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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shaw Industries Group, Inc., Columbia Insurance Company v. Zhang Tietao
Case No. D2007-1295
1. The Parties
Complainants (“Complainant”) are Shaw Industries Group, Inc., Columbia Insurance Company, United States of America, represented by Neal & McDevitt, United States of America.
Respondent is Zhang Tietao, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <shawcarpetcn.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2007. On September 3, 2007, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain name at issue. On September 4, 2007, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on September 26, 2007. The Center verified that the Complaint together with the amendment to 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 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 1, 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
Complainant is the owner of the trade mark SHAW and its various formatives (“SHAW Marks”). The SHAW marks are used by Complainant in connection with carpeting and floor related goods and products. Complainant owns a total of 31 US trade mark registrations in relation to the SHAW marks. The earliest registration of the SHAW marks was in 1987 and Complainant has been using the relevant marks in the United States of America since 1985.
Complainant also owns and has registered the domain names <shawcarpet.com>; <shawcarpeting.com>; <shawcarpets.com>; <shaw-carpets.com>; <shawcarpets.net>; <shawarearugs.com>; <shawrug.com>; <shawrugs.com>; <shawcarpetoutlets.com>; <shawcarpetvalue.com>.
Respondent’s domain name was registered on June 21, 2007.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant asserts that the SHAW marks are distinctive and well known in the carpeting and flooring industry. This is evidenced by the number of applications and registrations owned by Complainant for various formatives of the SHAW marks and also evidenced by the number of years of use. Thus, Complainant asserts that it has rights over the SHAW marks.
Complainant contends that Respondent’s domain name is confusingly similar to the SHAW marks. Part of the domain name at issue in the present proceeding contains the identical word “shaw” in the SHAW marks owned by Complainant. Complainant contends that the fact Respondent has a domain name that contains marks and registrations owned by Complainant leads to the inevitable conclusion that Respondent’s domain name is confusingly similar to a registration in which Complainant has rights. The addition of the letters “cn” and the word “carpet” to the mark SHAW do not differentiate Respondent’s domain name from Complainant’s registered SHAW marks. Complainant further contends that in light of the fact that Complainant is in the carpeting and flooring industry, the addition of “carpet” to the domain name lends more strength to the argument that Respondent’s domain name is confusingly similar to Complainant’s SHAW marks. To support its arguments, Complainant cites Pfizer Inc. v. United Pharmacy Ltd.,
WIPO Case No. D2001-0446 in which the Panel accepted a general principle from J. Thomas McCarthy’s McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) that “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”. Complainant also cites Telstra Corporation Limited v. Barry Cheng Kwok Chu,
WIPO Case No. D2000-0423; E. I. du Pont de Nemours and Company v. Richi Industry S. r. 1.,
WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,
WIPO Case No. D2003-0159. Finally, Complainant contends that the addition of “.com” to Complainant’s SHAW marks does not change the likelihood of confusion as previous UDRP cases such Microsoft Corporation v. Amit Mehrotra,
WIPO Case No. D2000-0053 has so held.
For all of the above reasons, Complainant contends that Respondent’s domain name is identical and/or confusingly similar to the Complainant’s SHAW marks.
Rights or Legitimate Interests
Complainant contends that Respondent has no right or legitimate interests with respect to disputed domain name in question for the following reasons:
a. Respondent is not listed as an owner of any United States of America trade mark containing any SHAW formatives.
b. There is also no evidence that Respondent owns any or has applied for any United States of America trade mark registrations.
c. There is no evidence that Respondent has been commonly known by the domain name even if Respondent has acquired no trade mark or service mark rights.
d. There is no evidence of 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.
e. Respondent is not making a legitimate non-commercial or fair use of the domain name.
f. Respondent’s website is inactive and Respondent is not making any commercial use of it.
Registered and Used in Bad Faith
Complainant contends that its SHAW marks are well known worldwide in connection with carpets and flooring products due to the millions of dollars Complainant has expended promoting, selling and advertising SHAW products in the United States of America and throughout the world. Complainant contends that Respondent is familiar with Complainant and its famous SHAW marks. Since Respondent has registered a well known trade mark in a domain name of which he must reasonable have been aware, Complainant contends that this constitutes opportunistic bad faith and cites Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163.
Complainant asserts that it owns numerous domain names, many of which contain the SHAW marks and it is not possible to obtain every variation of how Complainant’s marks may be registered or used as domain name. Complainant contends that it is obvious Respondent went “to the trouble of devising another variation not contemplated by Complainant” and such efforts have been viewed by the Panel as evidence of bad faith in Shaw Industries Group, Inc., Columbia Insurance Company v. Marathon Triad,
WIPO Case No. 2006-1408.
Finally, Complainant contends that Respondent’s website is currently inactive and numerous previous UDRP decisions have found inactivity by the respondent to amount to the domain name being used in bad faith. Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd,
WIPO Case No. D2000-0086; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,
WIPO Case No. D2000-1409. Complainant contends that Respondent’s inaction with regard to the domain name coupled with Complainant’s well-known marks support a finding of bad faith and cites Compaq Computer Corporation v. Boris Beric,
WIPO Case No. D2000-0042.
Based on the arguments above, Complainant contends that the disputed domain name is registered and used by Respondent in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Although Complainant has not made any submission with regard to the issue of language in the present proceedings, the Panel is of the opinion that the language for the present proceedings should be in English and the decision will be delivered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the disputed domain name <shawcarpetcn.com> is in English. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that Complainant has translated the Complaint into Chinese, filed the Amended Complaint with the Centre and the Centre has notified Respondent of the Complaint in Chinese. Respondent thus has sufficient time and the ability to respond to the Complaint in a language that he is presumed to be conversant in – Chinese. However, Respondent has failed to respond to the Complaint within the stipulated time. The Panel is satisfied that Complainant has exercised due diligence in communicating the Complaint to Respondent. There is no necessity for parties to incur further costs in having the Decision delivered in Chinese and for it to be again translated from Chinese to English. Considering all the circumstances of the present case, the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Panel will be delivered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the SHAW marks and their various formatives in the United States of America since it has first obtained registered trade mark rights in 1987 in relation to carpeting and flooring related goods and products. The Panel rules that Complainant has rights and continues to have such rights in the relevant SHAW marks.
The disputed domain name consists of Complainant’s SHAW marks in its entirety with the addition of “carpet”, “cn” and the suffix “.com”. The Panel finds that the word “shaw” in Complainant’s SHAW marks is an arbitrary word with no descriptive significance to the goods or services i.e. carpeting and flooring related products and goods offered under it. It is the distinctive portion of Complainant’s marks and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “shaw” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts Complainant’s contention that the given the fact that Complainant is highly successful in the carpeting and flooring business and has been using the SHAW marks in relation to carpeting and flooring products and goods since 1985, the addition of the English word “carpet” only serves to create the association with Complainant and does not serve to distinguish the disputed domain name from Complainant’s marks. The letters “cn” are generally known to many as a mere geographic description. Again, it does not provide additional specification or sufficient distinction from Complainant or its SHAW marks. The Panel finds that the addition of the letters “cn” to the word “shaw” does not serve to distinguish it from Complainant’s SHAW marks. In fact, the Panel finds that the addition of the letters “cn” serves to suggest a geographical location of Complainant’s business, which increases the level of confusion of Internet users as Internet users may associate Respondent’s website for Complainant’s official website devoted to its customers in the China. It is also an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trade marks in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “shawcarpetcn” in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its SHAW marks enjoy a reputation, in the United States of America and beyond, with regard to its carpeting and flooring goods and products since 1985. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the SHAW marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trade mark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the SHAW marks which have acquired a substantial reputation through long use are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.
Complainant has adduced evidence to show that Respondent domain name has remained inactive since registration. Previous UDRP decisions have held that passive holding of domain names can also constitute use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd,
WIPO Case No. D2000-0086; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,
WIPO Case No. D2000-1409. Given the long use, substantial reputation of Complainant’s SHAW marks and significant presence of Complainant’s business on the Internet through numerous other registered domain name incorporating the SHAW marks, the compelling conclusion of the Panel is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s SHAW marks, intended to ride on the goodwill of Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. This conclusion is buttressed by the absence of contrary and rebutting evidence from Respondent that the disputed domain name has been put to legitimate and fair use by Respondent in a genuine offer of goods and services on the Internet. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name, the passive holding of the domain name by Respondent and the inactivity as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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 <shawcarpetcn.com> be transferred to Complainant.
Susanna H.S. Leong
Dated: November 15, 2007