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, of Northfield, Illinois, United States of America.
The Respondent is Belize Domain WHOIS Service Lt of Belize 2. The Domain Names and Registrar
The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 6, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On October 6, 2010, Intercosmos Media Group d/b/a directNIC.com, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2010.
The Center appointed Angela Fox as the sole panelist in this matter on December 2, 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 Complainants are related companies owned by Berkshire Hathaway, Inc., a diversified company based in Omaha, Nebraska, United States of America, with trading activities in a range of different commercial fields. Shaw Industries Group, Inc. (“the First Complainant”) is a carpeting and flooring manufacturer. Columbia Insurance Company (“the Second Complainant”) is an insurance company, but holds the trademark registrations for SHAW and related marks relied on in this Complaint.
In particular, the Second Complainant is the proprietor of the following registered trademark rights in SHAW and marks incorporating SHAW in the United States, dating from as early as 1999 and covering carpeting, flooring, and related goods and services.
Trademark United States Registration Number
SHAWMARK
1,650,849
SHAW
2,291,182
COUTURE BY SHAW (and Design)
2,547,524
SHAW CERAMICS
2,577,579
SHAW HARDWOODS
2,587,494
SHAW HOSPITALITY
2,675,008
SHAW LAMINATES (and Design)
2,677,907
SHAW (and Design)
2,692,764
SHAW WHERE GREAT FLOORS BEGIN (and Design)
2,774,722
SHAWGARD
2,795,208
SHAW CONTRACT
2,811,298
SHAW
2,877,500
SHAWSHIELD
2,924,696
SHAWSHIELD (and Design)
2,924,697
SHAW FIBERS
2,951,390
SHAW LIVING
3,010,847
SHAW INNOVATION
3,053,066
SHAW CONTRACT GROUP
3,191,367
SHAW GREEN EDGE
3,427,557
SHAW GREEN EDGE INITIATIVE
3,447,349
THAT’S THE SHAW GREEN EDGE (and Design)
3,447,442
THAT’S THE SHAW GREEN EDGE
3,447,443
SHAW GREEN EDGE (and Design)
3,496,445
SHAW PROPERTY SOLUTIONS
3,573,882
SHAW (and Design)
3,626,424
SHAW
3,626,430
SHAW (and Design)
3,626,431
SHAW
3,688,456
SHAW VISIONS
3,691,119
SHAW (and Design)
3,825,135
SHAW
3,828,340
The First Complainant also owns numerous domain name registrations incorporating SHAW, including many that incorporate the words “flooring”, “hardwood”, “laminate” or similar words or combinations of words. These include: ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and .
Since at least as early as 1985, the First Complainant has been using the trademark SHAW and marks incorporating SHAW (“the Shaw Trademarks”) in relation to the manufacture and sale of carpeting, flooring and related goods. The Complainants state that they have spent millions of dollars displaying, promoting and advertising the SHAW brand and that, as a result, the First Complainant has become one of the leading carpeting and flooring companies in the United States and is well-known internationally.
The disputed domain name was registered on November 4, 2005. The disputed domain name was registered on January 15, 2004.
Both domain names appear to be in use for pay-per-click landing sites including links to websites offering products of the First Complainant’s competitors in the fields of flooring, including hardwood and laminate flooring. 5. Parties’ Contentions A. Complainant
The Complainants submit that the disputed domain name is confusingly similar to the Second Complainant’s registered trademarks comprising and incorporating Shaw. They contend that the presence of the descriptive words “hard wood flooring” and “laminate” in the disputed domain names are not capable of distinguishing them from the SHAW Trademarks, since these words merely denote types of flooring products in which the First Complainant trades and which, indeed, form part of its core business.
The Complainants also submit that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent does not appear to own any U.S. trademark applications or registrations comprising or containing Shaw, nor is there any evidence that the Respondent has been commonly known by the disputed domain names. The Complainants submit that there is, moreover, no evidence that the Respondent has made any use of, nor any demonstrable preparations to use, the disputed domain names or corresponding names in connection with a bona fide offering of goods or services. Further, the Complainants say that the Respondent has not been making a legitimate non-commercial or fair use of the disputed domain names.
Finally, the Complainants contend that the disputed domain names were registered and have been used in bad faith. In particular, they say that given the First Complainant’s extensive use of the SHAW Trademarks and the Complainants’ considerable investment in promoting them, the Respondent must have known about the Complainants’ rights when it registered the disputed domain names and that, indeed, such knowledge must have prompted their registration. The Complainants further aver that the registration of the disputed domain names constitutes opportunistic behaviour and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the SHAW Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. Finally, the Complainants refer to the First Complainant’s ownership of numerous domain names incorporating “shaw”, “hardwood”, “laminate”, “flooring” or combinations of these or of similar words, and contend that the Respondent’s efforts to devise variations not protected by the Complainants is itself evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide this matter on the basis of the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The materials annexed to the Complaint show that the Second Complainant owns registered trademark rights in SHAW and marks incorporating Shaw in respect of carpeting, flooring and related goods and services. The word Shaw appears in its entirety in the disputed domain names.
The remaining elements in the disputed domain names are the words “hard wood flooring” and “laminate.” Both are directly descriptive of types of flooring products in which the First Complainant trades under the SHAW Trademarks, in a business which the Complainants say dates from at least as early as 1985.
UDRP panels have consistently found that the presence in a disputed domain name of generic or non-distinctive terms does not detract from confusing similarity with a complainant’s trademarks, and confusion is, moreover, particularly likely where additional matter in a disputed domain name is descriptive of a complainant’s field of business activity (see e.g. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625, where the panel stated that “confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”; see also Jefferson Smurfit Group plc v. Stephen Davidson Inc.,WIPO Case No. D2000-1117 and American Automobile Association, Inc. v AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; to name but a few).
In this case, the combination of elements within the disputed domain names is inherently likely to cause Internet users to link them to the First Complainant and its SHAW-branded hardwood and laminate flooring business.
The Panel finds that the disputed domain names are confusingly similar to the Second Complainant’s registered trademarks. B. Rights or Legitimate Interests
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognized that the information needed to prove such a right or legitimate interest is usually in the possession of respondents.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the respondent carries the burden of showing that he does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case, the Complainants have put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. There is nothing on the record to indicate that the Respondent might enjoy such a right or legitimate interest. As noted by the Complainants, there is no evidence that the Respondent owns any trademark rights in a name corresponding to the disputed domain names, nor that it has been commonly known by such names.
Moreover, there is no evidence that the Respondent has made any use of, nor any demonstrable preparations to use, the disputed domain names or names corresponding to them in connection with any bona fide offering of goods or services, nor any legitimate non-commercial or fair use.
The Respondent has not attempted to refute the Complainants’ assertions in this regard.
The Panel notes that the Respondent’s use of the disputed domain names in respect of what appear to be pay-per-click landing pages featuring links to websites offering products of the First Complainant’s competitors in the fields of hardwood and laminate flooring. Such unauthorized use of domain names, incorporating the SHAW trademark and descriptors relevant to the First Complainant’s business in order to attract Internet users to landing pages promoting competing businesses, does not give rise to a legitimate right or interest in the disputed domain names. The disputed domain names are inherently likely to mislead Internet users, and their attractiveness as addresses for landing pages is bound up in their combination of the Complainants’ distinctive SHAW trademark with descriptive words directly relevant to the First Complainant’s business. The Panel finds that the disputed domain names are likely to draw in Internet users familiar with the First Complainant’s SHAW-branded products, who are seeking websites relating to them. Such use cannot give rise to a legitimate right or interest in the disputed domain names (see e.g. mVisible Technologies Inc v. Navigation Catalyst Systems, Inc,WIPO Case No. D2007-1141, “If the links on a given landing page...are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally… constitute abusive cybersquatting”; and similarly, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340; and Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-03530).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainants contend, and the Respondent has not denied, that the SHAW Trademarks are well-known in the United States and worldwide in connection with carpeting and flooring products as a result of the Complainants’ substantial investment in promoting and selling products under them for some 20 years.
The websites linked to the disputed domain names include links to websites offering flooring products and services of the First Complainant’s competitors. Taking this into account, as well as the Complainants’ substantial investment in promoting the business under the SHAW Trademarks and the specific combination of elements within the disputed domain names, it is in the Panel’s view inconceivable that the Respondent did not know of the First Complainant’s SHAW-branded flooring business at the time the disputed domain names were registered. Indeed, in the Panel’s view, it is likely that such knowledge prompted their registration.
Under paragraph 4(b)(iv) of the Policy, the Panel is entitled to find both registration and use in bad faith where there is evidence that by using a domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on it.
In this case, it appears likely to the Panel that the Respondent deliberately set out to derive pay-per-click revenue from Internet users by creating a likelihood of confusion with the Complainants’ SHAW Trademarks. It adopted confusingly similar domain names and used them to host pay-per-click links to third-party websites offering products in the field of hardwood and laminate flooring, which is part of the core business of the First Complainant. Moreover, it is evident from the materials annexed to the Complaint as well as from the current use of the disputed domain names that many of the links also incorporate the trademark SHAW (in references such as “Shaw Laminate”, “Shaw Laminate Flooring Sale”, “Cheap Shaw Hardwood Flooring”, “Wholesale Shaw Hardwood Flooring”, etc.), but that the links resolve to websites offering products of competitors of the First Complainant.
Such conduct is inherently misleading, and the use of confusingly similar domain names to lure Internet users to a pay-per-click landing site hosting links to providers of competing products or services is prima facie evidence of bad faith (see inter alia American Automobile Association, Inc. v Texas International Property Associates, WIPO Case No. D2007-0592, supra; mVisible Technologies Inc v. Navigation Catalyst Systems, Inc,WIPO Case No. D2007-1141, supra; Mudd, LLC v. Unasi, Inc.,WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556).
The Panel is satisfied that the disputed domain name has been registered and used 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 names and be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: December 14, 2010
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