Complainants are Shaw Industries Group, Inc. of Dalton, Georgia, and Columbia Insurance Company of Omaha, Nebraska, both of United States of America and represented by Neal & McDevitt, LLC, of the United States of America.
Respondent is Royce Southerland of Bemidji, Minnesota, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 28, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Names. On September 28, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Names. 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. A Response was filed with the Center on October 5, 2011.
On October 10, 2011, Complainant filed a Motion to Submit a Reply to the Response, together with such Reply.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 25, 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
Complainants Shaw Industries Group, Inc. and Columbia Industries Company are related companies, owned by the same parent company. Complainants are in the flooring industry. They are the owners of various marks for flooring and flooring-related products and services including SHAW (United States (“U.S.”) Trademark Registration Nos. 2,291,182; 2,877,500; 3,626,430; 3,688,456; and 3,828,340). Complainants also own several marks with formatives of the mark SHAW, containing other words, such as SHAW HARDWOODS (U.S. Trademark Registration No. 2,587,494); SHAW LAMINATES, and design (U.S. Trademark Registration No. 2,677,907); SHAWMARK (U.S. Trademark Registration No. 1,650,849) and COUTURE BY SHAW, and design (U.S. Trademark Registration No. 2,547,524).
Complainants also hold the registrations for numerous domain names, including ; ; ; ; ; and Complainants offer a line of HGTV Shaw flooring products, which they advertise on the URL associated with their domain name
The Disputed Domain Names were registered on May 28, 2012. Respondent has apparently not used the Disputed Domain Names to link to active web sites.
Respondent is an Authorized Dealer with Complainant Shaw Industries, Inc., authorized by contract to sell HGTV SHAW flooring products. 5. Parties’ Contentions A. Complainant
Complainants contend that: (i) the Disputed Domain Names are identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondent registered and is using the Disputed Domain Names in bad faith.
In the Complaint, Complainants state that, “Shaw dealers are permitted to use the SHAW® Marks or SHAW® Registrations in their advertising, but only in accordance with the Shaw advertising guidelines.” (Complaint at page 14). Complainants further state “[t]here is no agreement between Shaw and Respondent that authorizes Respondent to use Complainant’s Marks in or as a domain name.” Id. B. Respondent
Respondent contends that as an Authorized Dealer of HGTV SHAW flooring, he has a legitimate right to use Complainants’ marks as part of his domain name. In particular, Respondent notes that “[w]e have not entered into any agreements with Shaw that limits us to specific ecommerce rules with regards to our vender and/or vendee relationship, or URL usage.” (Response of October, 5, 2011). In support of this assertion, Respondent submitted a copy of his Authorized Dealer agreement with Complainant Shaw, which discusses advertising, but is silent regarding use of marks. 6. Preliminary Procedural Issues
As a preliminary matter, the Panel notes that Complainants submitted a Motion to submit a to Reply to the Response, together with the reply, shortly after Respondent submitted his response. Although there is not provision in the rules for filing supplementary papers except in response to notifications of deficiency by the Center, the Panel finds the additional information useful and has considered all submissions herein. See BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038. 7. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the Disputed Domain Names are “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that both of the Disputed Domain Names meet that standard. Both of the Disputed Domain Names incorporate in full the Complainants’ registered trademark SHAW.
Both of the Disputed Domain Names add a generic or descriptive term, “flooring” or “floors” as well as the mark “HGTV,” owned by Complainants’ partner, with whom Complainants are doing business in flooring, and for which Respondent has a contract to sell floors and flooring.
The Panel finds that the added words “flooring” or “floors” in the Disputed Domain Names would be perceived by Internet users as descriptive of a website where they could find information about “flooring” or “floors” sold under the HGTV/SHAW marks.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web,WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0620; General Electric Company v. Recruiters,WIPO Case No. D2007-0584. Indeed, as stated previously, Complainant itself has registered various marks including SHAW with other terms, such as SHAW HARDWOODS; SHAW LAMINATES (and design); SHAWMARK; and COUTURE BY SHAW, and design. Similarly, Complainants own domain names including the mark SHAW with various formatives, such as: ; ; ; ; ; ; and
This Panel therefore finds that the Disputed Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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.”
Respondent claims he has rights or legitimate interests by virtue of being an “Authorized Dealer” of Complainant’s HGTV Shaw flooring products. (Response of October 5, 2011). Respondent has submitted a copy of its Authorized Dealer agreement, which is signed and dated April 21, 2011. Complainants do not dispute that Respondent is an Authorized Dealer, but rather state that Respondent is not authorized to use Complainants’ trademarks, including as domain names. With their supplemental reply brief, Complainants included an exhibit, dated August 27, 2007, which states that effective “immediately,” all “dealers are expressly prohibited from using the word Shaw or any Shaw Trademarks in any domain name and/or url address, in any deep linking or framing, or as a meta tag.” The supplemental reply brief, signed by Complainant’s attorney, asserts that the exhibit is “official correspondence that Shaw sends to all dealers.” (Complainants’ Supplemental Reply at page 3). However, the panel notes that the exhibit predates the Authorized Dealer agreement with Respondent, and the latter is silent about use of marks and about any collateral agreements and policies that bind Respondent. Complainants have not pointed the panel to any documents that show that this policy was specifically sent to or assented to by Respondent, nor did they include a declaration from a principle of Complainants’ business testifying as such. Accordingly, the panel finds for the purposes of this dispute no dispositive evidence that Respondent agreed or to nor was likely aware of the specific policy of Complainants that dealers were prohibited from all use of their marks on the Internet.
Rather, the panel turns to prior UDRP decisions for guidance.1 In considering whether an authorized reseller of goods has “rights or legitimate interest” in a domain name which contains such a mark, the majority view of UDRP panels is expressed in paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). As explained by this paragraph of WIPO Overview 2.0, an authorized reseller may be considered to have rights or legitimate interest in a mark, provided certain requirements are met. These generally include that: (i) the site is used only to sell the trademarked goods; (ii) the site accurately and prominently discloses the registrant’s relationship to mark holder; and (iii) respondent does not try to “corner the market” in domain names that reflect the mark. Id. See also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038.
Respondent here does not satisfy these requirements. Rather, Respondent admits “I don’t sell any Shaw products on-line.” (Response of October 5, 2011). Thus, Respondent cannot claim to be using the disputed domain names in a way that UDRP panels have found to create “rights or legitimate interest.” Since the panel has found that Respondent does not have rights or legitimate interest in the domain names it is unnecessary for the Panel to consider the minority view, discussed by certain cases, and Paragraph 2.3 of WIPO Overview 2.0, that without express authority, a right to resell does not create a right to use a domain name that is identical or confusingly similar. See Beyonce Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents’] web site or other on-line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondents’] web site or location or of a product or service on [the] web site or location.” Respondent apparently is a reseller of Complainants’ products but admits it does not sell any SHAW products on line. However this may be, the Panel finds the more likely scenario, having regard to the evidence of record in these Policy proceedings, that Respondent registered and is intending to use the disputed domain names primarily for the purpose of creating confusion with the Complainant’s mark, diverting consumers to Respondent’s website, presumably for Respondent’s own commercial gain. Although Respondent does not currently maintain active websites associated with the disputed domain names, this does not as such preclude a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Respondent included with his initial response of September 30, 2011, what he referred to as a list of “our other domains.” These include various “active” and “inactive” domain names, several of which incorporate the TOYOTA mark. The panel finds that this suggests a pattern of registering domain names which incorporate well-known trademarks, and is further indication of bad faith.
Therefore, this Panel finds that Respondent registered and used the Disputed Domain Names in bad faith in accordance with paragraph (4)(a)(iii) of the Policy. 8. 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 Names and be transferred to Complainant Columbia Insurance Company.
Lorelei Ritchie
Sole Panelist
Dated: November 18, 2011
1 Although all parties are apparently located in the United States, there is no clear overriding line of case law nationally regarding what is commonly known as “initial interest confusion.” Accordingly, it is instructive to turn to other UDRP proceedings for guidance.
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