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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group Inc. and Columbia Insurance Company v. Maison Tropicale S.A.
Case No. D2007-0548
1. The Parties
The Complainants are Shaw Industries Group, Inc. (“First Complainant”) of Dalton, Georgia, United States of America and Columbia Insurance Company (“Second Complainant”) of Omaha, Nebraska, United States of America.
The Respondent is Maison Tropicale S.A. of The Valley, British West Indies, Anguilla.
2. The Domain Name and Registrar
The disputed domain name <shawcarpetflooring.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2007. On April 13, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On April 16, 2007, DomainDoorman, LLC 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 administrative, billing, and technical contact. 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 April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2007.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 31, 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
4.1 The Complainants have owned for numerous years various applications and registrations of the trademark SHAW and various formatives thereof for carpeting and flooring related goods and products (“SHAW Trademarks”). These applications include “SHAW, SHAW (and Design), COUTURE BY SHAW, SHAW CONTRACT, SHAW CONTRACT GROUP, SHAW HOSPITALITY, SHAW RUGS, SHAW S/C, SHAW HARD SURFACES BY SHAW INDUSTRIES, INC (and Design), SHA LAMINATES (and Design), SHAW HARDWOODS and SHAW CERAMICS.
4.2 In addition, the First Complainant owns and has registered the domain names <shawcarpet.com>, <shawcarpeting.com>, <shawcarpets.com>, <shaw-carpets.com>, <shawcarpets.net>, <shawflooring.com>, <shawflooringinc.com>, <shawfloors.com>, <shawsfloor.com>, <shawnfloor.com> and <shawflooringalliance.com>.
4.3 Since at least as early as 1985, the First Complainant has used some of the SHAW Trademarks in connection with carpeting and flooring related goods provided directly to the consumer. The Complainants assert that they have spent millions of dollars displaying, promoting and advertising these marks.
5. Parties’ Contentions
The Complainants contend as follows:
5.1 The Respondent’s domain name comprises the word SHAW and is, therefore, confusingly similar to the SHAW Trademarks. The presence of the terms “carpet” and “flooring” in the domain name does not differentiate the domain name from the SHAW Trademarks. The fact that the Complainants are in the carpeting and flooring industry further lends strength to the argument that the Respondent’s domain name is confusingly similar to the SHAW Trademarks.
5.2 The Respondent has no rights or legitimate interests in the domain name. In support thereof, the Respondent relies on the following factors:
(a) There is no evidence that the Respondent owns or has applied for any trademark registration in the United States comprising any SHAW formatives.
(b) There is no evidence that the Respondent has been commonly known by the domain name, even if the Respondent has not acquired rights to the trademark SHAW.
(c) There is no evidence of the Respondent’s 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. The websites contain references to the SHAW Trademarks and has links to that divert visitors to the First Complainant’s competitors.
(d) The Respondent is not making a legitimate non-commercial or fair use of the domain name. Rather, the Respondent is using the domain name with intent for commercial gain and to misleadingly divert consumers.
5.3 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:
(a) By using a domain name which is confusingly similar to the SHAW Trademarks, 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 Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. This is strengthened by the fact that the website contains numerous references to flooring and carpet products.
(b) The Respondent must reasonably have been aware of the First Complainant and the SHAW Trademarks and that the use of the SHAW trademark in the domain name constitutes opportunistic bad faith.
(c) The Respondent uses the different formatives of the SHAW Trademarks in its website without the approval of the Complainants. Yet, there is nothing in the website which negates an association with the Complainants.
(d) The website appears to be designed to present Internet users with search engine results. Thus, the website potentially derives revenue from “click-throughs” of confused web users who were looking for the First Complainant’s website.
(e) As it would be impossible to register as domain names every single variation of the SHAW Trademarks, the Respondent went to the trouble of devising another variation not contemplated by the Complainants.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have rights to the SHAW Trademarks based on the evidence adduced, including evidence of trademark applications and registrations, evidence of use of the same and evidence of various domain name registrations incorporating the SHAW Trademarks.
The Panel is also conscious of the fact that the domain name comprises common or descriptive terms, in particular “carpet” and “flooring”. In Pfizer Inc. v. United Pharmacy Ltd.,
WIPO Case No. D2001-1206, it was accepted by the Panelist that “…[g]enerally, a user of a mark may not avoid likely confusion by appropriating another’s mark and adding descriptive or non-distinctive matter to it”. See PepsiCo, Inc. v. Pepsi SRL (aka P.E.P.S.I) and EMS Computer Industry (aka EMS),
WIPO Case No. D2003-0696; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja,
WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman,
WIPO Case No. D2001-1184 where the panels found that the addition of common terms does not change the overall impression of the designation as being a domain name connected to the Complainant.
The addition of the generic top-level domain “.com” also does not change the likelihood of confusion. Such additions are irrelevant distinctions. See Microsoft Corporation v. Amit Mehrotra,
WIPO Case No. D2000-0053; PepsiCo, Inc. v. Pepsi SRL (aka P.E.P.S.I) and EMS Computer Industry (aka EMS),
WIPO Case No. D2003-0696.
Based on the fact that the Respondent’s domain name is confusingly similar to the Complainant’s trademark, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
It does not appear from the evidence adduced and the Respondent’s website that the Respondent actually provides goods or services on its own using the name or mark SHAW. The use of the various SHAW Trademarks in the Respondent’s website as well as the links to the First Complainant’s competitors suggests that the Respondent is not using the domain name in connection with a bona fide offering of goods or services.
The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent for the use of the words comprising the domain name and in particular the use of the word SHAW.
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The Panel agrees with the submission by the Complainants that bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. See Veuve Cliquot Ponsardin, Maison Fondйee en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163 (May 1, 2000). The Panel is mindful of the Complainants’ assertion that the SHAW Trademarks have been in use since at least 1985 and that the Complainants have spent substantial amount of monies in order to promote the same. However, the Panel is unable to form the view in the current proceedings that the SHAW Trademarks are well-known marks given the absence of additional supporting evidence to prove these assertions. Evidence of mere registration of a mark even if for a long duration, without more, does not automatically equate to a well known mark.
Nevertheless, given the fact that the Respondent uses the SHAW Trademarks in its website and the absence of any response by the Respondent, the Panel agrees with the submission by the Complainants that bad faith is established where the domain name is being used to redirect Internet users to websites that host links to external websites, including websites of the Complainants’ competitors. See DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. La Porte Holdings, Inc.,
WIPO Case No. D2005-0070, citing Royal Bank of Canada v. Henry Chan,
WIPO Case No. D2003-0031.
This Panel takes notice that such acts are commonly applied by cybersquatters to give the impression of an active website given the fact that past Panel decisions have found that passive websites can give rise to a finding of bad faith. Such attempts to circumvent past decisions, however, do not constitute a bona fide attempt to offer goods and services to the public. This Panel also takes notice that such acts are also applied for purposes of “click-through” commercial gain whereby websites derive revenue from confused Internet users.
Based on the evidence adduced by the Complainants and the absence of any cogent explanation by the Respondent, it appears, therefore, that 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 Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
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, <shawcarpetflooring.com>, be transferred to the First Complainant.
Syed Naqiz Shahabuddin
Dated: June 14, 2007