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.
The Respondent is Macrohard Properties Limited of Auckland, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain name. On November 3, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information for the disputed domain name.
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 November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2010.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 9, 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
Columbia Insurance Company as one of the Complainants is the sole and exclusive owner of the widely known United States registered trademarks SHAW United States Registration No. 2,291,182, which issued on November 9, 1999 and has been in use since at least as early as 1985, SHAW(and Design), Registration No. 2,692, 764, which issued on March 4, 2003 and has been in use since at least as early as 2001, and SHAW, Registration No. 2,877,500, which issued on July 29, 2003 and has been in use since at least as early as 2001 (collectively referred to as the “SHAW Registrations” or “SHAW Marks”).
In addition, the Complainants through Shaw Industries Group and have registered numerous domain names, including the following flooring-related domain names: , , , , , , , , , , , , , , , , , , , , , , , and .
The disputed domain name was registered on December 7, 2010. The website to which the disputed domain name resolves, appears to be designed to present Internet users with sponsored links containing advertisements for competing flooring products. Nothing is known about the Respondent except for the information incorporated in the registration of the disputed domain name. 5. Parties’ Contentions A. Complainants
The Complainants contend that:
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
- The disputed domain name contains the identical SHAW Registrations and SHAW Marks.
- The presence of the wording “hardwood-floors” does nothing to differentiate the domain name from the registered SHAW Marks, in light of the fact that Complainants own various trademark registrations for SHAW Marks in connection with hardwood flooring goods, as well as the mark SHAW HARDWOODS.
- The addition of the wording “hardwood-floors” simply lends more strength to the argument that the Respondent’s domain name is confusingly similar to the SHAW Marks, as hardwood flooring is the core business of the Complainants.
- The Respondent has no rights or legitimate interests in the disputed domain name.
- The Respondent is not listed as an owner of any United States trademark containing a formative of the term “shaw.”
- There any evidence that the Respondent owns any, or has applied for any United States trademark registrations.
- There is no evidence that the Respondent, as an individual, business or other organization, has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.
- the Respondent has made no use of, nor any demonstrable preparations to use, the disputed domain name or any name corresponding 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 disputed domain name.
- The disputed domain name was registered and is being used in bad faith.
- 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 Complainants’ Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
- The Respondent is familiar with the Complainants and its well-known trademarks.
- It is absent from the website under the disputed domain name any statement of any kind that makes it explicitly clear that the offending website is not associated with the Complainants in order to reduce the likelihood of confusion as to the existence of such an association.
- There are numerous references to flooring-related products on the website at the disputed domain name, including, when searching for competitors of the Complainants, products from the Complainants’ competitors.
- The website under the disputed domain name appears to be designed to present Internet users with sponsored links containing advertisements for competing flooring products. Thus, the website potentially derives revenue from “click-throughs,” labeled as “Sponsored Listings,” from confused web users who were looking for the Complainants’ website or information about Complainants.
- The website under the disputed domain name appears to continuously change in appearance and layout, which further evidences its bad faith use and registration. The content of the hyperlinked pages also appears to rotate upon each visit to the website. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar A.1. The Complainants hold rights in the SHAW® trademarks
The Complainants have provided evidence showing that one of them is the owner of the registered trademarks SHAW United States Registration No. 2,291,182, which issued on November 9, 1999 and has been in use since at least as early as 1985, SHAW(and Design), Registration No. 2,692, 764, which issued on March 4, 2003 and has been in use since at least as early as 2001, and SHAW, Registration No. 2,877,500, which issued on July 29, 2003 and has been in use since at least. The Panel is satisfied in considering that the Complainants through one of them hold rights in the SHAW trademarks. A.2. The disputed domain name is confusingly similar with the Complainants’ SHAW trademarks
The disputed domain name in this proceeding, , contains the identical SHAW Registrations and SHAW Marks, by which it was added the wording “hardwood-floors”. The presence of this wording does not mitigate the confusing similarity between the disputed domain name and the Complainants’ SHAW trademarks.
As the Complainants assert, the addition of the wording “hardwood-floors” simply lends more strength to the argument that Respondent’s domain name is confusingly similar to the SHAW Marks, as hardwood flooring is the core business of the Complainants.
Prior UDRP panels have recognized many times that the incorporation of a trademark in its entirety in a domain name may be generally sufficient to establish that such a domain name is identical or confusingly similar to the Complainants’ registered mark. See EAuto L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 and F. Hoffmann-LaRoche AG v. George McKennitt,WIPO Case No. D2005-1300, Hoffmann-La Roche Inc. v. Patsy Hail,WIPO Case No. D2008-1343, E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206 Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
It is also now well established that the confusing similarity thus created is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.
For all these reasons the Panel finds that the disputed domain name is confusingly similar to the Complainants‘ trademarks and that the Complainants have accordingly established the first of the three elements that they must prove. B. Rights or Legitimate Interests
Based on the evidence provided in the case file by the Complainants, the Panel is persuaded that the Respondent has no rights or legitimate interests in the disputed domain name.
There is no evidence that the Respondent owns any, or has applied for any, trademark registration. There is no evidence that the Respondent, as an individual, business or other organization, has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.
On the website under the disputed domain name, there are numerous references to flooring-related products, including, when searching for competitors of the Complainants, products from the Complainants’ competitors. In addition, the website under the disputed domain name appears to be designed to present Internet users with sponsored links containing advertisements for competing flooring products. Thus, the website potentially derives revenue from “click-throughs,” labeled as “Sponsored Listings,” from confused web users who were looking for the Complainants’ website or information about Complainants.
The content of the website under the disputed domain name represents, in the Panel view, a indication, that Respondent was interested in obtaining the disputed domain name only because of its similarity to a name in which the Complainants have rights and an interest.
As prior UDRP Panel held “this was most likely done in the “hope and expectation that internet users searching for the Complainants (and Shaw Industries Group, Inc. in particular) would instead come across the Respondent’s site”. See Shaw Industries Group, Inc.Columbia Insurance Co. v. Administrator, Domain,WIPO Case No. D2007-0583.
Having considered the content of the website, the Panel concludes that the Respondent has made no use of, nor any demonstrable preparations to use, the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods or services.
Accordingly, the Panel concludes that Complainants have established, also, the second of the Policy three elements that they must prove. C. Registered and Used in Bad Faith
The Panel agrees with the Complainants that the Respondent’s bad faith in registering and using the domain name is demonstrated by numerous facts in this case.
As mentioned above, the website under the disputed domain name contains numerous references to flooring-related products, including, when searching for competitors of the Complainants, products from the Complainants’ competitors. Such use together with the entire reproduction of the Complainants’ Marks in the disputed domain name is, in the panel’s view, an obvious indication that the Respondent is familiar with the Complainants’ name and their well-known trademarks.
Moreover, the website under the disputed domain name appears to be designed to present Internet users with sponsored links containing advertisements for competing flooring products. Thus, the website potentially derives revenue from “click-throughs”, labeled as “Sponsored Listings,” from confused web users who were looking for a Complainants’ website or information about the Complainants. Lastly, as the Complainants noted, it is absent from the disputed domain name website any statement of any kind that makes it explicitly clear that the said website is not associated with the Complainants in order to reduce the likelihood of confusion as to the existence of such an association.
All these elements represent a strong case against the Respondent that it intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel finds therefore that the Complainants have proved also the third element of the Policy. 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 Complainants.
Beatrice Onica Jarka
Sole Panelist
Dated: December 23, 2010
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