WIPO Domain Name Decision: D2007-1363

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc., Columbia Insurance Company v. Domain Park Limited

Case No. D2007-1363

1. The Parties

The Complainants are Shaw Industries Group, Inc. and Columbia Insurance Company, United States of America, represented by Neal & McDevitt, United States of America.

The Respondent is Domain Park Limited, Samoa.

2. The Domain Name and Registrar

The disputed domain name <shawfloores.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2007. On September 17, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 19, 2007, Moniker Online Services, LLC 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”), 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 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2007.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on November 6, 2007. 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 following facts are not contested:

The Complainants own several registrations for the trademark SHAW in the United States of America, (e.g., SHAW, No. 2,877,500, registered on August 24, 2004, No. 2,291,182, registered on November 9, 1999, No. 2.692,764, registered on March 4, 2003, No. 1,444,248, registered on June 23, 1987) as well as other trademarks including the term SHAW (e.g. No. 2,547,524, registered on March 12, 2002, No. 2,514,801, registered on December 4, 2001, No. 2.577.579, registered on June 11, 2002).

The trademark SHAW has been in use in the United States of America at least as early as 1985 in connection with carpeting and flooring related goods.

On July 26, 2007, the Respondent registered the disputed domain name <shawfloores.com>.

The disputed domain name is linked to the website “www.shawfloores.com”, which has sponsored links that transfer visitors to other on-line locations, which offer services which are competing or strongly related to the ones offered by the Complainants.

5. Parties’ Contentions

A. Complainant

The Complainants contend the following:

The referred trademarks are distinctive and well known in the carpeting and flooring industry.

The domain name <shawfloores.com> is confusingly similar to the SHAW trademarks. The fact that the Respondent has registered a domain name that contains marks 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.

The Respondent has also added to the disputed domain the term “floores” which does nothing to differentiate the disputed domain name from the SHAW trademarks, quoting thereof several UDRP precedents.

In addition, the Complainants contend that the fact that the Complainants are in the flooring industry strengthens the confusion between the disputed domain name <shawfloores.com> and the SHAW trademarks.

The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent does not own any US Marks or application for SHAW or marks including SHAW. Moreover, there is no evidence (i) that Respondent is commonly known by the disputed domain name and (ii) of the Respondent’s use of, or demonstrable preparations to use the <shawfloores.com> domain name in connection with a bona fide offering of goods and services.

The Respondent is not making a legitimate non-commercial or fair use of the domain name. The Respondent is using the domain name with intent for commercial gain and to misleadingly divert consumers.

On its website, the Respondent lists the Complainants competitors’ products. The Respondent has registered the dispute domain name with no apparent intention of using it in connection with the provision of legitimate goods or services.

The Respondent has chosen the disputed domain name because of its similarity to a name in which the Complainants have rights and interests.

The domain name <shawfloores.com> was registered and is being used in bath faith.

The Complainants’ marks are well-known in the United States of America and worldwide in connection with carpets and flooring products due to intense promoting, selling, and advertising.

By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement. The Respondent is familiar with Shaw and its well known trademarks. It has been held that registration of a well known trademark in a domain name, of which the Respondent must have reasonably been aware, constitutes opportunistic bad faith.

The use of the Complainants’ marks for the purpose of deriving traffic to the Respondent’s website and to other online locations is not a bona fide attempt to offer goods and services to the public.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainants own several registrations for the trademark SHAW in the United States of America, as listed under exhibit C of the Complaint (e.g., SHAW, No. 2,877,500, registered on August 24, 2004, No. 2,291,182, registered on November 9, 1999, No. 2.692,764, registered on March 4, 2003, No. 1,444,248, registered on June 23, 1987) as well as other trademarks including the term SHAW (e.g. No. 2,547,524, registered on March 12, 2002, No. 2,514,801, registered on December 4, 2001, No. 2.577.579, registered on June 11, 2002).

The Complainants’ rights in the referred trademarks significantly pre-date the Respondent’s registration of the disputed domain name, registered on July 26, 2007.

The disputed domain name, <shawfloores.com>, is not identical to Complainants’ trademarks. However, it contains the entire trademark SHAW in which the Complainants’ have rights, with the mere addition of the term “floores”, which the Panel finds insufficient to erase the confusion in this case.

Furthermore, the term “floores”, in the context of this case, seems to evoke services related to carpeting and flooring, which the Complainants have proved that they run their business in. In line with UDRP precedents, where additional letters or words in a domain name relate directly to the business represented by the Complainant’s trademark, confusing similarity between the name and the trademark is not lessened by that addition. See Wachovia Corporation v. Organized Crime, Inc., WIPO Case No. D2002-0362; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022.

Moreover, it has been proved that the Complainants operate the website “www.shawfloors.com” (corresponding to the domain name <shawfloors.com>), which except for the vowel “e”, is identical to the one registered by the Respondent.

In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainants’ have rights, and therefore, the Complainants succeed on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name in dispute. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interest in the domain name in order to refute the prima facie case. The Panel finds that the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainants’ contentions and therefore has not made such showing.

Furthermore, the Complainants have submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services. In fact, the Respondent is attracting for commercial gain, Internet users to its website and to the Complainants’ competitors’ websites. Such use cannot be considered a bona fide use, or fair or non-commercial use.

Additionally, there is no evidence that the Respondent is commonly known as or identified by “Shaw” or “Shawfloores”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

Consequently, based on the record and in the absence of a rebuttal by the Respondent, the Panel holds that, as required in paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in its paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainants own several registrations for the trademark SHAW, as well as other trademarks including the term SHAW, which are widely known in the United States of America and worldwide, which were first registered and used at least as early as 1985, significantly pre-dating the Respondent’s registration of the disputed domain name, registered on July 26, 2007.

Moreover, the Complainants operates the website “www.shawfloors.com” (corresponding to the domain name <shawfloors.com>, registered on May 19, 2000), which is almost identical to the disputed domain name.

Therefore, the Panel finds that the Respondent in all likelihood was aware of the trademark SHAW and that the Complainants were in the carpeting and flooring business, before registering the disputed domain name, which evidences its bad faith registration.

Moreover, it has been proved that by using the disputed domain name <shawfloores.com> the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement.

This is evidenced by the fact that the Respondent’s website “www.shawfloores.com” has sponsored links that transfer visitors to other on-line locations, which offer services which are competing or strongly related to the ones offered by the Complainants.

Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.

For these reasons, the Panel finds that the Respondent both registered and uses the domain name in bad faith, and that the Complainants have therefore made out the third element of its case.

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 <shawfloores.com> be transferred to the Complainants.

Miguel B. O’Farrell
Sole Panelist

Dated: November 19, 2007