The Complainants are Shaw Industries Group, Inc. of Dalton, Georgia, United States of America and Columbia Insurance Company of Omaha, Nevada, United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is Registration Private / Domains by Proxy, Inc / longxi xie of Scottsdale, Arizona, United States of America and Fujian, China, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2011. On March 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2011, the Registrar 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 March 17, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 18, 2011.
The Center verified that the Complaint together with the amendment to 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 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on April 27, 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. 4. Factual Background
The Complainants are related companies wholly-owned by Berkshire Hathaway, Inc., and have common interest in the disputed domain name. The Complainants are the owners in the United States of America of the trademark SHAW and various formatives thereof, in respect of carpeting and flooring. These include United States Registration No. 2,291,182, issued on November 9, 1999 and used since as early as 1985; United States Registration No. 2,692,764, issued on March 4, 2003 and used since at least as early as 2001; and United States Registration No. 2,877,500, issued on July 29, 2003 and used since at least as early as 2001 (collectively referred to as the “SHAW trademark registrations”/ “SHAW marks”).
In addition, the Complainants own numerous domain name registrations including the following “flooring-related” domain names: , , , , , , etc.
The Complainants assert that since as early as 1985, the SHAW marks have been prominently used in connection with carpeting and hardwood flooring-related goods and that millions of dollars have been spent on displaying, promoting, and advertising the SHAW marks, albeit no specific evidence in support was submitted. The Complainants claim that as a result of these efforts, they are one of the leading carpeting and flooring companies in the United States and are well-known internationally. 5. Parties’ Contentions A. Complainant
The Complainants contend that:
(a) the disputed domain name is identical or confusingly similar to the SHAW marks in which they have rights (paragraph 4(a)(i) of the Policy);
(b) the Respondent has no rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy); and
(c) the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
With respect to paragraph 4(a)(i) of the Policy, the Complainants submit that the fact that the disputed domain name contains a trademark owned by the Complainants leads to the inevitable conclusion that the disputed domain name is confusingly similar to a mark in which the Complainants have rights. Not only does the disputed domain name contain the SHAW mark, but the descriptive words “wood” and “flooring” are also included. The presence of these descriptive words does nothing to differentiate the disputed domain name from the SHAW marks. In light of the Complainants’ SHAW trademark registrations in connection with hardwood flooring, as well as various “shawflooring” formative domain names including , the addition of the words “wood” and “flooring” to the disputed domain name simply lends more strength to the argument that the disputed domain name is confusingly similar to the SHAW marks. Hardwood flooring being a core business of the Complainants, the Respondent’s use of the disputed domain name potentially harms the Complainants’ goodwill. The addition of the gTLD “.info” in the disputed domain name does not affect the likelihood of confusion as gTLDs are an irrelevant distinction.
With respect to paragraph 4(a)(ii) of the Policy, the Complainants contend that:
(i) The Respondent is not listed as an owner of any United States trademark containing a formative of the term “Shaw”, nor is there any evidence that the Respondent owns or has applied for any United States trademark registration for SHAW. Moreover, there is no evidence that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.
(ii) The Respondent has made no use of, nor any demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
(iii) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent appears to be using the SHAW marks on its website in a misleading fashion, linking to various articles about types of flooring (inferring that ‘’Shaw’’ is a type, and not a brand, of flooring). Further, the Respondent is also using the SHAW marks in direct proximity to its competitors.
(iv) The Respondent is not authorized to use the SHAW marks in connection with its website, particularly in light of the fact that the website includes references to competitors of the Complainants. The Respondent has clearly acquired the disputed domain name with no apparent intention of utilizing it in connection with the provision of legitimate goods or services.
(v) The Complainants’ extensive list of registered domain names incorporating the SHAW mark demonstrates that the Respondent does not have a right or legitimate interest in respect of the disputed domain name.
(vi) It is likely that the Respondent was interested in obtaining the disputed domain name because of its similarity to a name in which the Complainants have rights and interest. This was most likely done in the hope and expectation that Internet users searching for the Complainants would, instead, come across the Respondent’s website. Such use of domain names does not provide a legitimate interest under the Policy. Reference was made to Shaw Industries Group, Inc. Columbia Insurance Co. v. Administrator, Domain,WIPO Case No. D2007-0583, citing Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267.
With respect to paragraph 4(a)(iii) of the Policy, the Complainants contend that:
(a) The Complainants’ SHAW marks are well-known worldwide in connection with carpeting and flooring products due to the millions of dollars they have expended promoting, selling and advertising products under the SHAW marks. Moreover, the Complainants continue to maintain ongoing business operations in the United States and throughout the world. The Respondent is using a domain name identical or confusingly similar to a trademark in which the Complainants have rights. By using the disputed domain name, 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 SHAW marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
(b) It is likely that the Respondent was aware of or familiar with the Complainants, their flooring products, and their well-known SHAW marks. The registration of a domain name incorporating a well-known trademark, of which the Respondent must reasonably have been aware, constitutes opportunistic bad faith. (Reference was made to Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). There are numerous references to flooring-related products on the offending websites, including products from competitors of the Complainants.
(c) According to the Complainant, it is obvious that the Respondent went “to the trouble of devising another variation not contemplated by the Complainants”. Previous panels appointed by the Center have viewed such efforts as evidence of bad faith. Moreover, Domains by Proxy, Inc. is listed as the registrant of the disputed domain name. This service allows an entity to get around a “public” registration to create a “private” one by using the private registration process, thus letting the true registrant hide behind the name Domains by Proxy. B. Respondent
The Respondent did not reply to the Complainants’ contentions. The Respondent, Longxi Xie, however, corresponded with the Center by email on March 18, 2011 and March 21, 2011. The first email read as follows: “I do not understand what happened about the domain name dispute. Why Domain Name Dispute?”; the second read as follows: “Hello, What materials do I need to prepare, If I choose not to accept this invitation to file an amendment to the Complaint”.
The Center replied to the Respondent by email on March 21, 2011, acknowledging receipt of both email communications and directing the latter’s attention to the Response filing guidelines available on the Center’s website. However, the Respondent did not file a formal Response. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
There being no Response filed, pursuant to paragraph 5(e) of the Rules, the Panel, in the absence of exceptional circumstances, is to decide the dispute on the basis of the Complaint. A. Identical or Confusingly Similar
The Complainants have put forward sufficient evidence to prove that it has rights to the SHAW marks. The remaining issue therefore is whether the disputed domain name is identical or confusingly similar to the SHAW mark.
The only difference between the domain name and the SHAW mark are the additional words “wood flooring” and the gTLD “.info”. It has indeed been established in previous panel decisions that “[t]he mere addition of a descriptive term to an identical trademark … [is] not sufficient to avoid confusion between the domain name and the trademark”. (See e.g. Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709). In view of the Complainants’ core business, namely in hardwood flooring, the annexing of the descriptive words “wood flooring” to the SHAW mark in the disputed domain name further adds to the confusing similarity. The addition of the gTLD “.info” to the disputed domain name also does not avoid confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ SHAW marks. Accordingly, the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The following are examples of circumstances whereby a respondent may show it has rights or legitimate interests in a particular domain name (paragraph 4(c) of the Policy):
“(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”.
Despite the opportunity that was made available, the Respondent did not submit any evidence showing that it has any rights or legitimate interests in the disputed domain name. The second email communication of March 21, 2011 which was sent by Longxi Xie suggests that the Respondent did consider its options. The Panel can only surmise from the fact that no Response was filed is that the Respondent chose not to participate in these proceedings because it was unable to show that it has rights or legitimate interests in the disputed domain name.
Moreover, the evidence presented by the Complainants shows that the Respondent has no authority or permission to use the SHAW marks in any manner. There is also no evidence that the Respondent is known by the disputed domain name. From the evidence, it appears that the Respondent registered the disputed domain name with full knowledge of the Complainants and/or of its SHAW marks, for the purpose of misleading Internet users and diverting consumers to its website. This does not amount to a legitimate noncommercial or fair use of the disputed domain name.
In the circumstances, the Panel finds that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)(ii) of the Policy has accordingly been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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.”
Based on the Complainants’ assertions and evidence presented which have not been refuted by the Respondent, the Panel is satisfied that the choice of the disputed domain name was made by the Respondent specifically with the Complainants and their SHAW marks in mind. The Panel agrees that the Respondent is probably familiar with the Complainants and/or its SHAW marks, as well as its flooring products, and therefore registered the disputed domain name in order to create an association with the Complainants and its SHAW flooring products for the purpose of attracting Internet users to its website. The Panel finds that the circumstances of this case indicate that the Respondent “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 Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location”. The Panel also finds the inclusion of references on the Respondent’s website to the Complainants’ competitors to constitute bad faith use and registration.
Accordingly, the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Francine Tan
Sole Panelist
Dated: May 5, 2011
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