The Complainants are Shaw Industries Group Inc., of Dalton, Georgia, United States of America and Columbia Insurance Company of Omaha, Nebraska, United States of America, represented by Neal & McDevitt, United States of America (together referred to as "the Complainant")
The Respondent is Shaw/Dr Kamra Khan of Latur, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 6, 2010. On August 9, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 11, 2010, Directi Internet Solutions Pvt Ltd. d/b/a/ PublicDomainR 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 August 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2010. On August 27, 2010 the Center received an email communication from Dr Kamra Khan in relation to this dispute. On August 30, 2010 the Center acknowledged receipt of Dr Kamra Khan's email communication and requested a confirmation that this communication could be regarded as the complete Response. The Respondent did not send any confirmation. Accordingly, the Center notified the Respondent's default on September 7, 2010.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 14, 2010. The Panel finds that it was properly constituted. The Panel 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
Shaw Industries Group Inc. and Columbia Insurance Company are related companies owned by the same corporate parent, both being wholly owned subsidiaries of Berkshire Hathaway, Inc.
According to the evidence submitted by the Complainant, the Complainant is the owner of a large number of trademarks consisting of and incorporating the mark SHAW either alone or in conjunction with descriptive words. The Complainant uses these in connection with carpet flooring rugs and related goods and services. A list of the Complainant's marks as well as corresponding applications and registrations were annexed to the Complaint at Annex C.
In particular, the Complainant Columbia Insurance Company, is the sole and exclusive owner of United States trademarks SHAW (US registration number 2291182) which was granted on November 9, 1999 and has been in use since at least as early as 1985.
In addition, the Complainants use and have owned for numerous years various applications and registrations for the marks SHAW and various formatives thereof for carpet and flooring including the list set out in the Complaint. In addition, the Complainant Shaw Industries Group Inc. owns and has registered numerous domain names including flooring related domain names which consist of and incorporate the mark SHAW. Examples include; , , and . A representative list of domain names owned by the Complainant Shaw Industries Group Inc. was annexed to the Complaint as Annex D.
Since at least as early as 1985, the Complainant Shaw Industries Group Inc. has prominently used some of the marks SHAW and names incorporating SHAW in connection with carpeting and flooring related goods including rugs provided directly to consumers.
The Complainant has spent millions of dollars displaying, promoting and advertising the marks SHAW. As a result of these activities, the Complainant Shaw Industries Group Inc. is one of the United States leading carpeting and flooring companies and is well-known internationally.
Of particular relevance, is the fact that the Complainant owns several trademark registrations in India. These were set out in Annex F to the Complaint. As in the case of the United States trademark registrations, all of the Indian trademark registrations consist of and incorporate the mark SHAW , and include by way of illustration, SHAW RUGS, SHAW & Design, SHAW CONTRACT, SHAW TILE, SHAW HOSPITALITY AND SHAW.
In the absence of a Response or evidence to the contrary filed by the Respondent, the Panel accepts the truth of the evidence as to the Complainant's trademark rights as submitted by the Complainant. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant relies upon the large number of registrations in the United States and in India consisting of and incorporating the mark SHAW. The Complainant submits that the use and non-distinctive terms in the disputed domain name does not detract from the fact that it is confusingly similar to the Complainant's marks.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not listed as the owner of any United States trademarks consisting of and incorporating the mark SHAW. It submits that the Respondent has made no use of, nor any demononstrable preparations to use the disputed domain name. The Complainant refers to the Respondent's website which, when accessed consists of a large graphic that includes the text "Under Construction Comeback Soon". A screenshot of the website was annexed as Annex E to the Complaint.
(iii) The disputed domain name was registered and is being used in bad faith. The Complainant submits that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. It relies upon paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
For the reasons set out above, the Panel finds that the Complainant has trademark rights in the mark SHAW in both the United States and in India.
The disputed domain name consists of the mark SHAW together with the geographical descriptive name "India". The Panel finds on the basis of established authority from earlier panel decisions, some of which are set out in the Complaint, that the use of a descriptive term does not avoid the finding that the domain name incorporating the descriptive term and otherwise similar to a trademark owned by the complainant is confusingly similar.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademark registrations SHAW as owned and used by the Complainant. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no right or legitimate interest with respect to the disputed domain name. The Complainant relies upon the following:
(i) There is no evidence that the Respondent is the owner of any trademark consisting of and incorporating the mark SHAW.
(ii) There is no evidence of any demonstrable preparations to use the domain name or any named correspondent to the domain name in connection with a bona fide offering of goods or services. The Respondent is not making a legitimate noncommercial or fair use of the domain name.
(iii) The Complainant relies upon the content of the Respondent's website which merely includes the text "Under Construction Come Back Soon". It relies upon this as further evidence that the Respondent has no rights or legitimate interests in the domain name and that this message merely constitutes "passive holding of the domain name by the Respondent".
The Panel takes into account that the Respondent had the opportunity to deal with the issues raised by the Complainant in its Complaint by submitting a Response but has chosen not to do so. The Panel has read the email of August 27, 2010 sent by the Respondent to the Center which states that SHAWINDIA is "our domain name with referance(sic) to our ngo/trust name "supreme humanity association of the world" its short name s.h.o.w."
It would have been open to the Respondent to have developed a case based upon such use of the disputed domain name and to adduce evidence to support a response. However, it has chosen not to do so. In those circumstances the Panel is required to consider the Complaint on the basis of the evidence and submissions presented.
Having considered the Complainant's submissions and taking into account the lack of a Response from the Respondent, the Panel finds that the Respondent has no rights or legitimate interest in the domain name in dispute. C. The domain name was registered and is being used in bad faith
The Complainant submits that its trademarks consisting of and incorporating the mark SHAW.are well-known worldwide in connection with carpeting and flooring products due to the "millions of dollars" the Complainant has expended promoting, selling and advertising products which they promote under the mark SHAW.
The Complainant submits that the Respondent is familiar with SHAW and its well-known trademarks. It relies upon its Indian trademarks.
Taking into account that the Respondent's website merely displays the message "Under Construction Come Back Soon", the Complainant submits that such passive holding of a domain name can be evidence of bad faith.
In the Panel's view and in the absence of a formal Response, the fact that the Complainant has a portfolio of trademark registrations in India and the fact that the Respondent appears to hold the disputed domain name passively enables it to reach a finding of bad faith, which it does. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. 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 the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: September 22, 2010
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