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 LLC of Northfield, Illinois, United States of America. (the “Complainants”).
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States, and Janice Liburd of Panama, Panama (the “Respondents”). 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC of Pompano Beach Florida, United States of America. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2010. On September 30, 2010, the Center transmitted by email to Moniker Online Services, LLC, a request for registrar verification in connection with the disputed domain name. On September 30, 2010 Moniker Online Services, LLC, 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 October 12, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaint on October 12, 2010.
The Center verified that the Complaint together with the amended 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 October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2010.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on December 1, 2010. 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
The first Complainant (“Columbia”), owns a number of trade marks registered in the United States of America. According to the Complaint, these marks are used by the second Complainant (“Shaw”) in connection with carpet, flooring, and related goods and services. Although no formal licence agreement is in evidence, it appears that such usage has been authorized by Columbia, as both companies are wholly owned subsidiaries of another entity, Berkshire Hathaway, Inc. The Complainant’s registered trademarks were provided as Annex C to the Complaint and comprise the word “Shaw” and number of variations, e.g. SHAWMARK, SHAW CERAMICS, SHAW HARDWOODS, SHAW FIBERS. In addition, Shaw has registered a number of domain names in the “.com” and “.info” top level domains comprising the word “Shaw” with various suffixes, such as “rug”, “floors’ and “flooring”. A list of the Complainant’s domain names was submitted as Annex D to the Complaint.
No supporting evidence is provided in the Complaint of the size, scope or longevity of the Complainants’ operations with respect to their trade marks and domain names, apart from the general assertion in the Complaint that Shaw has:
prominently used some of the SHAW… Marks and [domain] Names in connection with carpeting and flooring related goods, provided directly to consumers. Complainants have spent millions of dollars displaying, promoting, and advertising the SHAW…Marks. As a result of these efforts, Shaw is one of the United States leading carpet and flooring companies and is well known internationally.
So far as the requirements of paragraph 4(a)(i) of the Policy are concerned, these matters are not directly relevant, although they may be more so in relation to the other sub-paragraphs of paragraph 4(a) of the Policy, which are discussed in Sections 6 B and C, below.
According to the communications from the Registrar (Moniker), the record creating the present registration of the disputed domain name was made on May 8, 2010 and expires on May 8, 2011. 5. Parties’ Contentions A. Complainant
The Complainants allege that all three sub-paragraphs of paragraph 4(a) of the Policy are satisfied.
As to paragraph 4(a)(i) of the Policy, they point to the United States (“US”) trademark registrations of some 31 different marks containing the word “Shaw” on its own or in combination with other words, (referred to hereafter collectively as the SHAW marks or the Complainants’ Marks – see Annex C to the Complaint for a full list). The earliest of these, SHAW, US Registration No. 2,291,182, was issued on November 9, 1999, but it is asserted that this has been in use since at least 1985. The Complainants claim rights in these trademarks and it is further asserted that the disputed domain name both contains within it the Complainant’s SHAW mark and is confusingly similar to the Complainant’s mark or marks.1
It is further asserted that the presence of the descriptive suffix “floorjobs” does nothing to distinguish the disputed domain name from the Complainants’ Marks, particularly in view of the fact that flooring is a “core business” of the Complainants. Earlier UDRP decisions are cited in support of the general proposition that the addition of descriptive or non-distinctive term to another’s mark does not avoid the likelihood of confusion.
As to paragraph 4(a)(ii) of the Policy, the Complainants argue that the Respondents have no rights or legitimate interests in the domain name, pointing here to the fact that the Respondents are not listed as the owner of any US trade mark containing a formative of the term “Shaw”, and to the absence of any evidence that the Respondents own or have ever applied for any US trade mark registrations. They also assert that there is no evidence that the Respondents, either as individuals or as business entities, have been commonly known by the disputed domain name.
The Complainants argue further that there is no evidence of the Respondents having made use of, or having made any demonstrable preparations for the use of, the disputed domain name in connection with a bona fide offering of goods or services. Evidence is given that the Respondents are using the website at the disputed domain name for the purpose of “click throughs” to other sites. (See Annex E to the Complaint). It is asserted that this is a means for the Respondents to earn revenue from such “click throughs”, and that no authorization for this usage has been given by the Complainants. The Complainants suggest that this use may lead consumers to competitors of the Complainants as there are links to such competitors to be found on the website site located at the disputed domain name. (See Annex E to the Complaint). It is also asserted that web users looking for employment opportunities with Shaw may be confused, noting here that Shaw already owns a number of domain names containing the SHAW Marks. (See Annex D to the Complaint).
As to the requirement that there has been registration and use in bad faith under paragraph 4(a)(iii) of the Policy, the Complainants argue that their marks are well-known worldwide in connection with carpeting and flooring products, and that the Respondents have intentionally sought to attract, for commercial gain, Internet users to their site by creating a likelihood of confusion with their marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website (see further paragraph 4(b)(iv)). In support of this contention, the Complainants allege that the Respondents must have been familiar with Shaw and its well-known trade marks, arguing that their registration of the disputed domain name was therefore “opportunistic bad faith” (citing here Veuve Clicquot Ponsardin, Masion Fondee en 1772, v. Polygenix Group Co, WIPO Case No. D2000-0163.). The Complainants argue further that the website at the domain name contains various references to floor-related products, including those of competitors of Shaw (see Annex E), and that this constitutes use in bad faith within the meaning of paragraph 4(b)(iv). In support of this contention, various earlier WIPO UDRP panel decisions are cited, including DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings Inc,WIPO Case No. D2005-0070 and International Business Publishers Inc. v. Center for Business Intelligence,WIPO Case No. D2001-0181 and Lifetime Products Inc. v. IQ Management Corp.,WIPO Case No. D2004-0719.
It is noted by the Complainants that registration and use in bad faith may also be inferred from the fact that there are numerous registration of domains by the Complainants incorporating the SHAW Marks but that it is not possible to register every possible variation. In this situation, the registration of the dispute domain name suggests that the Respondent has gone “to the trouble of devising another variation not contemplated by the Complainants”, citing here an earlier WIPO UDRP decision in which they were the Complainants, Shaw Industries Group Inc., Columbia Insurance Co. v. Marathon Triad, WIPO Case No. D2006-1408. They point also to the fact that Moniker Privacy Services is listed as the Registrant of the disputed domain name, this being a device to enable the true registrant to hide behind the “public” registration of Moniker Privacy Services. In this regard, it is noteworthy that the latter has the same address as the Registrar of the domain name. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the elements required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in achieving the relief requested. A. Identical or Confusingly Similar
There can be no doubt that the Complainants have successfully shown that they have rights in a trade mark, or rather in a series of marks that incorporate the word SHAW. The fact that the registrations exhibited in Annex C to the Complaint are confined to one jurisdiction (the United States of America) does not affect this conclusion, as paragraph 4(a) of the Policy refers only to the need for the Complainant to show that there is a “trade mark or service mark in which the Complainant has rights”. There is no further requirement that these rights exist in a number of different jurisdictions, or, indeed, that they be registered (as is the case here). While the registration of many of these marks is of recent origin, they all appear to pre-date the Respondents’ registration of the disputed domain name: the earliest registration (for SHAW for use in connection with to carpets, US Registration No. 2,291,182) dates from November 1999, with first use in 1985.
The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks. It does not appear that there is any assertion by the Complainants that there is identity, although as a matter of fact the word “SHAW” does recur in each of the Complainants’ marks. The Complainants argue that there is confusing similarity between the disputed domain name and their trademarks, although they do not specify whether the confusion is between all or only some of the marks. Regardless of this distinction, the Panel finds that:
(i) The word “Shaw” begins each of the Complainant’s registered marks apart from US Registration No. 2,547,525 (COUTURE BY SHAW), and US Registration Nos. 3,447,442 and 3,447,443 (THAT’S THE SHAW GREEN EDGE). Given that the disputed domain name also begins with the word SHAW, rather than being placed in the middle of surrounding verbiage, it can be said that both the domain name and the registered marks have the one central distinctive element, namely the word “Shaw.” This word is encountered first by the viewer visually, as well as aurally when the domain name and marks are used verbally.
(ii) The suffix to the disputed domain name, “floorjobs”, is of a purely descriptive kind, and can be disregarded when comparison is made with the marks that consist of the word SHAW alone. Points of differentiation might arise in the case of the trade marks that include their own descriptive and/or non-distinctive suffixes, such as SHAW CERAMICS, SHAW HARDWOODS and SHAW HOSPITALITY. In these last-mentioned instances, confusing similarity might be less likely when the comparison is made, although the dominant central element of each of the marks still remains the word SHAW.
(iii) It is a long accepted practice among UDRP Panels to disregard the “.com” suffix when carrying out the comparison with the Complainants’ marks, as this is simply part of the Internet address and does not add “source-identifying significance”. See e.g. Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728; and Deutsche Welle v. DiamondWare Limited.,WIPO Case No. D2000-1202.
Notwithstanding the possible reservations expressed in sub-par (ii) above as to some of the Complainants’ registered marks, the Panel is prepared to find that there is confusing similarity between the disputed domain name and some at least of the Complainants’ marks, including those comprising SHAW simpliciter.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant is also required to show that the respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for a Respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exists. In this regard, the Complainant has addressed this requirement as follows:
(i) There is no evidence that the Respondents have ever registered a trade mark containing the words SHAW or applied for such a mark.
(ii) There is no evidence, within the meaning of sub-paragraph 4(c)(i), that they have used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In this regard, it is difficult to disagree with the Complainants’ contention that the website situated at the disputed domain name is anything other than a “click through” site for various generally described goods and services, none of which is actually offered by the owner of the disputed domain name at that website. The latter was visited by the Panel on December 15, 2010 (see also Annex E) and contains icons for a number of generic kinds of services that click through to other websites (and presumably other traders). Even those that relate to flooring go through to other sites, e.g. “Laminate Flooring”, Hardwood Flooring”, “Wood Flooring”, “Floor Mat”. There is no indication here that a bona fide offering of flooring services is offered at this site by the operators of the site itself. The inference must be that, as the Complainants submit, the Respondents are earning revenue by providing a “click through” service to other sites, rather than carrying on a legitimate business of their own at that site.
(iii) There is no evidence of any facts that would support the circumstances referred to in paragraph 4(c)(ii) or (iii) of the Policy. In particular, it is clear that the activities of the Respondent have not been licensed or approved by the Complainant.
The absence of any Response from the Respondent addressing the matters referred to in paragraph 4(c) entitles the Panel to infer that none of these circumstances exists in the present case. In the words of the panel in J. Choo Limited v. Sinclare Vabalon, BHG, WIPO Case No. D2008-1091, this is an instance in which the present Panel is entitled to assume that:
“…in the absence of any alternative explanation, the Respondent in all likelihood selected the Domain Name because of its incorporation of the Complainant’s trademark with a view to receiving revenue from web traffic which the Respondent directs to the various links on the associated website. This could not be described as a bona fide offering of goods or services, and it is clear to the Panel that the Respondent’s use of the Domain Name in this manner does not confer any rights or legitimate interests upon it”.
Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) has been made out. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] 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 [the Respondent] 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 [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] 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.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name in dispute, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use.
In this regard, it is worth noting an early decision of a WIPO UDRP panel, which found that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith. Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several panel decisions, see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules – and this would include responding to the Complaint - the Panel is entitled to draw from such default such inferences, as it considers appropriate.
On the evidence before it, the Panel is not satisfied that the circumstances referred to in paragraph 4(b)(i) or (ii) of the Policy arise. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists. However, the circumstances outlined in paragraph 4(b)((iv) appear to arise, in that the disputed domain name is clearly confusingly similar to the Complainant’s marks and there is an offering of various services on the website and/or links to other sites.. This, indeed, is the main thrust of the Complainants’ submissions on paragraph 4(c) of the Policy, and much of the discussion above in relation to paragraph 4(a)(ii) is therefore relevant in this regard.
However, it should be noted that there are some deficiencies in the Complainants’ evidence here, in particular in relation to the fame and usage of its marks. Apart from various allegations in the Complaint itself, no evidence has been provided as to the extent of the Complainants’ business, in particular the offerings of goods and services that they have made under the marks. In this regard, sales data, advertising expenditures, and the like, would have been of assistance to the Panel in concluding that the initial registration of the domain name by the Respondents was made in full knowledge of the Complainants and their marks. However, the fact that many of these registrations were on the public register in the US prior to 2010 and that one of the respondents appears to be located within the same jurisdiction clearly assists the Complainants’ case on registration in bad faith. Moreover, the fact that the Complainants have many of their own domain names registered with the word SHAW and other variations is clearly suggestive of bad faith, in that it appears that the Respondents’ have registered one of the few combinations not already registered by the Complainants, thereby suggesting an awareness on their part of the Complainants and their marks and business. In this regard, the Panel reaches a similar conclusion to the panel in Shaw Industries Group Inc., Columbia Insurance Co. v. Marathon Triad, WIPO Case No. D2006-1408.
A further straw in the wind pointing to bad faith on the part of the Respondents, both in registration and use of the disputed domain name, is to be seen in the fact referred to by the Complainants that Moniker Privacy Services is listed as the Registrant of the domain name. It is difficult to escape the conclusion that this is a device to enable the true registrant to hide behind the “public” registration of Moniker Privacy Services and, as noted above, it is noteworthy that the latter has the same address as the Registrar of the domain name.
Accordingly, on the basis of the above, it seems reasonable to infer that, in linking the disputed domain name to the click through website as it has done, the Respondents fall within the circumstances outlined in paragraph 4(b)(iv) of the Policy, and have attempted to attract, for commercial gain, Internet users to their website through the creation of a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation, or endorsement of their website and/or the services offered on the website.
Accordingly, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been made out here, namely that the Respondents have registered and used the disputed domain name in bad faith. 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.
Staniforth Ricketson
Sole Panelist
December 15, 2010
1 It is not stated whether this argument applies to all or only some of the marks listed in Annex C to the Complaint
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