WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shaw Industries Group, Inc. and Columbia Insurance Co. v. Domains by Proxy Inc./ Mark Kolbe Case No. D2009-0303 1. The Parties
Complainants are Shaw Industries Group, Inc., Dalton, Georgia, United States of America, and Columbia Insurance Company, Omaha, Nebraska, United States, both represented by Lisa A. Iverson, Neal & McDevitt, United States of America.
The Respondent is Domains by Proxy Inc./ Mark Kolbe, Baldwinsville, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2009.
On March 9, 2009, the Center transmitted by email to GoD a request for registrar verification in connection with the disputed domain name. On March 9, 2009, 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 the Complainant on March 16, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 19, 2009. 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 March 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for response was April 14, 2009. Respondent did not submit any response.
The Center appointed David W. Quinto as the sole panelist in this matter on April 28, 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.
At the Panel's request, after finding there to be no present commercial use of the disputed domain name, on May 25, 2009, the Center provided Respondent a special additional one week period to furnish the Center with any additional information concerning what use, if any, Respondent intends to make of the disputed domain name. Once again, Respondent did not submit any response.1 4. Factual Background
Complainant Shaw Industries Group (“Shaw”) is a full-service flooring products company with more than USD 5 billion in annual revenues and approximately 30,000 employees. Since 2001, Shaw has been owned by Berkshire Hathaway Inc. Complainant Columbia Insurance Company (“Columbia”) is also a subsidiary of Berkshire Hathaway Inc. Shaw sells and markets its products using the SHAW registered trademarks and various formatives thereof. The marks are solely and exclusively owned by Complainants. The marks have been in continuous use for at least five years since their dates of registration, and are still in use. The formatives of the SHAW trademark registered by Complainants include SHAW GREEN EDGE and SHAW GREEN EDGE INITIATIVE, among others. The variant of domain names registered by Complainants includes .
Respondent is not a licensee of Complainants, or otherwise authorized to use Complainants' marks. Respondent's disputed domain name resolves to a website stating solely “Welcome to .” There is no advertising of any kind on the site. Respondent's website is not affiliated, and has no association, with Complainants. 5. Parties' Contentions a. Complainants
Complainants allege that their SHAW mark is famous and distinctive and that Respondent's disputed domain name is confusingly similar to it in that the addition of the word “green” before “shaw,” and “flooring” after “shaw,” results in no more than a variation on Complainants' mark. Complainants further allege that Respondent has no prior rights or legitimate interests or to the SHAW mark or trade name and does not have prior rights to the use of “Shaw” on the Internet. Complainants' domain name was registered in 1999; Respondent's disputed domain name was registered on December 17, 2008. Respondent is not commonly known by the name “Shaw” and Respondent has purportedly used the domain name intentionally to attract Internet users to Respondent's website for financial gain by creating confusion as to the source or affiliation of the website. b. Respondent
Respondent did not reply to Complainants' contentions or to the Panel's Order No.1 inviting Respondent to comment on his intended use of the domain name. 6. Discussion and Findings a. Identical or Confusingly Similar
Complainants have the burden to show that Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights. Here, Complainants have amply shown that they have protectable trademark rights. They obtained U.S. federal registration for a SHAW (and Design) mark beginning 22 years ago, its name has been in continuous use since at least 1985, and their brand is well known within their field.
In Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000), the panel first concluded that “a domain name is “identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.” Many other panels have since applied that objective test. For example, in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001), the panel declared that, “as numerous prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark.”
The disputed domain name, , merely surrounds the SHAW mark with the descriptive words “green” and “flooring,” words that may be reasonably associated with products for which the SHAW mark was issued. Moreover, adding these descriptive words before and after the SHAW mark could therefore lead an Internet user to conclude that the domain site is related to the flooring products sold by Shaw and/or the green initiatives being undertaken by Shaw. As such, Respondent's domain name is confusingly similar.
Complainants thus meet their burden as to the first element. b. Rights or Legitimate Interests
Complainants are also required to demonstrate that Respondent has no rights or legitimate interests in respect to the domain name. Paragraph 4(c) of the Policy explains that a respondent may, without limitation, demonstrate its rights or legitimate interests in a domain name by showing that it (1) used, or made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with the bona fide offering of goods or services before receiving notice of a dispute; (2) has been commonly known by the domain name, even if it does not have trademark rights in the name; or (3) has made a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to divert customers, or to tarnish the mark at issue. However, Respondent has not responded to the Complaint.
The sole evidence is that Complainants registered their SHAW mark and commenced using their “” website many years before Respondent registered its domain name, and that Respondent did not make a bona fide use of the disputed domain name to sell goods or services before receiving notice of this dispute. There is also nothing in the record to suggest that Respondent has ever been known as “Shaw.” Complainants cite to Shaw Industries Group, Inc. & Columbia Insurance Co. v. Administrator, Domain,WIPO Case No. D2007-0583 (June 21, 2007), in support of their contention that Respondent has no rights or legitimate interest in the disputed domain name. However, that case concerned a registration that had been used and owned by the respondent for nine years, and which had at times provided links to sites owned by Complainants' competitors. Neither circumstance is present here.
The three other cases in which Complainants have recently prevailed are also distinguishable. In Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World, Inc.,WIPO Case No. D2007-1856 (February 20, 2008), the respondent was using the disputed domain name with a website that offered a collection of links to other, commercial websites. Similarly, in Shaw Industries Group, Inc. and Columbia Insurance Company v. freewayfloorbrokers,WIPO Case No. D2008-1905 (February 5, 2009), the respondent had parked the disputed domain name at a site with “links to many carpet, rug and flooring-related sites, some using the Shaw name and a number of them directed to Shaw competitors.” Each case thus involved a commercial use. Here, however, the domain resolves to a site that has no links to other sites, and neither Respondent nor the registrar is using the parked domain name for commercial purposes.
Finally, in Shaw Industries Group, Inc., and Columbia Insurance Company v. Domain Discreet/Sarah Raudales, Arizona Vacation Rental Homes,WIPO Case No. D2008-1905, (October 6, 2008), the respondent, a retailer of Shaw carpets, expressed its intent to use the disputed domain name for its own commercial purposes. Here, in contrast, there has been no expressed intent by Respondent to use the disputed domain name commercially.
Nonetheless, uses of even confusingly similar domain names for noncommercial purposes have sometimes been found non-violative of a complainant's rights under the Policy. For example, in Bridgestone Firestone, Inc., Bridgestone/Firestone Research Inc., and Bridgestone Corporation v. Jack Myers,WIPO Case No. D2000-0190 (July 6, 2000), the panel refused to order the transfer of the domain to the Complainant because the respondent was using the site to publicize his ongoing dispute with Bridgestone over pension payments. Similarly, in TMP Worldwide Inc. v. Jennifer L. Potter,WIPO Case No. D2000-0536 (August 5, 2000), the panel concluded that the respondent was making a permissible noncommercial use of an otherwise confusingly similar domain name.
This case presents a close call with respect to determining whether Complainants have satisfied their burden to establish that Respondent has no rights or legitimate interest in the domain name. Respondent registered the disputed domain name on December 17, 2008. Less than three months later, on March 6, 2009, Complainants initiated this proceeding. Respondent had not made, attempted to make, or permitted any commercial use of the registered domain name and had not offered to sell it. As of March 6, Respondent could have been planning a legitimate, non-commercial use, and might still have been in a pre-execution development phase.
Respondent did not, however, respond to the Complaint or to the Panel's subsequent inquiry. There is thus no way to ascertain Respondent's intended use. Because Respondent has chosen not to respond, the Panel cannot determine whether Respondent in fact planned to make a legitimate, noncommercial use of the site. Respondent has thus avoided addressing the issue by defaulting. In doing so, Respondent has thereby gained an advantage. More than five and a half months have now passed since the date of registration. This Panel considers that sufficient to allow a registrant either to commence making a legitimate use of its registered domain name or to inform the Center, through its response, of such intention. Here, Respondent has done neither. Thus, this Panel concludes that Respondent is not making, and does it intend to make, a legitimate, noncommercial use of the registered domain name.
For the foregoing reasons, Complainants have satisfied their burden to establish that Respondent has no rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
Finally, Complainants must demonstrate that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth four nonexclusive factors that may establish the bad-faith registration and bad-faith use of a domain name: (1) registration was primarily for the purpose of selling, renting, or transferring the domain name to the complainant; (2) registration was conducted to prevent the owner of a trademark from reflecting the mark in a domain name; (3) registration was conducted to disrupt the business of a competitor; or (4) registration is a deliberate attempt at commercial gain by creating a likelihood of confusion with a complainant's mark. No proof of any of these factors has been demonstrated in this case, nor has Complainant made any other showing of bad faith.
Complainants contend that registration of a well-known trademark in a domain name, by itself, constitutes opportunistic bad faith. They cite to Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Co.,WIPO Case No. D2000-0163 (May 1, 2000), in support of that proposition. The panel in that case decided that the disputed domain name, , was so obviously connected with a very well-known product that its mere use by someone unconnected with the product suggested “opportunistic bad faith.” Veuve Clicquot is distinguishable in that the disputed domain name was identical to the complainant's mark and in that the mark was uniquely associated with the complainant. Here, by contrast, SHAW is not uniquely associated with but one product, and the disputed domain name is not identical, or virtually identical, to the mark.
Prior UDRP panels have held that in certain circumstances, actual or constructive knowledge of a complainant's rights in a trademark may be a factor supporting a finding of bad faith. See, e.g. freewayfloorbrokers, supra. Because SHAW is registered in the United States and Respondent is from the United States, Respondent may be charged with knowledge of the registration. However, to find constructive knowledge of a complainant's mark, other panels, as in freewayfloorbrokers, have often relied on the presence of additional factors, such as that the disputed domain name resolved to a site offering actual or potential commercial gain.
Complainants cite to Shaw Industries Group, Inc., Columbia Insurance Company v. Marathon Triad,WIPO Case No. D2006-1408 (January 24, 2007), in which they proved bad faith by a respondent. The respondent was however a Shaw carpets dealer and evidently intended to use the disputed domain name, , commercially. Here, however, Respondent is not using the disputed domain in connection with a website offering products made by Complainants or their competitors.
Nevertheless, because (i) Respondent is barred from conducting commercial activity with the disputed domain based on the findings above, (ii) Respondent neither conducts any legitimate non-commercial activity with the disputed domain nor has provided any indication that it intends to do so, (iii) Respondent has made no use of the disputed domain name, (iv) Respondent has foregone two opportunities to explain any intended use, and (v) 5 1/2 months have passed without any use, the Panel finds that there are no reasonable circumstances pursuant to which Respondent could legitimately use or intend to use the disputed domain name.
A key consideration in finding bad faith concerns Respondent's probable motives in registering a disputed domain name. Here, the disputed name contains the Complainants' SHAW mark, the generic term “green” (which is included in at least two formatives of Complainants' mark), and the generic term “flooring” (which describes the Complainants' area of business). Respondent's choice of domain name therefore seems more than coincidental. In the absence of any intended permissible use by Respondent, Respondent's choice of its domain name called for an explanation, which Respondent failed to furnish.
The Panel thus concludes that the domain name was registered by Respondent in bad faith. This Panel further notes that its finding of inferred bad faith by Respondent is consistent with other UDRP panel findings of bad faith when a respondent has not demonstrated any plausible legitimate use(s) of a disputed domain name. See, e.g., Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
In summary, this Panel concludes that there is sufficient evidence to demonstrate Respondent's bad faith. As such, Complainants satisfy their burden of proving this required element under Paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name be transferred to Complainants.
David W. Quinto
Sole Panelist
Dated: June 2, 2009
1 The Panel notes that, but for the lack of any commercial use of the disputed domain name, no further inquiry would have been requested of Respondent.
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