The Complainants are Shaw Industries Group, Inc. and Columbia Insurance Company, of Dalton, Georgia, United States of America; and Omaha, Nebraska, United States of America, respectively, represented by Neal & McDevitt, United States of America.
The Respondent is Texas Best Flooring Company, Inc and Texas Best Flooring Distributor of Dallas, Texas, United States of America represented by One LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“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 March 10, 2011. On March 11, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On March 14, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details 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 March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Response was filed with the Center on April 6, 2011. The Respondent submitted an amended Response on April 7, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 26, 2011. 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.
Without offering any other reason for seeking to file a Supplemental Filing, the Complainants sought to do so on April 13, 2011 “in order to clarify statements made by the Respondent in its Response.” The following day, on April 14, Respondent objected to Complainants’ Supplemental Filing and moved to strike it as improper and inadmissible.
The general consensus regarding the admissibility of unsolicited supplemental filings is that “[t]he party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, § 4.2. In addition, Panels that have admitted such filings typically require a showing of exceptional circumstances.
Here, Complainants offer no explanation as to why they were unable to provide the information in their Supplemental Filing along with their initial Complaint. Complainants can hardly have failed to anticipate that Respondent might discuss prior cases involving Complainants; indeed, Complainants themselves discuss three such cases in the Complaint. Moreover, a search of the Center’s cases indicates Complainants have initiated at least 29 prior UDRP cases, several of which have involved the very issue that is the focus of Complainants’ Supplemental Filing, namely, whether one who distributes Complainants’ goods may register and use a domain name incorporating Complainants’ marks. In addition, Complainants do not even attempt to identify “exceptional” circumstances that would justify the admission of Complainants’ additional evidence and arguments. Thus, Complainants’ Supplemental Filing will not be considered. 4. Factual Background
Complainants, 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., and have a common interest in the Disputed Domain Name.
Complainants own numerous trademark registrations in the United States for its SHAW mark (“the SHAW Marks”), and various formatives thereof, for carpeting and flooring. Complainants have used the SHAW mark in connection with carpets since 1985. Complainants have also registered numerous carpeting-related domain names.
Respondent registered the Disputed Domain Name on January 14, 2011. 5. Parties’ Contentions A. Complainants
Complainants contend that they have used the SHAW Marks in connection with carpeting and flooring for about twenty-five years, and spent millions of dollars displaying, advertising and promoting the SHAW Marks.
Complainants further contend that the Disputed Domain Name is confusingly similar to the SHAW Marks. The addition of the descriptive words “carpet” and “dallas” fails to differentiate the Disputed Domain Name from SHAW Marks, as “carpet” relates to Complainants’ carpeting goods, and “dallas” simply describes Respondent’s location.
Complainants further contend that Respondent has no right or legitimate interest to its use of the Disputed Domain Name. Respondent does not own and has not applied for any trademark registrations containing the formative “Shaw.” There is no evidence that Respondent has been commonly known by the Disputed Domain Name. Complainants assert that Respondent has not made demonstrable preparations to use the Disputed Domain Name, as evidenced by the fact that Respondent used the domain name as a parking page hosting pay-per-click advertisements.
Complainants also contend that Respondent is not authorized to use the SHAW Marks in connection with the Disputed Domain Name, especially because it contains links to competitors. Complainants conclude that Respondent likely registered the Disputed Domain Name with the hope that Internet users searching for Complainants would instead discover Respondent’s website due to its similarity to the SHAW Marks.
Complainants further contend that Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the SHAW Marks as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent uses the Disputed Domain Name to offer links to competing carpeting products. Complainants conclude that, given Complainants’ ownership of numerous related domain names, Respondent went to the trouble of devising a variation of the SHAW Marks not contemplated by Complainants. B. Respondent
Respondent acknowledges that the weight of authority supports a finding that the Disputed Domain Name is confusingly similar, but argues that the fact that Complainants do not hold a trademark registration to the mark SHAW CARPETS undermines Complainants’ claim that carpeting is one of their core businesses, and casts doubt on the veracity of Complainants’ representations. Respondent further notes that all cases cited by Complainants in discussing the first element of the Policy were cases in which Respondent did not reply.
Respondent further contends that between registration of the Disputed Domain Name and receiving notice of the Complaint, it made preparations to use the Disputed Domain Name in connection with a bona fide offering of carpeting and flooring goods and services. Respondent contends that it is a legitimate business that sells flooring and carpet. Respondent contends that since its founding in 2009, it has sold hundreds of thousands of dollars’ worth of flooring and carpeting. Respondent further contends that one of Complainants’ agents left a voicemail which acknowledged a business relationship between the parties.
Respondent further contends that it does not intend to bait Internet users with the Disputed Domain Name and then switch them to other goods. Respondent argues that offering other goods for sale alongside a complainant’s trademarked goods does not amount to bait-and-switch tactics, and therefore does not preclude a finding that a respondent has rights in the mark under the Oki Data test. Respondent contends that it was unaware that GoD, Inc., the domain name registrar, was using the Disputed Domain Name as a parking page for pay-per-click advertisements of Complainant’s competitors. If given the opportunity, Respondent asserts it will include a disclaimer on the web page to which the Disputed Domain Name resolves clarifying that Respondent and Complainants are not affiliated.
Respondent further contends that it has not registered and used the Disputed Domain Name in bad faith, as evidenced by a voicemail left for Respondent (and submitted to the Panel) by an agent of Complainants, which allegedly recognizes that Respondent is a legitimate dealer of Complainants’ carpets. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainants have provided sufficient evidence to establish that Columbia Insurance Company is the owner of numerous SHAW trademark registrations and that Shaw Industries Group, Inc. is the owner of numerous carpeting-related domain names incorporating the SHAW Marks.
Because Complainants do not have a trademark registration for the phrase , the issue is not whether the Disputed Domain Name and Complainants’ SHAW Marks are identical, but whether they are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainants’ SHAW word mark; (2) the suffixes “carpet” and “dallas”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “shawcarpetdallas”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Adding “carpet” to the SHAW mark is descriptive of Complainants’ field of business, and thus does not mitigate the confusing similarity. See Shaw Industries Group, Inc., Columbia Insurance Company v. VIPGeek LLC,WIPO Case No. D2010-1783 (finding confusingly similar). While the addition of “dallas” as a suffix to the SHAW mark is not descriptive of Complainant’s goods or services, it is not sufficient to dispel the confusing similarity between the Disputed Domain Name and Complainant’s SHAW Marks.
For the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to Complainants’ SHAW Marks, in which Complainants have established rights. Therefore, the Panel finds that Complainants have proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainants contend that Respondent has no rights in the SHAW Marks, is not commonly known by the Disputed Domain Name, is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Name, and has not been authorized to use Complainants’ Marks.
Respondent argues that under Oki Data it has made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods, and therefore has established rights in the Disputed Domain Name. Oki Data identified four requirements of a bona fide offering:
(i) A respondent must actually be offering the goods or services at issue;
(ii) A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(iii) A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
(iv) A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.
Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Though Respondent does not dispute that the Disputed Domain Name was being used by the registrar to host pay-per-click advertisements featuring links to competing goods, it argues that “the mere fact that [a respondent] sells other goods alongside the trademarked goods does not diminish its rights and legitimate interests in the domain name.” In support of this argument, Respondent cites Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey,WIPO Case No. D2007-0555, a case in which a panel refused to transfer from an authorized dealer to complainant despite the fact that the domain name was being used to host pay-per-click advertisements featuring competing products. That panel departed from the consensus view that a respondent is generally responsible for pay-per-click advertising, even if the advertising is generated “automatically”. See WIPO Overview 2.0, §§ 2.6 and 3.8. However, a three-member panel subsequently transferred the same domain name because, after the first decision, Complainant terminated the authorized dealer relationship and the domain name owner continued hosting pay-per-click advertisements to competing products. Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc.,WIPO Case No. D2007-1856.
This Panel sees no reason to depart from the general view that owners of a domain name will be held responsible for pay-per-click advertising hosted on the domain name, even if placed there by a registrar. Here, it is undisputed that the Disputed Domain Name hosted pay-per-click advertisements to competing goods.
Moreover, Respondent’s promises to “take every step possible to cause GoD, Inc. to cease this activity” and to use a disclaimer ring hollow. In Respondent’s Declaration, Mr. Hill, Respondent’s founder, stated that Respondent “has prepared to use the domain name in connection with a legitimate business objective, namely to direct interested customers to its website where they can find the carpets in which they are interested, including Shaw-brand carpets.” (emphasis added). Even if pay-per-click links to competitors’ carpets were removed in the future, Respondent apparently intends to use the Disputed Domain Name to direct customers to a website where Complainants’ goods will be offered alongside competitors’ carpets. Such use is inconsistent with the Oki Data requirement that “[a] respondent must use the website to sell only the trademarked goods,” and Respondent therefore has not made preparations to use the domain in connection with a bona fide offering of goods.
Because Complainants have demonstrated that Respondent lacks rights or legitimate interests in the Disputed Domain Name, Complainants have proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy Paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s website. Registered In Bad Faith
The Panel finds that Respondent knew of Complainants’ marks when it registered the Disputed Domain Name – indeed, Respondent admits as much by explaining that it distributes Complainants’ goods. Moreover, Respondent’s evidence that Complainants were aware that Respondent sold their goods does not amount to an authorization to register a domain name incorporating Complainants’ SHAW Marks. Although the voicemail left with Respondent by Complainant’s agent may show a business relationship, it does not rebut Complainants’ allegation that Respondent is not authorized to use the SHAW Marks in connection with the Disputed Domain Name.
Based upon the foregoing evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. Use In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. It is well established that using a domain name which incorporates a trademark to advertise the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537.
Here, Respondent has failed to provide a disclaimer to explain that no affiliation exists between Respondent’s website and Complainants. More importantly, Respondent has allowed the Disputed Domain Name to be used to promote the goods and services of Complainants’ competitors. See The Vanguard Group, Inc v. Venta,WIPO Case No. D2001-1335 (finding bad faith where redirected to website offering competing financial services). In addition, Respondent has indicated that its future plans for the Disputed Domain Name apparently involve using it to direct potential Internet customers of Complainants to a website offering competing goods for sale. Together, this conduct demonstrates the sort of bad faith use described under Policy Paragraph 4(b)(iv).
For all of the foregoing reasons, this Panel finds that Complainants have proven that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainants have proven the third and final 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 Complainants.
Michael A. Albert
Sole Panelist
Dated: May 11, 2011
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