market, Inc., supra; Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
The Panel finds that Respondent registered the Domain Name, which is confusingly similar to well-known trademarks belonging to Complainants, with actual and constructive knowledge of Complainants' rights in the marks and that, as discussed above, Respondent has no demonstrated relationship to or right or legitimate interest in any of Complainants' marks. The Panel thus concludes that Respondent registered the Domain Name in bad faith.
With regard to bad faith use of the Domain Name, the Policy provides that bad faith exists, inter alia, where the respondent “has intentionally attempted to attract, for commercial gain, Internet users to [its] website …by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on their website or location”. Policy, paragraph 4(b)(iv). This appears clearly to be what Respondent is doing here. Respondent is knowingly using the SHAW mark, trading on its established goodwill, to attract and divert Internet users to Respondent's website by creating a false impression that the site is affiliated with or sponsored by Complainant Shaw. See Lifetime Products, Inc. v. IQ management Corporation,WIPO Case No. D2004-0719. The fact that the website contains links to numerous commercial sites and carries advertising, from which Respondent likely benefits from click-through revenues, supports the inference that the purpose of Respondent's diversion of traffic from Complainants to its own site is Respondent's commercial gain. See Ticketmaster Corporation v. Yong Li,WIPO Case No. D2003-0905; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Henry Chan,WIPO Case No. D2004-0218; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li, supra.
The fact that Respondent's website is “parked free” with the registrar does not negate the inference of bad faith here. Other UDRP panels have found evidence of bad faith with respect to such sites. Hardee's Food Systems Inc. v. Denise Jones,WIPO Case No. D2006-1571; Max Rohr, Inc. v. Puros Dawa HB S.A.,WIPO Case No. D2005-0488. Even if the Panel were to treat such a site as a form of passive use, the Panel finds bad faith where, as here, Complainants' marks are widely known in connection with carpeting and flooring products; Respondent knew of Complainants' business and products marketed under the SHAW name; Respondent failed to respond to the Complaint; and it is not possible to conceive of any plausible actual or contemplated active use by Respondent that would not be illegitimate. Max Rohr, Inc. v. Puros Dawa HB S.A., supra; Telstra Corporation v. Nuclear Marshmallows, supra.
Complainants have established bad faith registration and use of the Domain Name, the third and final element of their case. 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 Shaw Industries Group, Inc.
John R. Keys, Jr.
Sole Panelist
Dated: February 5, 2009
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