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and Mediation Center
ADMINISTRATIVE PANEL DECISION
(1) Shaw Industries Group Inc., and (2) Columbia Insurance Company v. Marketing Total S.A.
Case No. D2007-0617
1. The Parties
The Complainants are (1) Shaw Industries Group Inc., Dalton, Georgia, United States of America; and (2) Columbia Insurance Company, Omaha, Nebraska, United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is Marketing Total S.A., Charlestown, Saint Kitts and Nevis, West Indies.
2. The Domain Name and Registrar
The disputed domain name <shawflors.com> is registered with CapitolDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2007. On April 25, 2007, the Center transmitted by email to CapitolDomains, LLC a request for registrar verification in connection with the domain name at issue. On April 26, 2007, CapitolDomains, LLC 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”), 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 May 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2007. Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 22, 2007.
The Center appointed Keith Gymer as the sole panelist in this matter on June 15, 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
Complainants in this administrative proceeding are:
(1) Shaw Industries Group, Inc., a Georgia corporation, which operates as a manufacturer and supplier of flooring and floor coverings. It has a business website at “www.shawfloors.com”. It was itself the owner of numerous Unites States trademark registrations for marks comprising SHAW alone and in combination with other elements, e.g. SHAW CERAMICS; SHAW HARDWOODS. Particularly relevant registrations include US 2,291,182 SHAW in Class 27, and 2,692,764 SHAW (with figurative element) in Classes 19 and 27. These trademark registrations were assigned to the second Complainant (2) Columbia Insurance Company in December 2002.
(2) Columbia Insurance Company, a Nebraska corporation, which was also the original registered owner of United States registration 2,877,500 for SHAW in Class 19, this and all the assigned marks being used by Shaw Industries Group under agreement.
Complainants are related companies owned by the same corporate parent (Berkshire Hathaway) and therefore have a sufficient common interest in the domain name at issue in this proceeding. It is also a matter of record that the two companies have previously been the joint Complainants in at least eight other UDRP Complaints relating to domain names incorporating the SHAW name with other elements. Hereinafter these companies are referred to individually as “Shaw”, “Columbia” or “Complainant”, and collectively as “Complainants”.
Respondent, Marketing Total S.A., is recorded as the current owner of the Domain Name <shawflors.com>, which was created on May 8, 2005, according to the WHOIS record.
Respondent operates a website at “www.shawflors.com”, which provides a contact email address - firstname.lastname@example.org (which is also the contact email address on the Whois record).
It has a website at “www.marketingtotalsa.com”, which shows that Marketing Total S.A. evidently offers direct marketing services via email, mail and web pages and operates throughout Central America and the Caribbean.
It is also a matter of record that Marketing Total S.A. has been cited as Respondent in at least seven previous UDRP Complaints, and has lost in every one of those cases.
5. Parties' Contentions
Complainants made a number of submissions in support of the Complaint. Relevant edited extracts are reproduced here:
Columbia is the  owner of the famous United States registered trademarks SHAW (and Design), U.S. Reg. No. 1444248, which issued on June 23, 1987 and has been in use since at least as early as November 25, 1985, SHAW U.S. Reg. No. 2291182, which issued on November 9, 1999 and has been in use since at least as early as 1985, and SHAW U.S. Reg. No. 2877500 (collectively referred to as the “SHAW Registrations”). Because SHAW U.S. Reg. Nos. 1444248 and 2291182 have been in continuous use for five consecutive years subsequent to the date of registration and are still in use in commerce, they are incontestable under § 15 of the Lanham Act, 15 U.S.C. § 1065.
In addition, Complainants use, own and have owned for numerous years various applications and registrations for the SHAW Marks and various formatives thereof for carpeting and flooring related goods and products, including hard surfaces such as laminate, ceramic tiles, and hardwood flooring. In fact, Complainants own the following registrations for flooring and other hard surface related products: SHAW HARD SURFACES BY SHAW INDUSTRIES, INC (and Design), Reg. No. 2514801, SHAW LAMINATES (and Design), Reg. No. 2677907, SHAW HARDWOODS, Reg. No. 2587494, SHAW CERAMICS, Reg. No. 2577579, SHAW, Reg. No. 2877500, and SHAW (and Design), Reg. No. 2692764.
In addition, Shaw owns and has registered the domain names <shawfloor.com>, <shawfloring.com>, <shawflooring.com>, <shawflooringalliance.com>, <shawfloors.com>, <shawsfloor.com>, <shawfoos.com>, and <shawhardwoodfloors.com>. [A list of domain names owned by Shaw was annexed to the Complaint.]
Since at least as early as 1985, Shaw has prominently used some of the SHAW Marks and names in connection with carpeting and flooring related goods provided directly to the consumer. Complainants have spent millions of dollars displaying, promoting, and advertising the SHAW Marks. As a result of these efforts, Shaw is one of the United States' leading carpeting and flooring companies and Shaw is also well-known internationally.
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The SHAW Marks, as evidenced by the number of applications and registrations owned by Complainants for various formatives of the mark SHAW and also evidenced by the number of years of use, are distinctive and well known in the carpeting and flooring industry. The SHAW Marks and the SHAW Registrations are owned by Complainants.
Respondent's domain name is confusingly similar to the SHAW Registrations and the SHAW Marks. The domain name at issue in this proceeding contains the identical SHAW Registrations and the SHAW Marks, i.e. <shawflors.com>.
The fact that Respondent has a domain name that contains marks and registrations owned by the Complainants leads to the inevitable conclusion that Respondent's domain name is confusingly similar to a registration/s in which Complainants have rights.
Not only does Respondent's domain name contain the identical SHAW Registrations, but the term “flors” is added. The presence of this term does nothing to differentiate the domain name registration from the registered SHAW Marks. In fact, WIPO panelists have accepted that “...[g]enerally, a user of a mark 'may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.'” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-1206.
In addition, in light of the fact that Complainants are in the flooring industry, that just lends more strength to the argument that Respondent's domain name is confusingly similar to the SHAW Registrations and the SHAW Marks. Thus, Respondent's domain name is identical and/or confusingly similar to the SHAW Registrations and the SHAW Marks.
The Respondent has no rights or legitimate interests in the domain name.
As stated above, the domain name <shawflors.com> is confusingly similar to the SHAW Registrations and the SHAW Marks. Thus, the domain name is confusingly similar to Complainants' Marks in which Complainants enjoy substantial goodwill. Respondent has no right or legitimate interest with respect to its use of the domain name for the following reasons.
First of all, Respondent is not listed as an owner of any United States trademark containing any SHAW formatives. Nor is there any evidence that Respondent owns any or has applied for any United States trademark registrations. There is no evidence that Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights.
Moreover, there is no evidence of Respondent's use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate non-commercial or fair use of the domain names. Rather, Respondent is blatantly using the domain name with intent for commercial gain and to misleadingly divert consumers.
On its website, Respondent references “Shaw” or various formatives thereof numerous times and has website links that divert the consumer to non-Shaw associated websites. Equally troubling is that Respondent lists products of competitors of Shaw on various pages of the offending website. [Copies of some of the offending website pages were annexed to the Complaint.] Obviously, Respondent has acquired the domain name with no apparent intention of utilizing it in connection with the provision of legitimate goods or services.
The domain name was registered and is being used in bad faith.
Under the UDRP, a domain name registrant has acted in bad faith where: “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.”
Complainants' Marks are well-known worldwide in connection with carpets and flooring products due to the millions of dollars Complainants have expended promoting, selling and advertising SHAW products and continue to maintain ongoing business operations in the United States of America and throughout the world. The Respondent, as stated above, is using a domain name, which is identical or confusingly similar to a trademark in which Complainants have rights. By using the domain name <shawflors.com>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainants' Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website. Certainly, 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 Respondent must reasonably have been aware, constitutes opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Respondent has no affiliation with Complainants, yet on its website Respondent references various formatives of the SHAW® Marks and is using Complainants' Marks in an unauthorized manner. The offending website also contains unauthorized links using Complainants' Marks.
Shaw is in the business of selling carpeting and flooring. As stated above, Respondent's website creates the impression that it is affiliated, sponsored or endorsed by Complainants. There are numerous references to flooring and carpet companies on the offending website. In addition, the website consists of links to other websites such as flooring and carpet companies, as well as competitors of Complainants, and other non-flooring/carpeting related websites. Conspicuously absent from the offending website is any statement of any kind that makes it explicitly clear that the offending website is not associated with Complainants in order to reduce the likelihood of confusion as to the existence of such an association.
Respondent, as stated above, is using domain name, which is identical or confusingly similar to a trademark in which Complainants have rights. Respondent is using Complainants' Marks on its websites in relation to carpet and flooring related companies and products, and the websites are designed to look like a legitimate website for a flooring and carpet company. The website appears to be designed to present Internet users with search engine results. Thus, the websites potentially derive revenue from “click-throughs” from confused web users who were looking for a Shaw website or information about Shaw. Thus, Respondent's use is a clear attempt to attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with the Complainants' Marks.
Numerous UDRP decisions hold that “using the disputed domain name to redirect Internet users to websites that host links to external websites, including websites of Complainants' competitors”, evidences bad faith. In addition, a domain name that incorporates a well-known trademark which is used to direct visitors to unconnected websites and/or competitor websites has been held to constitute bad faith use of the domain name. In short, the use of Complainant's Marks simply for the purpose of driving traffic to Respondent's website and to other websites is not a bona fide attempt to offer goods and services to the public. Such conduct constitutes evidence of bad faith under paragraph 4(b)(iv) of the UDRP Policy.
Finally, as stated above, Complainants own numerous domain names, many of which contain the SHAW Marks and contain formatives of “shawfloors” or some variation thereof. As also stated above, it is not possible to obtain every variation of the how Complainants' Marks may be registered or used as a domain name. It is obvious that Respondent went “to the trouble of devising another variation not contemplated by the Complainants.” See Shaw Industries Group, Inc., Columbia Insurance Company v. Marathon Triad, WIPO Case No. 2006-1408. Such efforts have been viewed previously by UDRP panels as evidence of bad faith.
Based on the facts above, this domain name use by the Respondent and use of Complainants' Marks demonstrates that Respondent is using the domain name in bad faith.
The Complainants seek a decision requiring transfer of the Domain Name <shawflors.com> to Shaw.
Respondent did not reply to Complainants' contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy it is necessary that a complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) domain name has been registered and is being used in bad faith.
The fact that Respondent has not provided a Response to the Complaint does not relieve Complainants of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is clear that this does not mean a default decision is automatically to be issued in favour of Complainants. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.
A. Identical or Confusingly Similar
The joint Complainants in this case indisputably have rights in the name and mark SHAW. By way of formal proof, the Complaint provides factual evidence of longstanding trademark registrations. It is also clear that the mark is used in relation to floors and flooring. Complainant Shaw also owns and uses the domain name <shawfloors.com> to market its products. The Whois record shows that this domain name was created in 2000, well before registration of the Domain Name at issue here.
The question, therefore, is whether the use of the variant “shawflors” in the Domain Name <shawflors.com> renders this confusingly similar to SHAW and or SHAWFLOORS.
In the Panel's view, the evidence shows that the Domain Name <shawflors.com> has been chosen and put to use for a website “www.shawflors.com”, precisely because “shawflors” is a likely mistyping of SHAWFLOORS. The internet user looking for “www.shawfloors.com” might not even realize if they mistyped and arrived at “www.shawflors.com”. This is a typical typosquat, intended to exploit the close similarity with the Shaw website address, and taking advantage of the SHAW mark used with a (mistyped) directly relevant descriptive term “flors” (for FLOORS).
The Panel therefore finds that, for the purposes of the Policy, the contested Domain Name is confusingly similar to a trademark or service mark in which Complainants have rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent's rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trade mark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is obvious from the facts and the evidence presented in this case that none of the above factors apply. Indeed, as is typical of the typosquatting scenario, the very opposite would appear to apply in each case.
Respondent has offered no explanation to justify any claim to legitimate or fair use of the Domain Name. It has made no claim to rights of its own in SHAWFLORS, it is not known by this name and the use of the name for a website which is demonstrably intended to benefit from parasitic exploitation of Complainants' rights and reputation in SHAW and its use in relation to flooring, cannot be considered legitimate, non-commercial or fair use.
Consequently, the Panel accepts Complainant's submissions in this respect, and holds that Respondent has no rights or legitimate interests in respect of the Domain Name; and the requirements of Paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
It is for Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.
Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or Respondent 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) [Respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] website or location or of a product or service on [Respondent's] website or location.”
The Panel considers the example of Paragraph 4(b)(iv) of the Policy most directly applicable in the present case.
In this respect, the Panel finds the following factors from Complainants' evidence persuasive:
- the longstanding and extensive prior use and registration of the SHAW mark, in relation to flooring and floor coverings;
- the blatantly misleading exploitation of the Domain Name for its similarity to Complainant Shaw's own <shawfloors.com> domain name and SHAW mark(s);
- the manifest intention to use the Domain Name in a website to mis-direct potential customers seeking SHAW products at <www.shawfloors.com> away to competing sources and competing products via the click-through links to other flooring-related sites and competitors' sites provided on “www.shawflors.com”.
In the Panel's view Respondent's conduct is certainly not such as could reasonably be considered to be bona fide commercial practice under the Policy.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.
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, <shawflors.com> be transferred to the Complainant, Shaw Industries Group, Inc.
Dated: June 29, 2007