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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey

Case No. D2007-0555

 

1. The Parties

The Complainants are Shaw Industries Group Inc. (“Complainant Shaw”), c/o Alan McDonald, Dalton, Georgia, United States of America; and Columbia Insurance Company (“Complainant Columbia”), c/o Brennan Neville, Omaha, Nebraska, United States of America. The Complainants are represented by Neal & McDevitt, LLC, United States of America.

The Respondents are DomainsByProxy, Inc., Scottsdale, Arizona, United States of America, named as Respondent in the original Complaint (“Respondent DomainsByProxy” ); and Patti Casey, Tampa, Florida, United States of America, added as an additional Respondent (“Respondent Casey”) in the amendment to the Complaint (the “Amended Complaint”). Neither Respondent is represented by counsel.

2. The Domain Name and Registrar

The disputed domain name <shawrugsonline.com> (the “Domain Name”) is registered with Go Daddy Software (the “Registrar” or “Go Daddy”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007. On April 13, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On April 18, 2007, the Registrar transmitted by email to the Center its verification response stating that Respondent Domains by Proxy was not the current registrant listed for the Domain Name but that Respondent Casey was listed as the registrant of the Domain Name, and providing the contact details for the administrative, billing, and technical contact for Respondent Casey. In response to a notification by the Center of this information from the Registrar, the Complainant filed the Amended Complaint on April 21, 2007. The Center verified that the Complaint together with the Amended 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 Respondents of the Complaint and the Amended Complaint, and the proceedings commenced on April 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2007. Neither Respondent submitted any response by May 14, 2007. Accordingly, the Center sent a Notification of Respondent Default on May 18, 2007 to Respondent Domains by Proxy, and on June 7, 2007 to Respondent Casey.

The Center appointed Dana Haviland as the sole panelist in this matter on June 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.

On June 11, 2007, Respondent Casey sent an email to the Center requesting information about how to respond to the Complaint and stating:

“My family has owned a rug store (Rugs of the World) in Tampa, Florida for 23 years and have been a customer of Shaw for a number of years. We are building a new website that will have e-commerce capabilities (we are/will be selling Shaw rugs) and that is why we bought the name. I used my name when I bought the domain and not our rug store.”

On June 14, 2007, the Complainant’s counsel sent an email to the Center stating that:

“Initially, and per WHOIS information, the Registrant of the domain name ‘www.shawrugsonline.com’ was listed as DomainsByProxy, Inc./DomainsByProxy.com. Then, per information we received from WIPO, the Registrant was listed as Patti Casey. ‘Rugs of the World’ is not listed as a Registrant of the domain name ‘www.shawrugsonline.com’ and is not a Registrant or party in this proceeding.”

On June 15, 2007, the Panel asked the Center to advise the parties that both the June 11 and June 14 emails, though not timely, would be considered by the Panel, and on June 26, 2007, the Panel issued Administrative Panel Procedural Order No. 1 (the “Procedural Order”) pursuant to paragraphs 10 and 12 of the Rules. In this Procedural Order, the Panel requested further information and documentary evidence from the parties relating to the various factual and legal issues presented by the parties’ June 11 and June 14 emails and set dates for submission of a Second Amended Complaint on July 3, 2007, and submission of a Response by Respondent Casey on July 10, 2007. In view of the supplemental pleading schedule, the date for issuance of the Administrative Decision was extended to July 17, 2007.

The Complainants submitted an electronic version of a Second Amended Complaint by email on July 3, 2007, which incorporated the exhibits attached to the original Complaint, and did not include any additional documentary evidence. The Respondent submitted an electronic version of the Response to the Second Amended Complaint (the “Response”) on July 10, 2007, which referred to various documentary exhibits that were not available in electronic form, but were attached to a hard copy of the Response sent to the Center and received by the Panel on July 20, 2007. Due to exceptional circumstances, the date for issuance of the Administrative Decision was extended to August 3, 2007.

4. Factual Background

The Complainants own numerous and varied trademarks that include the word SHAW (collectively “the SHAW Marks”). Complainant Shaw has used the SHAW Marks in connection with carpeting and flooring related goods and products for many years. Complainant Columbia is the sole and exclusive owner of three of the SHAW Marks - the United States registered trademarks SHAW (and Design), U.S. Reg. No. 1444248, issued on June 23, 1987; SHAW, U.S. Reg. No. 2291182, issued on November 9, 1999; and SHAW, U.S. Reg. No. 2877500, issued on August 24, 2004. Complaint, Annex C.

The Complainants also use, own and have owned for numerous years various other applications and registrations for the SHAW Marks for carpeting and flooring related goods and products, including, but not limited to, the following registrations for carpet and rug related products: COUTURE BY SHAW(and Design), U.S. Reg. No. 2547524; SHAW (and Design), U.S. Reg. No. 26922764; SHAW (and Design), U.S. Reg. No. 1444248, SHAW CONTRACT, U.S. Reg. No. 2811298; SHAW CONTRACT GROUP, U.S. Reg. No. 3191367; SHAW HOSPITALITY, U.S. Reg. No. 2675008; SHAW S/C, U.S. Reg. No. 2881343, and SHAW RUGS, U.S. Reg. No. 2682164, issued on February 11, 2003 (the “SHAW RUGS Mark”). Complaint, Annex C.

Complainant Shaw owns and has registered numerous domain names incorporating the SHAW Marks, including <shawfloors.com>, <www.shawcarpet.com>, <shawcarpeting.com>, <shawcarpets.com>, <shaw-carpets.com>, <shawcarpets.net>, <shawarearugs.com>, <shawrug.com>, <shawrugs.com>, and <shawonline.com>. Complaint, Annex D.

Respondent Casey is an officer and employee of Rugs of the World, Inc., a family business that owns Rugs of the World, a rug store in Tampa, Florida which advertises and sells numerous brands of rugs, including Shaw rugs, at its store and on its existing Internet website, “www.rugsoftheworld.com” (the “Rugs of the World website”). Response, Annex B. Respondent Casey purchased the Domain Name on behalf of Rugs of the World, which the Complainants have acknowledged is an authorized Shaw dealer. See also Response, Annex A.

Respondent Casey’s responsibilities as an employee of Rugs of the World, Inc. include advertising, marketing, and the Rugs of the World website. On behalf of Rugs of the World, Respondent Casey purchased the Domain Name and various other domain names referencing other brands of rugs sold by Rugs of the World, each to be used to direct interested Internet customers to the Rugs of the World website, once construction of e-commerce improvements to the Rugs of the World website have been completed to enable online sales.

The Domain Name website currently contains references to the SHAW Marks and advertising and sponsored links to other websites, including some selling Shaw products, others in competition with Complainant Shaw, and unrelated websites. Complaint, Annex E.

 

5. Parties’ Contentions

A. Complainants

In the Second Amended Complaint, which incorporates the Annexes of the original Complaint by reference, the Complainants provide evidence of their ownership of the SHAW Marks and contend that Complainant Shaw has used at least some of the SHAW Marks in connection with carpet and flooring related goods since as early as 1985. They allege that the Complainants have spent millions of dollars displaying, promoting, and advertising the SHAW Marks, and that as a result of these efforts, Complainant Shaw is one of the United States’ leading carpeting and flooring companies and is also well-known internationally.

The Complainants contend that the Respondent has deliberately infringed and diluted Complainants’ invaluable rights in the SHAW Marks through the unlawful registration of the Domain Name.

They allege that the Domain Name is confusingly similar to the SHAW Marks in which they have rights, that the Respondent has no rights or legitimate interest in the Domain Name, and that the Domain Name has been registered and is being used in bad faith. The Complainants request transfer of the Domain Name.

(1) Identical or confusingly similar

The Complainants contend that their SHAW Marks are distinctive and well known in the carpeting and flooring industry, and that the Domain Name is confusingly similar to the SHAW Marks because it contains the SHAW trademark and adds only the terms “rugs” and “online”, which, they argue, do not avoid the likelihood of confusion.

(2) Rights or legitimate interests

The Complainants contend that the Respondent has no right or legitimate interest with respect to its use of the Domain Name because the Respondent has no trademark rights to the Domain Name, has not been commonly known by the Domain Name, and is not making a legitimate non-commercial or fair use of the Domain Name. Rather, they argue, the Respondent is using the domain name with intent for commercial gain and to misleadingly divert consumers. Submitting copies of pages of the Respondent’s Domain Name website, they complain that the website references “Shaw” numerous times, has links that divert the consumer to non-Shaw associated websites, and lists products of competitors of Shaw on various pages of the website. Complaint, Annex E. The Complainants contend that the use of the SHAW Marks in the Respondent’s website as well as the links to competitors of Shaw suggests that the Respondent is not using the domain name in connection with a bona fide offering of goods or services.

The Complainants also argue that the long list of Complainant Shaw’s own registered domain names containing the SHAW Marks is evidence that the Respondent does not have a legitimate interest in using the SHAW Marks in the Domain Name.

The Complainants acknowledge receipt from the Center of Respondent Casey’s email dated June 11, 2007, in which she stated that her family owns the rug store Rugs of the World and that Rugs of the World is a customer of Complainant Shaw.

The Complainants acknowledge that Rugs of the World is a Shaw dealer, but they argue that Rugs of the World is not the registrant of the Domain Name, does not own the Domain Name, and is not a party to this proceeding, and that neither of the Respondents in this proceeding is a Shaw dealer. At the time of submission of the original Complaint, they note, Respondent Domains ByProxy was the registrant of the Domain Name, as evidenced by the Whois registration submitted as Exhibit A to the Complaint. According to the Complainants, Respondent Domains By Proxy is a company that “allows an entity to get around a ‘public’ registration to a ‘private’ one, by using the private registration process, thus allowing the true registrant to hide behind the name DomainsByProxy, Inc.”. Respondent Casey was subsequently identified by the Registrar as the current registrant of the Domain Name and added as a Respondent in the Amended Complaint.

In any event, the Complainants argue, Shaw dealers are never authorized to use the Complainants’ Shaw Marks as part of a domain name. According to the Complainants, Shaw dealers are permitted to use the SHAW Marks in their advertising, but only in accordance with the Shaw advertising guidelines. The Complainants note that Rugs of the World does not own the Domain Name, but that even if it did, “nowhere in any agreement between Shaw and Rugs of the World is Rugs of the World authorized to use the Complainants’ Marks in or as a domain name”. The Complainants argue that the use of the Shaw Marks in a domain name is not legitimate in the absence of such an agreement, and that there can thus be no right or legitimate interest in the Domain Name. They argue further that use of the Complainants’ SHAW Marks is not reasonably necessary for Rugs of the World to be able to resell Complainant Shaw’s carpet/rug products and that to the contrary, Rugs of the World could use any domain name for its business without using Complainants’ SHAW Marks.

(3) Registration and use in bad faith

Citing paragraph 4(b)(iv) of the Policy, the Complainants contend that the Respondent, by using the Domain Name incorporating their well – known SHAW Marks, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ SHAW Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

According to the Complainants, the sample pages of the Respondent’s Domain Name website attached as Annex E to the Complaint show that the Domain Name website references various forms of the SHAW Marks, contains unauthorized links using the Complainants’ Marks to websites of various flooring and carpet companies, and includes links to competitors of Complainant Shaw, as well as to unrelated websites. The Complainants note that the Domain Name website also appears to be designed to present Internet users with search engine results, so that the website potentially derives revenue from “click-throughs” from confused web users who were looking for a Shaw website or information about Shaw. Thus, they argue, the Respondent’s use is a clear attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ Mark. The Complainants cite various WIPO UDRP cases holding that a domain name that incorporates a well-known trademark which is used to redirect Internet users to external websites, including websites of the complainant’s competitors, evidences bad faith. In this case, they argue, the use of the Complainants’ Marks simply for the purpose of driving traffic to the Respondent’s website and other websites is not a bona fide attempt to offer goods and services to the public and constitutes evidence of bad faith.

B. Respondents

Respondent DomainsbyProxy did not submit any response to the Complaint, Amended Complaint or Second Amended Complaint. Since Respondent Domains ByProxy is simply a privacy domain name registration service, and the Registrar has confirmed that the registered owner of the Domain Name is Respondent Casey, the Panel will treat Respondent Casey as the sole Respondent in this proceeding. See Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.

Respondent Casey did not submit a timely response to the Amended Complaint naming her as an additional Respondent in this proceeding, but her June 11, 2007, email was accepted by the Panel under paragraphs 10 and 12 of the Rules, as was the Complainants’ June 14, 2007 email reply. Respondent Casey submitted a timely Response to the Second Amended Complaint (the “Response”).

Respondent Casey denies the Complainants’ assertion that Respondent “has deliberately infringed and diluted” the Complainants’ rights to the Shaw Marks and further denies the “unlawful” registration of the Domain Name. Respondent Casey does not challenge the Complainants’ rights to the SHAW Marks and does not deny the confusing similarity of the Domain Name, but she asserts rights and legitimate interests in the Domain Name, and she denies bad faith registration and use of the Domain Name. Respondent Casey requests that the Panel deny transfer of the Domain Name.

Respondent Casey states that for the past 23 years, the Respondent’s family has owned Rugs of the World, which is the oldest rug store in Tampa, Florida, with an approximate 8000 square foot showroom. Respondent states that she is an officer and employee of Rugs of the World, Inc., which owns the rug store.

According to Respondent Casey, Rugs of the World has bought rugs from Complainant Shaw and sold Shaw rugs as an authorized dealer for approximately 15 years. She offers evidence that Rugs of the World is listed on Complainant Shaw’s website under the authorized dealer link. Response, Annex A. The Respondent states that Rugs of the World has relationships with approximately 60 rug vendors and that in the 23 years that Rugs of the World has been in business, no dispute of any kind has ever been presented to Rugs of the World by any vendor until the Complaint in this proceeding.

The Respondent states that, as an employee of Rugs of the World, she has numerous responsibilities which include advertising, marketing, and the Rugs of the World website. According to the Respondent, the Rugs of the World website is at present informational only and does not have e-commerce capabilities, but this website does currently highlight vendors whose rugs are sold in the Rugs of the World showroom and provides links to these vendors’ authorized websites, of which one is Complainant Shaw’s, as evidenced by Annex B to the Response.

Respondent Casey states that, as part of her responsibilities at Rugs of the World, she has been working to expand Rugs of the World’s online initiatives. As part of that initiative, the Respondent, on behalf of Rugs of the World, is managing the construction of an updated version of the Rugs of the World website, which will showcase, and in some instances offer for on-line purchase, authorized rugs (including Complainant Shaw’s), that currently are being sold in the Rugs of the World showroom.

Respondent Casey asserts that, on behalf of Rugs of the World, she hired Yahoo to host and provide e-commerce capabilities for the updated version of the Rugs of the World website once it is completed and submits evidence thereof in Annex C to the Response. Although employees of Rugs of the World are responsible for maintaining the current Rugs of the World website which is not currently being hosted by Yahoo, she states, Yahoo was and continues to receive payment from Rugs of the World for services it will provide once the new version of the Rugs of the World website is completed. The Respondent, on behalf of Rugs of the World, also hired a Yahoo authorized website development firm to assist Rugs of the World in the construction of an updated website. Response, Annex D.

At the same time, the Respondent, on behalf of Rugs of the World, purchased from the GoDaddy Internet website “www.GoDaddy.com” (“GoDaddy”), domain names related to authorized products and services that were currently being sold in the Rugs of the World showroom and that may be used to direct people to the Rugs of the World website once it is completed. One of the domain names the Respondent purchased on behalf of Rugs of the World is the now disputed Domain Name. The Respondent states that, as she has done many times, because Rugs of the World does not have any type of corporate credit card, she purchased all domain names using a personal credit card and then had Rugs of the World reimburse her. The Respondent states that she registered all domain names using the contact information that corresponded to her personal credit card information with the intent that they would be used by Rugs of the World. The  Respondent states that she had never purchased any domain names for personal use or on behalf of any other person or entity prior to the purchase of the above mentioned domain names and has not purchased any since.

The Respondent states that at the time that she purchased the domain names from GoDaddy on behalf of Rugs of the World, she requested “private registration”, assuming that “private registration” meant that the purchased domain names, which included the disputed Domain Name, would not and could not be used by anyone or any entity, including GoDaddy, for any reason. Respondent asserts that neither she nor others, on her behalf or on behalf of Rugs of the World, authorized any use of the purchased domain names. She states that her only intent was and is to use the purchased domain names on behalf of Rugs of the World to direct people to the new version of the Rugs of the World website which is still under construction. Because of the limited nature, scope and capability of the current Rugs of the World website, the Respondent states, she made the business decision on behalf of Rugs of the World not to use the domain names at the time of purchase with the current version of the Rugs of the World website, but rather to wait until the new and much improved version of the Rugs of the World website is complete. The Respondent states that Rugs of the World expects to have the new version of their website available by the end of calendar year 2007.

The Respondent contends that paragraph 4(a) of the Policy provides that domain name owners must transfer their domain name registration to a complainant only if all three elements are present. She asserts that it is clear in this case that all three conditions for transfer have not been met.

(1) Identical or confusingly similar

The Respondent states that, on behalf of Rugs of the World, she does not challenge the trademark rights asserted. The Respondent acknowledges that the Domain Name is confusingly similar to a trademark in which the Complainants have rights.

(2) Rights or legitimate interests

The Respondent states, on behalf of Rugs of the World, that the Respondent is not using the Domain Name with the intent to misleadingly divert customers. She states that no steps by the Respondent or others on her behalf or on behalf of Rugs of the World have been taken to add advertisements or sponsored links to other companies to the Domain Name website, and that the “offending website pages” referred to by the Complainants in the Second Amended Complaint and shown as attachments in Annex E to the original Complaint are not associated with the Respondent nor others on her behalf or on behalf of Rugs of the World. The Respondent asserts that her review of Annex E was the first time she has seen these pages. Because the Respondent purchased the domain name from GoDaddy and because a GoDaddy advertisement is displayed on each page along with the byline “This page is parked free, courtesy of GoDaddy.com”, the Respondent submits that these website pages are the result of an action taken by GoDaddy that was never knowingly authorized by the Respondent. The Respondent states that she will, when allowed by the Policy, immediately contact GoDaddy on behalf of Rugs of the World and request that the Domain Name be removed from any such site, and that she will take the necessary steps to understand how and why this occurred and how to avoid this result in the future.

The Respondent asserts that she is using the Domain Name in connection with a bona fide offering of goods or services, citing paragraph 4(c)(i) of the Policy, which provides that a respondent can establish rights or legitimate interests in respect of a domain name if it can show “before any notice to you 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”.

The Respondent, on behalf of Rugs of the World, states that Rugs of the World sells and has been selling Shaw Rugs for over 15 years. The Respondent asserts on behalf of Rugs of the World that the Respondent is not using nor intends to use the Complainants’ trademark to bait Internet users and then switch them to other goods, and has never represented on the Rugs of the World website that it is the owner of the Complaints’ SHAW Marks. Further, the Respondent, on behalf of Rugs of the World, will make clear on its revised website that it never intends to represent itself as the trademark owner.

The Respondent asserts a legitimate interest in using the Domain Name. The Respondent does not dispute that when the Complainants prepared the original Complaint, Respondent DomainsByProxy, was listed as the registrant. The Respondent states that when she registered the Domain Name with GoDaddy.com there was no intent to “hide behind” Respondent DomainsByProxy. Having never before purchased a domain name, the Respondent went to a well-known site and purchased a number of domain names related to authorized products and services that currently were being sold in the Rugs of the World showroom, and chose “private registration” specifically because the updated version of the Rugs of the World website was not completed, thinking that by choosing private registration she would reduce the chance that the Domain Name and the other domain names purchased that day would be used for any purpose other than to direct people to the updated version of the Rugs of the World website upon completion of its ongoing construction. The fact that DomainsByProxy, Inc. was listed as the registrant of the Domain Name was not known to the Respondent until it was brought up as part of this proceeding. Registrant had no intent to “hide behind” a private registration, and instead was waiting for the updated version of the website to be completed.

The Respondent has submitted a copy of Complainant Shaw’s “Shaw Rugs Retailer Policies”, attached as Annex E to the Response, which includes, inter alia, the following language:

“Policy on Use of Trademarks and Copyrighted Images”

Limited license. Shaw Rugs is pleased to grant its authorized dealers a limited, nonexclusive license to use [the SHAW Marks] , provided that (1) the Marks are used solely in connection with the advertisement, promotion and sale of Shaw Rugs products; and (2) dealers use these Marks in accordance with all applicable instructions and guidelines from Shaw Rugs.

Rights retained by Shaw Rugs. These Marks are protected by various forms of intellectual property law, and Shaw retains all rights in and complete control over their use. All Internet websites and other media featuring these Marks or any Shaw products are subject to the approval of Shaw. Shaw reserves the right to deny, limit, or withdraw this approval and to terminate this license at any time and for any reason. This license is non-transferable and may not be sublicensed or assigned by the dealers.”

Response, Annex E.

Because all domain names purchased by the Respondent, including the Domain Name, were purchased by the Respondent for use by Rugs of the World, the Respondent intends to immediately transfer the Domain Name to Rugs of the World, when authorized under the Policy.

Neither the Respondent nor Rugs of the World has registered other domain names incorporating the SHAW Marks attached as Annex C to the original Complaint. The Respondent contends that it was fair to presume that the Complainants did not want to register the Domain Name, which is further evidenced by the voluminous names that have already been registered as shown in Annex D to the original Complaint. The Respondent has not cornered the market in all domain names and has not deprived the trademark owner of reflecting its own mark in a domain name.

The Respondent contends that while the Complainants own and have registered numerous domain names containing their trademarks, this does not preclude the Respondent, on behalf of Rugs of the World, from having a legitimate interest in using the Domain Name.

(3) Registration and use in bad faith

The Respondent denies that any purchase or use of the Domain Name has been done in bad faith.

While the Respondent, on behalf of Rugs of the World, has acknowledged owning with the intent to use a domain name which is identical or confusingly similar to a trademark in which the Complainants have rights, the Respondent denies that the Respondent, on behalf of Rugs of the World, 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 the Respondent’s website or a product or service on the Respondent’s website.

On the Rugs of the World website, there is a link authorized by Complainant Shaw to Complainant Shaw’s authorized website where Rugs of the World is listed as an authorized dealer. Response, Annex A (copy of website page at “www.shawfloors.com”). With respect to the issue of the “harmful websites” which the Complainants again reference in arguing bad faith, the Respondent, on behalf of Rugs of the World, reasserts that the Respondent is not using the domain name with the intent to misleadingly divert customers to sites that derive revenue from “click-throughs”, sites that direct visitors to unconnected websites, and/or competitor websites. The Respondent reiterates that no steps by the Respondent or others on her behalf or on behalf of Rugs of the World have been taken to add advertisements or sponsored links to other companies to the Domain Name website.

The Respondent asserts that the facts above demonstrate that the Domain Name was not registered and is not and will not be used in bad faith.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer of a respondent’s domain name: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith. Policy, paragraph 4(a).

The Policy, in paragraph 4(c), sets forth various ways in which the evidence may show that a respondent has rights and legitimate interests in the domain name, and, in paragraph 4(b), also sets forth various circumstances that can constitute evidence of registration and use in bad faith.

A. Identical or Confusingly Similar

The Complainants have asserted and provided evidence of their rights in numerous and varied registered trademarks incorporating the word Shaw, including, inter alia, the SHAW RUGS Mark, and have argued that the Domain Name is confusingly similar to their SHAW Marks.

The Respondent has not challenged the Complainants’ assertion and evidence of rights to the SHAW RUGS Mark or any other of the Complainants’ SHAW Marks and has acknowledged the confusing similarity of the Domain Name.

The Domain Name <shawrugsonline.com> incorporates Complainant Shaw’s registered trademark SHAW RUGS plus the word “online”. Neither the inclusion of the descriptive word “online” nor the addition of the suffix “.com” to the Complainant’s trademark precludes a finding that the Domain Name is confusingly similar to the trademark. See Chicago Pneumatic Tool Company LLC v. Tool Gopher, WIPO Case No. D2007-0330; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0041; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1330. See also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No D2000-1409 (“Neither the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”, and thus Policy, Paragraph 4(a)(i) is satisfied”).

The Panel finds that the Domain Name in this case is confusingly similar to the Complainants’ registered trademark SHAW RUGS, as required by paragraph 4(a)(i) of the Policy. In view of this finding, the Panel does not deem it necessary to determine whether the Domain Name is confusingly similar to the other registered trademarks of the Complainants.

B. Rights or Legitimate Interests

Under paragraph 4(c)(i) of the Policy, a respondent can establish rights or legitimate interests in respect of a domain name if the respondent can show “before any notice to [respondent] of the dispute, [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”.

“Respondents seeking to show preparations to make a legitimate use must give Panels some evidence: acceptable evidence may include business plans of documented expenses, but will of course vary with the nature of the use and the particulars of the domain name.” World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

The Respondent has provided acceptable evidence of her preparations, before notice of this dispute, to use the Domain Name in connection with the sale of Shaw rugs by her family’s rug store business, Rugs of the World, an authorized Shaw dealer. She is an officer and employee of Rugs of the World, with responsibility for marketing, advertising and the Rugs of the World website. On July 31, 2006, on behalf of Rugs of the World, Respondent Casey signed a contract with Vastparent Corporation, a Yahoo!Merchant Design Partner, for construction of an e-commerce website for Rugs of the World. Response, Annex D. On August 7, 2006, Yahoo!Merchant Solutions sent an order confirmation and billing summary for a Merchant Starter plan to Respondent Casey providing for monthly payments, which Respondent Casey states have been and continue to be paid. Response, Annex C.

Around the same time, in August 2006, Respondent Casey, on behalf of Rugs of the World, purchased the Domain Name from GoDaddy together with several other domain names related to other rug products sold by Rugs of the World, intending to use the Domain Name and other domain names to link to the planned new e-commerce Rugs of the World website upon its completion. According to Respondent Casey, she used her personal credit card because Rugs of the World does not have a corporate credit card, and was then reimbursed by Rugs of the World. This domain name proceeding was not instituted until April 2007.

The Complainants acknowledge that Rugs of the World is an authorized Shaw Rugs retail dealer. Second Amended Complaint; Response, Annex A (page from “www.shawfloors.com” website listing authorized dealers, including Rugs of the World); Complaint, Annex D (list of Shaw domain names including “www.shawfloors.com”).

Rugs of the World’s copy of Shaw Rugs Retail Policies states that Shaw Rugs grants authorized dealers a limited, nonexclusive license to use the Shaw Marks “solely in connection with the advertisement, promotion and sale of Shaw Rugs products” and “in accordance with all applicable instructions and guidelines from Shaw Rugs”. Response, Annex E. Internet advertising and sales of Shaw rugs by authorized dealers are specifically permitted “subject to the approval of Shaw”. Response, Annex E.

However, the evidence clearly shows that Complainant Shaw is aware that Rugs of the World sells other brands of rugs and has previously allowed Rugs of the World to use the SHAW Marks in connection with advertising and sale of Shaw rugs on the Rugs of the World website where competing rug products are also advertised for sale. The Rugs of the World website has a link to Complainant Shaw’s “www.shawfloors.com” website where Rugs of the World is listed as an authorized dealer. Response, Annex A; Response, Annex B (pages from Rugs of the World website stating that Rugs of the World sells rugs from over 65 vendors and, on a Product Center page, featuring seven brands of rugs together with trademarks, descriptions, and in some cases links to the manufacturers’ websites, including Shaw rugs with a SHAW Mark, description, and link to “www.shawfloors.com”).

The Complainants argue that their policies do not specifically authorize use of the Shaw Marks in a domain name, and that they never allow any Shaw dealer to use the SHAW Marks in a domain name, so there can thus be no right or legitimate interest in the Domain Name. The Shaw Rugs Retail Policies exhibit submitted by the Respondent permits use of the SHAW Marks for Internet sales, but is silent with respect to domain names. Response, Annex E.

It is beyond the scope of this UDRP proceeding to interpret the policies or agreements between the parties or to determine whether they have been breached or the Complainants’ trademark rights infringed. The Panel is concerned here only with the issue whether the Respondent has for the purposes of the Policy shown rights or legitimate interests in the Domain Name by showing demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy.

The Complainants argue further that use of the Complainants’ SHAW Marks is not reasonably necessary for Rugs of the World to be able to resell Complainant Shaw’s carpet/rug products and that to the contrary, Rugs of the World could use any domain name for its business without using the Complainants’ SHAW Marks. In support of this argument, the Complainants cite dicta from the decision in Shaw Industries Group, Inc., Columbia Insurance Company v. Marathon Triad, WIPO Case No. D2006-1408, a default case against a Shaw carpet dealer involving the registration of numerous domain names incorporating the SHAW Marks, unlike the instant contested case involving only one domain name.

The Complainants do not cite, however, Shaw Industries Group, Inc., Columbia Insurance Company v. Arcadia Publishing Co., WIPO Case No. D2007-0090, in which the panelist denied the complainants’ request for transfer of the domain name <shawcarpetoutlet.com> on the grounds that the respondent Shaw carpet dealer had used the domain name in connection with a newly-constructed e-commerce Internet website for sales of Shaw carpets for over a year and a half, which the panelist held was use of the domain name in connection with a bona fide offering of goods and services, whereby the respondent had acquired rights and legitimate interests in the domain name.

Paragraph 4(c)(i) of the Policy does not limit a respondent’s acquisition of rights and legitimate interests in a domain name to actual use of the domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) specifically provides that a respondent need show only demonstrable preparations for use of the domain name in connection with a bona fide offering in order to establish rights and legitimate interests in the domain name. Here, the evidence submitted by Respondent Casey is ample proof of demonstrable preparations for similar use of a domain name in connection with a bona fide offering of Shaw products and related services.

The Panelist is aware of the often-cited decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which lists several factors to be considered in determining whether an offering of goods and services is bona fide. Here, Rugs of the World, the beneficial owner of the Domain Name, like the respondent domain name registrant in Oki Data, is an authorized dealer in the trademarked goods, does not misrepresent itself as the trademark owner, and has not registered multiple domain names incorporating the trademark in question.

The Oki Data list of factors also includes a “requirement” that “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”. Rugs of the World has for many years been offering Shaw rugs through its store and on its existing Internet website and for some time has been making demonstrable preparations to enhance and continue its advertising and sale of Shaw rugs by using the Domain Name to drive additional Internet customers interested in Shaw rugs to its new e-commerce Rugs of the World website. It is true that the Respondent and her family use the existing Rugs of the World website, and plan to use the new Rugs of the World e-commerce website, to sell not only Shaw rugs, but also the rugs of Shaw’s competitors, just as they have done in their store for the many years that they have been an authorized Shaw dealer, but there is no evidence that they have ever used SHAW Marks or other rug vendor trademarks for bait-and-switch purposes or that they intend to do so through the Domain Name. The Respondent has also registered other domain names reflecting other brands of rugs sold by Rugs of the World to be used to direct Internet customers interested in those brands to Rugs of the World new e-commerce website. Thus the Respondent’s intent does not seem to be to use the Domain Name or the other rug related domain names to bait and switch customers from one rug brand to another, but rather to use each of the various domain names as a form of advertising to direct interested customers to the Respondent’s online store to find the rugs in which they are interested, just as Rugs of the World’s current website advertises and offers links to several competing rug brands apparently without prior objection by the Complainants.

It is also true that the Domain Name website currently contains unauthorized references to SHAW marks and advertising and sponsored links to vendors of Shaw rugs and vendors of competing rugs, as well as to unrelated websites, presumably for purposes of pay-for-click revenue. However, the Respondent denies that she or anyone on behalf of Rugs of the World knew of or arranged for the “parking” of the Domain Name or the addition of the “click-through” advertising and sponsored links to the Domain Name website. The Respondent further states that she intends to take steps to cause the web portal GoDaddy, which she submits may be responsible for this “parking” and pay-per-click use of the Domain Name website, to cease this unauthorized activity.

Absent the current improper use of the Domain Name website, for which the Panel in the particular circumstances of this case accepts that Respondent Casey is not presently responsible, the planned use of the Domain Name for direction of customers interested in Shaw rugs to the Rugs of the World online store where Shaw rugs are sold appears to the Panel to be a use connected only to the sale of Shaw rugs and thus connected to a “bona fide” offering of goods within the meaning of paragraph 4(i) of the Policy. See K&N Engineering, Inc. v. Kinnor Services, WIPO Case No. D2000-1077 (transfer denied where respondent distributed “automotive products, including those of the complainant” and respondent’s use of the domain name was “merely to provide, via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the complainant”, which the Panel held constituted use in connection with a bona fide offering of goods and therefore rights and legitimate interests in the domain name).

The Panel notes that “the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting … the Policy was not designed to establish for the holder of a strong trademark a bar to entry of any online competitors or other online legitimate sellers”. Dr. Ing. H.c.F. Porsche AG v. Del Fabbro Lauren, WIPO Case No. D2004-0481.

For the above reasons, the Panel finds that the Respondent has established rights and legitimate interests in the Domain Name pursuant to paragraph 4(c)(i) of the Policy by showing that before any notice of this dispute to the Respondent, she had commenced demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that evidence of bad faith is shown where “by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 Domain Name initially registered to Respondent DomainsByProxy and currently registered to Respondent Casey leads to a website consisting of advertisements and sponsored links to, inter alia, various rug vendor websites, including competitors of Complainant Shaw. It thus appeared to the Complainants, and indeed to the Panel at the commencement of this proceeding upon receipt of the case file which included no response from either Respondent, that the Domain Name had been registered and used in such fashion in order to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with Complainant Shaw’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products or services offered there. See Columbia Insurance Co. and Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741 (bad faith found by this Panelist under paragraph 4(b)(iv) of the Policy where respondent’s domain name website was similarly used and respondent submitted no response to the complaint); Chicago Pneumatic Tool Company LLC v. Tool Gopher, WIPO Case No. D2007-0330; Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. 2003-0640 (bad faith under paragraph 4(b)(iv) of the Policy found where the domain name website was “a mere collection of links to other websites” and thus “obviously merely a vehicle for generating advertising revenue”).

Respondent Casey has explained that the Domain Name was registered and used for the purpose of directing Internet traffic interested in Shaw rugs to the Rugs of the World website which currently includes information about Shaw products and Rugs of the World’s status as an authorized Shaw dealer and will also provide the opportunity to buy Shaw products from Rugs of the World online or through the Tampa, Florida store upon completion of construction of e-commerce capabilities. Complainant Shaw has expressly authorized Rugs of the World to advertise and sell Shaw products, as is evident from the Shaw website page listing Rugs of the World as a retailer of Shaw rugs and the Shaw Rugs Retailer Policies nonexclusive license to Rugs of the World for the use of the Shaw Marks for advertising and Internet sales under certain conditions. Whether the registration and use of the Domain Name by the Respondent and Rugs of the World for the purpose of advertising and retail Internet sales of Shaw rugs is in accordance with or in violation of the terms of the agreements and policies in place between the Complainants and Rugs of the World is an issue beyond the scope of this administrative proceeding. However, the Panel is not persuaded either the registration or this contemplated use of the Domain Name constitutes bad faith.

Although the current use of the Domain Name for click-through advertising revenue might in another case support an inference of bad faith use without more, in this case the Respondent denies that she or Rugs of the World intended, arranged for, knew of or profited from this pay-per-click use, and asserts that she intends to take steps to stop such use. The Respondent states unequivocally that no steps by the Respondent or others on her behalf or on behalf of Rugs of the World have been taken to add advertisements or sponsored links to other companies to the Domain Name website.

This does not appear to be a cybersquatting case, and the Panel declines to draw an inference of bad faith registration or use by Respondent Casey in view of her uncontroverted statements. Moreover, even if the facts with respect to the current use of the Domain Name could support an imputation of bad faith use to Respondent Casey, as the registered owner of the Domain Name who arguably should be aware of its use, they do not support an inference of bad faith registration by Respondent Casey, and under the Policy, both are required to prove a claim for transfer of the Domain Name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.

The Panel finds that the Complainants have not established bad faith registration and use of the Domain Name as required by paragraph 4(a) (iii) of the Policy.

7. Decision

The Panel finds that although the Domain Name is confusingly similar to the Complainants’ SHAW Marks, the Respondent has shown a legitimate interest in the Domain Name and the Complainants have not shown that the Respondent registered and used the Domain Name in bad faith. Accordingly, the Panel denies the Complainants’ request that the Domain Name <shawrugsonline.com> be transferred.


Dana Haviland
Sole Panelist

Dated: August 3, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0555.html

 

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