WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shaw Industries Group, Inc., Columbia Insurance Company v. Patcraft Commercial Carpet Case No. D2009-1198 1. The Parties
Complainants are Shaw Industries Group, Inc. and Columbia Insurance Company of United States of America represented by Neal & McDevitt of United States of America.
Respondent is Patcraft Commercial Carpet of Ohio, United States of America represented by Jeffrey A. Dittmer of United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2009. On September 11, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On September 11, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on September 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2009. The Response was filed with the Center on November 18, 2009.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 25, 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.
On December 3, 2009, the Center notified the Panel that it had received from the Complainant a motion to submit reply to the Response along with the Reply itself. The Rules contain no express provision for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either party. Thus, it is in the sole discretion of the Panel to determine whether to consider and admit Complainant's reply. Complainants state that the reply is essential in order to clarify statements made by Respondent in the Response. The Panel determines that it will consider and accept the reply. 4. Factual Background
Complainants are the owner of the PATCRAFT trademark and variations thereof, which have been used in connection with carpeting and flooring related goods and services since as early as 1955. Because several of Complainants' marks have been in continuous use for five consecutive years subsequent to the date of registration and are still in use in commerce, the marks are incontestable under §15 of the Lanham Act. In addition, Complainants own the domain name and use the PATCRAFT marks on the website .
The Domain Name was first registered in 2003. The Domain Name is registered in the name of Patcraft Commercial Carpet, which lists a postal address identical to that of the individual, Joe Sciore. 5. Parties' Contentions A. Complainant
Complainants contend that Respondent has deliberately infringed and diluted Complainants' rights in the PATCRAFT trademark through the unlawful registration of the Domain Name. In particular, Complainants allege that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights. The PATCRAFT marks are distinctive and well known in the carpeting and flooring industry. The fact that the Domain Name contains the PATCRAFT mark in its entirety leads to the conclusion that the Domain Name is confusingly similar to the mark. While the Domain Name adds the term “joe,” this addition lends more strength to the argument that the Domain Name is confusingly similar to the PATCRAFT mark. WIPO panelists have accepted generally that 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.
Complainants contend that Respondent has no rights or legitimate interests in the Domain Name. First, Respondent is not listed as owner of any trademark containing the PATCRAFT marks. There is no evidence that Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name. Likewise, Respondent is not affiliated in any way with Complainants. There is no evidence of Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate non-commercial or fair use of the Domain Name. Rather, Complainants state that Respondent is blatantly using the Domain Name with intent for commercial gain and to misleadingly divert consumers. On its website, Respondent has merely copied Complainants' design mark with a graphical character and the words “Coming February 2009” superimposed on the design element. Respondent thus is clearly making no bona fide offering on the website. Instead, Respondent has acquired the Domain Name with no apparent intention of utilizing it in connection with the provision of legitimate goods or services. It is likely that Respondent was interested in obtaining the Domain Name because of its similarity to a name in which Complainants have rights. This was most likely done in the hope and expectation that Internet users searching for Complainants' goods and services under the PATCRAFT marks would instead come across Respondent's website. Such use of the Domain Name does not provide a legitimate interest under the Policy.
With respect to the third element required under the Policy, Complainant contends the Domain Name was registered and is being used in bad faith. In particular, Complainants state that under the Policy, paragraph 4(b)(iv), a domain name registrant has acted in bad faith where:
“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 or service on your website or location.”
Complainants' PATCRAFT marks are well-known worldwide in connection with carpeting and flooring products due to the millions of dollars Complainants have spent promoting, selling and advertising products and services under these marks, and they continue to maintain ongoing business operations in the United States. By using the Domain Name that is identical or confusingly similar to marks in which Complainants have rights, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainants' marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Complainants state that Respondent is familiar with Complainants and their well-known marks. The registration of a well-known trademark in the Domain Name, of which Respondent must reasonably have been aware, constitutes opportunistic bad faith. In short, the use of Complainants' marks simply for the purpose of driving traffic to Respondent's website is not a bona fide attempt to offer goods and services to the public. Such conduct constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy.
It is not possible to obtain every variation of the Complainants' marks that may be registered or used as a domain name. It is obvious that Respondent went to the trouble of devising a variation not contemplated by Complainants. Such efforts have been viewed previously by other panels as evidence of bad faith. Based on the facts stated above, the Domain Name use by Respondent and use of Complainants' marks demonstrates that Respondent is using the Domain Name in bad faith. B. Respondent
In its Response, Respondent provided a detailed explanation for how Joe Sciore came to use and control the Domain Name, despite it being registered in the name of Patcraft Commercial Carpet. Supported by a sworn affidavit, Joe Sciore claims that he owns and controls the Domain Name. Sciore was previously employed by Patcraft Commercial Carpet, a division of Shaw Industries Group, Inc., one of the two Complainants. Sciore developed the concept and was the original creator of the website at “www.”. Since 2003, Sciore has registered and re-registered the Domain Name using his own money to pay registration fees. Sciore also paid for the development and administration of the Domain Name and the content of the associated website. Sciore hired Kevin Lotspaih to develop, register, and administer the Domain Name. Sciore paid Lotspaih, without reimbursement from Complainants, all expenses for the development, registration and re-registration, and administration of the Domain Name since its inception. Sciore spent considerable time and sums displaying, promoting, and advertising the Domain Name. He has exercised sole control over the Domain Name, and both he and Patcraft Commercial Carpet benefited from the commercial use of the Domain Name between 2003 and 2008.
In 2002, Sciore introduced and discussed the concept and commercial use of his Domain Name with Bob Chandler, president of Patcraft Commercial Carpet. Sciore intended to brand himself individually as a salesperson for Patcraft Commercial Carpet in Ohio and West Virginia. In conjunction with the use of the Domain Name as a marketing tool, Sciore intended to offer cookies to current and potential customers at no cost. According to Respondent, representatives of Complainants – including Chandler, Division President, Steve Dunn, Divisional Vice President and Roger Somekowa and Brad Root, both Regional Vice Presidents – were aware and supportive of Sciore's registration, implementation and use of the Domain Name. Respondent states that with full knowledge that the PATCRAFT mark would be included in the Domain Name, Complainants and their representatives assented to, and acquiesced in, Sciore's registration and use of the Domain Name for commercial use.
According to Respondent, in 2003, Sciore began to individually brand himself as PATCRAFT JOE through use of the Domain Name and efforts as a salesperson for Patcraft Commercial Carpet. Sciore incorporated his portfolios, local news, industry news, products and specifications, and Patcraft Joe cookie information. Sciore freely offered various kinds of cookies for marketing purposes in conjunction with the registration and use of the Domain Name. As such, he included the kinds of cookies he offered as well as their ingredients. Because Sciore marketed himself as “Patcraft Joe,” he became known for his cookies. Between 2003 and 2009, Sciore became well known in Ohio and West Virginia and was referred to by peers and customers as “Patcraft Joe,” as opposed to his name, Joe Sciore. Thus, Sciore and the website connected to his Domain Name were primarily known for cookies. Moreover, Respondent contends it cannot be denied that Sciore and Patcraft Commercial Carpet benefited economically. Sciore benefited through commissions as a salesperson from the development and use of the Domain Name by acquiring and keeping customers. Likewise, Patcraft Commercial Carpet indirectly benefited from Sciore's development and use of the Domain Name with no cost, direction or control on its part.
Respondent states that in 2006, Sciore began preparations to accommodate links to other salespersons to the website associated with the Domain Name for similar marketing purposes because his self-branding of “Patcraft Joe” was so successful. Lotspaih implemented technical preparations to the website so that other salespersons could brand themselves individually as well. In approximately January 2008, Patcraft Commercial Carpet rebranded the company and acquired a trademark for THE NEW PATCRAFT & DESIGNWEAVE. Sciore had Lotspaih prepare changes to the website using the new brand of the company. However, Sciore resigned from The New Patcraft & Designweave in February 2009 and has since left the Domain Name dormant with caricatures on the website offering cookies along with a notice of “Coming February 2009.”
Respondent states that Sciore was unaware of any rescission of assent by Patcraft Commercial Carpet and its agents, or of any dispute concerning use of the Domain Name until Complainants submitted the Complaint. Sciore has not attempted to sell the Domain Name to any person or company, including Patcraft Commercial Carpet and The New Patcraft & Designweave.
Respondent argues that in order to prevail in these proceedings, Complainants must prove all three elements of the Policy. The Policy sets out a non-exclusive list of examples of circumstances that exhibit one's rights to or legitimate interests in a domain name for purposes of the Policy. Respondent asserts that Complainant summarily concludes that Respondent has no right or legitimate interest in the Domain Name because there is no evidence of use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that Sciore is not commonly known by the Domain Name; that Sciore is not making a legitimate non-commercial or fair use of the Domain Name; and that Sciore's use of the Complainants' design mark does not evidence legitimate commercial use. Respondent contends, however, that Sciore does have rights to and a legitimate interest in the Domain Name because he registered and used the Domain Name in connection with a bona fide offering of services; he became commonly known by peers and customers as “Patcraft Joe”; and he currently makes a legitimate noncommercial or fair use of the Domain Name. Before notice of any dispute, Sciore registered and used the Domain Name with Complainants' assent in connection with a bona fide offering of services, as explained above.
Respondent further states that after having registered and used the Domain Name for over six years with Patcraft Commercial Carpet's assent and after becoming well known by the Domain Name, Sciore has suspended commercial use of the Domain Name. Respondent urges that Complainant has not established any evidence that Sciore intends to mislead or divert consumers to his website or to tarnish the Complainants' trademark. Respondent contends that Sciore makes fair use of the Domain Name because he has a legitimate interest in protecting his identity with and the integrity of the Domain Name. Sciore has left caricatures on the website offering cookies along with a notice of “Coming February 2009.” As such, Sciore has a legitimate interest in protecting his identity with the Domain Name for possible future commercial and economic purposes. Such protection also protects Sciore's previous contribution of sweat equity.
Respondent contends that Complainant has not put forth any evidence suggesting Sciore registered the Domain Name in 2003 in bad faith. Respondent refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), stating that “[a] mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of his domain name.” WIPO Overview, Section 3.7. Sciore did not register and subsequently use the Domain Name in bad faith because Sciore's conversations with Complainants' representatives did not contemplate Complainants' ownership or authority over the Domain Name or the transfer of the Domain Name to Complainants; the Domain Name was not registered to prevent Complainants from reflecting the mark in a corresponding Domain Name; the Domain Name was not registered for purpose of disrupting Complainant's business; and the Domain Name is not being used for competitive commercial gain. In particular, Sciore registered the Domain Name partially for the purpose of procuring business for the mutual benefit of both he and Complainants, and for marketing himself individually. Sciore's registration of the Domain Name was acquiesced to by Complainants, and reselling or transferring the Domain Name was never discussed between the parties. Sciore did not register the Domain Name to prevent Complainants from reflecting their marks in a corresponding domain name because Complainant authorized Sciore to register the Domain Name. Moreover, Sciore did not register multiple domain names and has not cornered the market in domain names that incorporate Complainants' marks. Sciore's Domain Name was not registered in 2003 for purposes of disrupting Complainant's business; rather, it was registered partially for purposes of indirectly improving Complainants' business. Complainants cite the UDRP case, Shaw Indus. Group, Inc., Columbia Insurance. Company. v. Marathon Triad,WIPO Case No. D2006-1408, which is factually different from the case at hand. In the previous case, the domain name was initially registered by another party before being transferred to the respondent, a dealer of the complainant. The complainant contended that dealers were never authorized to use the mark in a domain name. The panel noted that the dealer went to the trouble of devising a variation in order to deceive the complainant. Moreover, in considering bad faith, the panel took note of the lack of response by the respondent. In the case at hand, however, Sciore was the original registrant of the Domain Name and did so with clear assent. Complainants have not offered evidence that Sciore is driving traffic away from Complainants' website to his website; Sciore does not have hyperlinks on his website, for example, directing Internet users to other sites for his commercial gain. Furthermore, Mr. Sciore is not concealing his identity or suggesting an inconceivable good faith use. Finally, while the website associated with the Domain Name is currently dormant, the initial registration and subsequent use of the Domain Name was undertaken in good faith. Moreover, Sciore removed Complainants' marks from the content of the website after he was no longer employed by Complainant. The recent inactivity of the website has been in good faith, for Sciore is determining how to make use of the Domain Name and its website. Complainants offer no evidence of the species of activity ordinarily associated with cybersquatting, warehousing, holding out for sale, or click-through revenues. For the foregoing reasons, Sciore did not register and use the Domain Name in bad faith.
In conclusion, Respondent states that Sciore has rights and a legitimate interest in the Domain Name and has not registered or used it in bad faith. Therefore, Respondent respectfully requests the Panel to deny the transfer of the to Complainants. 6. Complainants' Reply
Complainants' Reply focuses on a technical point. Complainants maintain that Respondent in this proceeding is Patcraft Commercial Carpet and Joe Sciore therefore lacks standing to argue on behalf of Patcraft Commercial Carpet. When Complainants brought this case, the registrant of the Domain Name as listed in the WhoiIs contact information was Patcraft Commercial Carpet, with Kevin Lotspaih listed as the administrative and technical contact. Complainants state that Joe Sciore was not listed as a contact anywhere in the WhoIs information. Joe Sciore acknowledges in the Response that he was previously employed by Patcraft Commercial Carpet, which was a trade name used to designate a portion of the business of Complainant Shaw Industries Group, Inc., Patcraft Commercial Carpet was not at the time and is not now a separate legal entity from the Shaw Industries Group. Thus, Sciore registered the Domain Name on behalf of Patcraft Commercial Carpet and this was an error in that the legal entity for registration should have been listed as Complainant Shaw Industries Group, Inc. Complainants state that Sciore also incorrectly listed his home address as the address of the Domain Name registrant.
Complainants further indicate that Complainant Shaw Industries Group now operates Patcraft Commercial Carpet as “The New Patcraft and Designweave.” Accordingly, based on this information, Complainants contend that they actually own the Domain Name, since it is registered in the name of Patcraft Commercial Carpet. Thus, Complainants state that the Domain Name needs to be updated to have the correct name of the registrant listed as well as the correct address inserted. In addition, the WhoIs information needs to list the appropriate administrative and technical contact information. In conclusion, Sciore is not the owner of the Domain Name and is not the correct party to be filing the Response. 7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The Panel makes the following findings and determinations based upon the submissions of the Parties and all relevant information in this case:
(1) Complainants could have raised points germane to those raised in their reply concerning Joe Sciore and the status of Respondent Patcraft Commercial Carpet in their initial submission (i.e., in the Complaint), but failed to do so. Instead, Complainants chose to disclose little or none of the more complex and accurate background that is relevant to the dispute concerning the Domain Name and that has been explained in detail in the Response.
(2) Based on the Complainants' statements in the Reply, Complainants maintain that Respondent Patcraft Commercial Carpet is an entity that is part of the business of Complainant Shaw Industries Group and was never a separate legal entity. If this is the case, and if there is no other pertinent dispute that stands in the background concerning the Domain Name, then there should be no reason for Complainants to have filed this case under the UDRP, because they have effectively filed a claim against themselves.
(3) Complainants have raised a threshold issue in their reply: whether Joe Sciore has standing to submit the Response on behalf of Respondent Patcraft Commercial Carpet. The Panel observes that the registrant of record for the Domain Name is Patcraft Commercial Carpet. On its face, the Response in this case is submitted in the name of Patcraft Commercial Carpet, although the content of the Response explains in detail how the individual, Joe Sciore, considers that he actually owns, manages and controls the Domain Name. In particular, the Response explains how Sciore used his own money to pay for the registration (and re-registration), development and administration of the Domain Name, as well as the development and content of the associated website, while exercising sole control over the Domain Name and associated site. Sciore did this for a period of approximately six years, all with the apparent consent and acquiescence of representatives of the Complainants. These and other facts set forth in the Response are not referenced in Complainants' Complaint, nor denied in their reply. These circumstances raise issues about a longstanding business relationship between Complainants and Joe Sciore which go beyond the criteria of the Policy. The Panel therefore determines that the Response is properly submitted and that key questions relevant to the disputed Domain Name fall outside the scope of the UDRP, which instead focuses on questions of bad faith registration and use of domain names.
(4) Although the Panel determines that the key issues in this case fall outside the scope of the Policy, under the traditional UDRP analysis, it would not hesitate to find that the Domain Name is confusingly similar to the Complainants' PATCRAFT trademarks. At the same time, however, the Panel cannot find on the record in these proceedings under the Policy, that the Domain Name was registered or used in bad faith, particularly given the detailed and undisputed explanations set forth in the Response. It may be that a court would provide a more appropriate forum for cross-examining and interrogating such matter.
(5) With regard to Complainants' request that the Domain Name registration is incorrect and needs to be updated to have the correct name of the registrant listed as well as the correct address inserted, these are matters that do not fall within the scope of the Policy, which focuses on whether a domain name was registered and used in bad faith. Perhaps Joe Sciore might advance a similar claim that the registration information for the Domain Name is incorrect and should be amended to reflect his name as registrant. In any event, Complainants must seek relief elsewhere if they believe that they own the Domain Name and that the registrant information, as reflected in the WhoIs data, needs to be corrected. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Dated: January 19, 2010
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