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 United States of America.
The Respondent is VIPGeek LLC of Chicago, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2010. On October 25, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 26, 2010, eNom 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 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 17, 2010.
The Center appointed Angela Fox as the sole panelist in this matter on November 24, 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 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.
Mark and U.S. Reg. No.
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 word “carpet” or a similar word. These include:
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 January 15, 2010. It does not resolve to any website and appears not to be in use. 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 “carpet” and “chicago” in the disputed domain name are not capable of distinguishing it from the SHAW Trademarks, since the word “carpet” denotes the First Complainant’s field of business activity, and the word “Chicago” is a mere geographic descriptor.
The Complainants also submit that the Respondent has no rights or legitimate interests in the disputed domain name. 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 name. They submit that there is, moreover, no evidence that the Respondent has made any use of, nor any demonstrable preparations to use, the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. Finally, the Complainants say that the Respondent has not been making a legitimate noncommercial or fair use of the disputed domain name; indeed, they note that the Respondent has not been using it at all, since it resolves to a blank web page.
Finally, the Complainants contend that the disputed domain name was registered and has 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 name and, indeed, such knowledge must have prompted the registration. The Complainants further aver that the registration of the disputed domain name 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 website. The Complainants submit, moreover, that the Respondent’s passive holding of the domain name further constitutes evidence of use in bad faith. Finally, the Complainants refer to the First Complainant’s ownership of numerous domain names incorporating “shaw” and “carpet” or similar elements, and contend that the Respondent’s efforts to devise a variation not registered by the Complainants is itself evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s 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 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 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 domain name; and
(iii) the 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 name.
The remaining elements in the disputed domain names are the words “carpet” and “chicago.” The element “carpet” is directly descriptive of the First Complainant’s business under the SHAW Trademarks in the field of carpeting and flooring, which the Complainants say has been conducted since at least as early as 1985. The second additional element, “chicago”, is a mere geographical identifier referring to the well-known city in the United States, the country where the First Complainant’s business is based.
Panels have consistently found that the presence in a disputed domain name of mere geographic descriptors does not detract from confusing similarity with a complainant’s trademarks (see e.g., Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta,WIPO Case No. D2000-1118; and Jefferson Smurfit Group plc v. Stephen Davidson Inc.,WIPO Case No. D2000-1117; to name but a few).
The same is true of the presence of generic or non-distinctive matter, 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 v. VVNW Inc.,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; again, to name but a few).
In this case, the combination of elements within the disputed domain name is likely to cause Internet users to link the disputed domain name to the First Complainant and its SHAW-branded carpeting business, and the disputed domain name is likely overall to be taken as a reference to a Chicago branch of that business.
The Panel finds that the disputed domain name is 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 recognised that the information needed to prove such a right or legitimate interest is normally in the possession of respondents.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically 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 name. 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 name, nor that it has been commonly known by such a name. Moreover, the disputed domain name appears to resolve to a blank website, and there is no evidence that the Respondent has made any use of, nor any demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with any bona fide offering of goods or services, nor even in respect of any legitimate noncommercial or fair use.
The Respondent has not attempted to refute the Complainants’ assertions in this regard.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. 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 Respondent is based in the United States, where the First Complainant’s business is also predominantly based. Taking this into account, as well as the Complainants’ substantial investment in promoting the business under the SHAW Trademarks, the specific combination of elements within the disputed domain name and the absence of any explanation to the contrary from the Respondent strongly suggest that the Respondent knew of the First Complainant’s SHAW-branded carpeting business at the time the disputed domain name was registered and that, indeed, such knowledge prompted the registration. The specific combination of elements within the domain name is unlikely to be mere coincidence. In the Panel’s view, there is sufficient evidence to allow it to conclude that the disputed domain name was registered in bad faith.
That leaves, however, the question of whether the Respondent has also used the disputed domain name in bad faith. On this point, the Complainants contend that the Respondent should be found to have both registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, on the basis that, by using the domain name, the 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 the SHAW Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This paragraph is not, however, applicable to the facts of this case, since the wording of paragraph 4(b)(iv) requires that the Respondent have a website or other on-line location. In this case, the disputed domain name does not resolve to any website at all, not even a placeholder website. Consequently, any use the Respondent may have made must be described as merely passive, in the sense of passive holding.
Passive holding is generally recognized as falling within the concept of use under paragraph 4(a)(iii) of the Policy, but whether inaction should be regarded as bad faith use of a disputed domain name requires “[consideration of] all the circumstances of a [r]espondent’s behaviour” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Circumstances that panels have taken into account include:
(i) the extent of a complainant’s reputation;
(ii) whether a respondent has provided evidence of any actual or contemplated good faith use by it of the disputed domain name; and
(iii) whether, taking these factors into account, it is possible to conceive of any active use of the disputed domain name that would be both plausible and legitimate.
The Complainants contend that the Respondent’s passive holding of the disputed domain name should be regarded as bad faith use in line with the approach taken in Telstra, and indeed also by the panel in another recent case involving the Complainants and an allegation of passive holding (Shaw Industries Group, Inc., Columbia Insurance Company v. Zhang Tietao,WIPO Case No. D2007-1295).
The Panel agrees that the approach outlined in Telstra justifies a finding of bad faith use through passive holding in this case, as well, for the following reasons.
The Complainants claim, 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 use and promotion. Indeed, the combination of elements within the disputed domain name strongly suggests, in the absence of any evidence to the contrary, a knowledge of the First Complainant’s business under the SHAW Trademarks. The fact that the First Complainant owns so many other domain names incorporating the elements “shaw” and “carpet”, “carpets”, “carpeting” or similar elements also strongly points to a likely awareness of the SHAW Trademarks within the carpeting field at the time the disputed domain name was registered, since it is more likely than not that the Respondent would have encountered one or more of these variants when settling on the disputed domain name. As the Complainants contend, taken in the overall context of the Complainants’ rights, the registration of the disputed domain name looks very much like an attempt to register a domain name comprising a variant of the First Complainant’s domain names that had not already been registered.
It is difficult to conceive of any legitimate use of the disputed domain name by the Respondent, since the Respondent does not appear to have any rights or legitimate interests in the disputed domain name, and the combination of elements of which it is composed makes it inherently likely to mislead Internet users into believing that any website linked to it is that of, or is in some way related to, the First Complainant. The Respondent has chosen not to reply to the Complaint and therefore has not contested the Complainants’ assertions in this regard.
Taking all this into account, the Panel finds that the Respondent’s passive holding of the disputed domain amounts to use in bad faith.
The Panel therefore finds that the disputed domain name was registered and has been 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 disputed domain name, , be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: December 6, 2010
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