Complainant is Shaw Industries Group, Inc. of Georgia, United States of America; and Columbia Insurance Company of Omaha, Nebraska, United States of America, represented by Neal & McDevitt, United States of America.
Respondent is The Little Carpet Shop, Steve Malm of Minneapolis, Minnesota, United States of America (the “US”).
The disputed domain name <shawcarpetmn.com> is registered with FastDomain, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2010. On September 24, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On September 24, 2010, FastDomain, Inc. transmitted by email to the Center its verification response confirming that 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” 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 28, 2010. On October 6, 2010 Complainant transmitted an email requesting the suspension of the proceedings. On October 8, 2010 the Center issued the notification of suspension until November 7, 2010. On November 1, 2010 Complainant transmitted an email requesting the re-institution of the proceedings. All time periods were re-calculated from the reinstitution date. Respondent had until November 14, 2010 within which to submit to the Center any response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2010. However, after the transmission of Respondent default, an email was received from the Respondent the same day stating the following; “I have no intention on launching or renewing this domain name”. The Center acknowledged receipt of Respondent’s communication on November 23, 2010. The Panel has determined that the email shall not be considered due to its late receipt and the fact that it did not provide a substantive response to Complainant’s specific allegations.
The Center appointed Sandra A. Sellers 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.
Complainant sells carpets and other flooring products and services under the SHAW mark. Complainant owns over 30 United States (“US”) federally registered trademarks containing the SHAW mark. In particular, the registration for SHAW for carpet issued on November 9, 1999 and claims first use of November 25, 1985.
Complainant has spent millions of dollars displaying, promoting, advertising and selling carpet under the SHAW mark. Complainant is one of the leading US carpet and flooring companies and also is well-known internationally.
Additionally, Complainant owns numerous domain names that contain the SHAW mark and “carpet” as part of the domain name. Among these are <shawcarpet.com>, created on March 10, 1998, and <shawcarpetcn.com>, created on May 1, 2008.
Respondent registered the disputed domain name <shawcarpetmn.com> on May 17, 2010. The disputed domain name resolves to a website containing links to various other commercial websites that sell other brands of carpets.
Complainant contends that it is known worldwide for its carpet and flooring products, which have been sold under the SHAW mark since 1985. Complainant contends that it has rights in the mark, and that Respondent’s use of <shawcarpetmn.com> to sell carpet is confusingly similar in that the disputed domain name incorporates Complainant’s mark in its entirety, and that the addition of generic elements do not avoid confusion.
Complainant alleges that Respondent has no rights or legitimate interests in the mark, because Respondent is not licensed or authorized to use Complainant’s mark, and that Respondent is not making legitimate noncommercial use of the domain.
Complainant alleges that Respondent registered and uses the disputed domain name in bad faith. It alleges that Respondent registered the domain name with actual or constructive knowledge of Complainant’s registered marks for carpet, which were in use for almost 25 years prior to registration of the disputed domain name. Complainant further alleges that Respondent uses the domain name for commercial gain by directing consumers to another website selling carpet sold by competitors.
The Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, 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.
Complainant clearly has demonstrated that it has rights in the SHAW mark. Complainant is one of the leading US carpet and flooring companies. Complainant has been selling carpet under the SHAW mark since at least 1985. Complainant owns more than 30 US federally registered marks for SHAW carpet and flooring products. The SHAW mark is distinctive. Additionally, Complainant owns the domain names <shawcarpet.com> and <shawcarpetcn.com>, among other domain names containing the SHAW mark.
The disputed domain name incorporates Complainant’s mark in its entirety, with the addition of the generic term “carpet.” Many panels have held that the addition of a generic term does not sufficiently distinguish the disputed domain name from Complainant’s mark as to avoid confusing similarity with Complainant’s mark, particularly where the additional generic term is related to Complainant’s goods or services. See, eg, Rada Mfg. Co. v J.Marki Press a/k/a J. Mark Cutlery, WIPO Case No. D2004-1060; and Westinghouse Electric Corporation v Kathy Chang, WIPO Case No. D2009-1464.
Furthermore, Respondent’s addition of “mn” in the disputed domain name does not serve to distinguish <shawcarpetmn.com> from Complainant’s mark. In Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768 (hereinafter Kabushiki), the panel found that the addition of “cn” in the disputed domain name <toshiba-cn.com> did not serve to distinguish the domain name from Complainant’s TOSHIBA mark because the dominant portion of the domain name is still Complainant’s mark. Complainant contends that the “mn” likely refers to the common abbreviation for Minnesota. A domain name which is comprised of a trademark and a geographic term actually may increase the likelihood of confusion and association between the domain name holder and the trademark owner, particularly if the Complainant sells its product and services in that geographic region. Kabushiki, supra, citing Amazon.com, Inc. v. A.R. Information & Publication Co. Ltd., WIPO Case No. D2001-1392; and Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709. It is particularly interesting to note here that Respondent’s <shawcarpetmn.com> is only one letter different than Complainant’s <shawcarpetcn.com>, which may heighten the potential for confusion.
The Panel finds that Complainant has rights in the SHAW mark, and that the disputed domain name is confusingly similar to Complainant’s registered mark, so that Complainant meets the first criterion of paragraph 4(a) of the Policy.
Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain names at issue, previous decisions have found it sufficient for a complainant to make a prima facie showing of its assertion.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the SHAW mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, beside the email of November 22, 2010 Respondent has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
Complainant has sold carpets under its SHAW mark for 25 years before Respondent registered the disputed domain name. Complainant’s SHAW US trademark registration was issued more than 10 years before the disputed domain name was registered. Respondent registered the disputed domain name <shawcarpetmn.com> on May 17, 2010, long after Complainant’s adoption, use and registration of SHAW marks.
Based on these facts, this Panel infers that Respondent was aware of Complainant’s mark when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests”. Moreover, the use of a domain name confusingly similar to Complainant’s mark and selling the same product – here, carpets - supports an inference that Respondent knew of Complainant’s mark before Respondent registered the domain name. Respondent thus registered <shawcarpetmn.com> in bad faith.
The disputed domain name resolves to a website that contains links to other sites for carpets that directly compete with Complainant’s SHAW carpet. This use is clearly commercial. Respondent’s use of the disputed domain name is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.
It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. See, e.g., Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078. Therefore, in the Panel’s view, it is evident that Respondent has registered and used the disputed domain name with the intent to attract Internet customers looking for SHAW carpet, thereby making commercial gain from click-through revenue from the sponsored links.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.
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 <shawcarpetmn.com> be transferred to the Complainant.
Sandra A. Sellers
Sole Panelist
Dated: December 20, 2010