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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc., Columbia Insurance Company v. Floor-Tech Floor Coverings

Case No. D2006-0075

 

1. The Parties

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

The Respondent is Floor-Tech Floor Coverings, Edmonton, Alberta, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <shawcarpet.com> is registered with Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2006 by email, and on January 19, 2006, in hardcopy. On January 18, 2006, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On January 18, 2006, Tucows Inc. 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 and technical contact. The verification response was ratified and supplemented on January 24, 2006 by Tucows, Inc. 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 January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 16, 2006.

The Center appointed Manoel J. Pereira dos Santos as the Sole Panelist in this matter on March 3, 2006. 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.

The Panel issued a Procedural Order No.1 dated March 21, 2006, ordering Complainants to submit a copy of the applications and registrations listed in Annex C attached to the Complaint, particularly trademarks SHAW U.S. Reg. No. 2291182 and SHAW U.S. Reg. No. 287750. The due date for the decision was accordingly extended to March 29, 2006. The Complainants submitted the supplemental filing on March 24, 2006 by email, and on March 27, 2006, in hardcopy.

 

4. Factual Background

The trademarks upon which the Complaint is based are SHAW and various form thereof. One of the Complainants is called Shaw Industries Group and, according to the contentions submitted by Complainants, some of the SHAW marks have been in use since at least as early as 1985 in connection with carpeting and flooring related goods provided directly to the consumer. Reference is made to Annex C to the Complaint and to the Annex A to the supplemental filing.

The records indicate that Complainants directly or indirectly are the owners of the trademark SHAW U.S. Reg. No. 2291182, which was issued November 9, 1999, for carpets in class 27 (first use on November 25, 1985, and in commerce as of the same date). Complainants are also directly or indirectly the owners of other SHAW marks and various form thereof, including SHAW U.S. Reg. No. 2877500. Complainants contend that they are related companies owned by the same corporate parent and have a sufficient common interest in the domain name <shawcarpet.com>.

Pursuant to the contentions submitted by Complainants, Shaw owns and has registered, directly or indirectly through affiliates, numerous domain names containing its SHAW marks. Reference is made to Annex D to the Complaint. An independent survey was conducted by the Panel on the registrar Network Solutions and the Panel has found that the domain names <shawcarpets.com>, <shaw-carpets.com>, <shawcarpeting.com>, and <shawscarpet.com> are registered as alleged.

The Panel notes that, according to documentary evidence in the records, Respondent registered the disputed domain name on September 16, 1995. An independent survey was conducted by the Panel by attempting to reach “shawcarpet.com” website and the Panel has found that it is apparently inactive.

 

5. Parties’ Contentions

A. Complainants

Complainants argue that Respondent’s domain name <shawcarpet.com> is confusingly similar to the SHAW marks in which Complainants have rights, particularly because Complainant Shaw is in the business of selling carpets. Complainants contend, relying on previous WIPO UDRP decisions, that the addition of the “carpet” portion does nothing to differentiate the disputed domain name from the SHAW mark and that the addition of the “.com” does not change the likelihood of confusion.

Complainants further contend that Respondent has no right or legitimate interest with respect to its use of the domain name because: (i) Respondent is not listed as an owner of any United States trademark containing the word SHAW, and there is no evidence that Respondent has been commonly known by the disputed domain name, (ii) Respondent is not making any noncommercial or fair use of the domain name, and there is no evidence of the Respondent’s use of, or a demonstrable preparation to use, the domain name in connection with a bona fide offering of goods or services, since the “shawcarpet.com” website is inactive.

Complainants also contend, relying on previous WIPO UDRP decisions, that inactivity by Respondent amounts to the domain name being used in bad faith. Complainants argue that, despite having registered the disputed domain name years ago, Respondent has made no legitimate use of the domain name. That inaction by Respondent coupled with Complainants’ well-known marks support a finding of bad faith.

B. Respondent

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

 

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the Respondent’s default does not automatically result in a decision in favor of the Complainant and that the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainants. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainants have complied with such requirements.

B. Identical or Confusingly Similar

Complainants argue that Respondent’s domain name <shawcarpet.com> is confusingly similar to the SHAW marks in which Complainants have rights, particularly because Complainant Shaw is in the business of selling carpets.

The trademark SHAW in which Complainants have rights is distinctive and the domain name <shawcarpet.com> incorporates such mark in its entirety. The addition of the generic term “carpet” does not affect a finding that the disputed domain name is confusingly similar to Complainants’ registered trademarks. Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that Quixtar and <quixtarmortgage.com> are legally identical).

In this type of combination it is clear that the registered trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. See Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159 (finding that the term “shop” is non-distinctive and may create an association with the registered trademark to which it is added).

The likelihood of confusion is reinforced by the fact that Shaw is in the business of selling carpets and owns, directly or indirectly through affiliates, various other domain names incorporating generic terms associated with the SHAW mark. An independent survey was conducted by the Panel on the website of Complainant Shaw “www.shawfloors.com” and the Panel has noted under the “Shaw History” link that “[i]n 1985, Shaw made its first appearance on the list of America’s largest corporations -the Fortune 500- with more than $500 million in sales and close to 5,000 employees”.

Therefore, this Panel accepts the contentions submitted by Complainants to the effect that Shaw is one of the United States’ leading carpeting and flooring companies and is also well-known internationally. Given the geographic location of Canada, where Respondent is located, the effects of such trademark awareness were certainly felt in that region. In addition, Respondent is apparently in the same field of business activity as Complainant Shaw in light of its designation as “Floor-Tech Floor Coverings”. This is a further indication that Respondent was certainly aware of Complainant Shaw.

Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540.

Therefore, the Panel finds that the <shawcarpet.com> domain name is clearly confusingly similar to Complainants’ mark SHAW and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

Complainants contend that Respondent has no legitimate interests or rights in the disputed domain name because Respondent is not the owner of any United States trademark containing the word SHAW, and there is no evidence that Respondent has been commonly known by the disputed domain name.

The consensus view in previous WIPO UDRP Panel decisions has been that a Complainant is required to make out an initial prima facie case, following which the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel is of the opinion that the Complainants have done enough to establish a prima facie case. In fact, Respondent is not commonly known by the disputed domain name, the principal element of the disputed domain name is the Complainant Shaw’s name and marks, and it is evident that Complainants have not authorized the Respondent to use their mark and name in the domain name.

Complainants further contend that Respondent is not making any non-commercial or fair use of the domain name, and that there is no evidence of the Respondent’s use of, or a demonstrable preparation to use, the domain name in connection with a bona fide offering of goods or services, since the “shawcarpet.com” website is inactive.

By defaulting, the Respondent has failed to provide the Panel with any evidence of a bona fide offering of goods and services or of a legitimate noncommercial or fair use of the domain name. On the contrary, the fact that the website “www.shawcarpet.com” has been inactive is evidence that Respondent is not making any non-commercial or fair use of the disputed domain name.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

Complainants also contend that Respondent’s inaction with respect to the domain name for years coupled with Complainants’ well-known marks support a finding of use in bad faith.

The requirement of a domain name being used in bad faith has not been regarded as limited to positive action; inaction is within the concept. Therefore, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. The Panel must consider whether on the particular facts of a complaint the passive holding of domain names by Respondent amounts to Respondent acting in bath faith. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sony Kabushiki Kaisha v. Inja Kil, WIPO Case No. D2000-1409.

In previous WIPO UDRP decisions, relevant circumstances were held to include the reputation of Complainant’s trademark and its use internationally, and the Respondent’s failure to provide evidence of any actual or contemplated good faith use by it of the domain name. Both of those circumstances are of equal application here. The Panel has accepted Complainants’ contention that Shaw is well known internationally as a leading carpeting and flooring company and has found that the disputed domain name is likely to be perceived as somehow connected to the owner of the SHAW trademark. In addition, by defaulting Respondent has failed to provide any evidence from which the Panel might conclude that Respondent has used or intends to use the domain name in good faith. In light of those circumstances and of the fact that the disputed domain name has been arguably inactive for years, the Panel is of the opinion that Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.

However, such finding is not enough to hold that Complainants have proved the third element in paragraph 4(a) of the Policy. The use of the conjunction “and” in paragraph 4(a)(iii) requires that Complainants prove registration in bad faith as well as use in bad faith. This means that use in bad faith alone is an insufficient ground for obtaining a remedy under the Policy.

It is apparently less clear whether the Complainants have proved that the domain name has been registered in bad faith by Respondent given the fact that the disputed domain name was registered on September 16, 1995, and the U.S. Reg. No. 2291182 for the trademark SHAW was issued in the United States on November 9, 1999.

The consensus view in previous WIPO UDRP Panel decisions has been that “[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right... However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.1).

The Panel notes that the Policy protects common law trademarks and service marks. Various WIPO UDRP decisions have made it clear. Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Giampolo Matteucci v. Webmaster AWG, WIPO Case No. D2001-1135; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. In addition, previous decisions refer to a trademark right , not merely to a registered trademark right, which is consistent with the concept that trademark rights may exist in unregistered marks.

Complainants argue that “[s]ince 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 customer”. This means that the SHAW mark has been used by Shaw for as long as 10 years before the disputed domain name was registered, and such trademark use cannot be considered as merely de minimis. By defaulting, Respondent failed to rebute such facts and the Panel takes the view that the inference of Complainants’ acquisition of trademark rights by continuing use flows naturally from information provided by Complainants.

In addition, an independent survey was conducted by the Panel on the website of the United States Patent and Trademark Office and the Panel has found in U.S. Reg. No. 2291182 for trademark SHAW that prior registrations include U.S. Reg. 1444248 for trademark SHAW for carpet and related products, which was issued June 23, 1987 (first use on November 25, 1985, and in commerce as of the same date).

Given the fact that Respondent registered the domain name <shawcarpet.com> 10 years after Complainant Shaw started using the SHAW marks and names in connection with carpeting and flooring related goods directly to customer, that Respondent has not provided any explanation as to why it has registered this domain name, and that Respondent apparently never used the disputed domain name in connection with any bona fide offering of goods or services, the Panel concludes that Respondent was aware of the Complainant Shaw and registered the disputed domain name fully conscious of what advantages it could make at some time in future.

The Panel concludes that (a) the domain name <shawcarpet.com> is confusingly similar to Complainants’ marks and names, (b) the Respondent has no rights or legitimate interests in the disputed domain name, and (c) the Respondent has registered and used the disputed domain name in bad faith. Therefore, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently met.

 

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 <shawcarpet.com> be transferred to the Complainant Shaw.


Manoel J. Pereira dos Santos
Sole Panelist

Dated: March 29, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0075.html

 

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