DECISION

The Shaw Group Inc. v. Dimitre Ofipenkov aka Jack Goodwin

Claim Number: FA0201000104090

PARTIES

Complainant is The Shaw Group Inc., Baton Rouge, LA (“Complainant”) represented by Russel O. Primeaux, of Kean, Miller, Hawthorne, D'Armond, McCowan & Jarman, L.L.P.  Respondent is Jack Goodwin aka Dimitre Ofipenkov, Utrecht (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <theshawgrp.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 23, 2002; the Forum received a hard copy of the Complaint on January 25, 2002.

On January 25, 2002, Register.com confirmed by e-mail to the Forum that the domain name <theshawgrp.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@theshawgrp.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <theshawgrp.com> domain name is confusingly similar to Complainant’s THE SHAW GROUP trademark.

Respondent lacks rights to and legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant holds common law rights in its THE SHAW GROUP mark, as it has used the name in commerce since 1987.  Moreover, Complainant is the largest supplier of fabricated piping systems and services in the world.  Complainant and its subsidiaries have 13,000 employees with offices in the United States, Australia, Canada, the United Kingdom, Venezuala, and Bahrain.  Complainant is also the leading provider of full-service, value-added engineering, procurement, construction, consultation, maintenance services and the leading manufacturer of specialty pipe fittings and supports for the power generation, crude oil refining, chemical pipe fittings, petrochemical processing, and oil and gas exploration and production industries.  Additionally, Complainant has a pending registration for THE SHAW GROUP mark and has established a presence on the Internet through its <shawgrp.com> domain name. 

Respondent registered the disputed domain name on September 28, 2001.  Respondent’s <theshawgrp.com> domain name is currently linked to Complainant’s website located at <shawgrp.com>.  Moreover, Respondent gave Complainant’s physical address and phone number as its own contact information on its Whois information form.  The Whois registrar required Respondent to update its contact information after Complainant informed the registrar of the error, and Respondent quickly complied; however, the current contact information for Respondent is incomplete.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established common law rights in THE SHAW GROUP through its extensive use of the distinctive mark in worldwide commerce.

The <theshawgrp.com> domain name is confusingly similar to Complainant’s THE SHAW GROUP mark because it incorporates Complainant’s mark with the exception of two letters. Minor changes to Complainant’s mark like the addition or deletion of a few letters by Respondent do not create a distinctive mark, but rather, render the domain name confusingly similar to Complainant’s mark.  Moreover, the addition of “.com” to Complainant’s mark is irrelevant for purposes of finding confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

           Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has failed to answer Complainant’s claim, the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent’s use of the domain name <theshawgrp.com>, confusingly similar to Complainant’s THE SHAW GROUP mark and its <shawgrp.com> website, takes advantage of inevitable Internet user confusion as to the association or sponsorship of Respondent’s website.  This is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

Moreover, Respondent, known as Dimitre Ofipenkov, has not provided any evidence that it is commonly known by “The Shaw Group” mark or “theshawgrp.com.”  As a result, the Panel may conclude that Respondent is not commonly known by the disputed domain name, and therefore has no rights to, or legitimate interests in the domain at issue pursuant to Policy ¶ 4(c)(ii).  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Finally, Respondent’s <theshawgrp.com> domain name is merely a misspelling of Complainant’s THE SHAW GROUP mark, and as such, Respondent’s use of the domain name is not considered a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

  

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s link to Complainant’s website, and Respondent’s use of Complainant’s address information on the Whois information form indicates that it had actual knowledge of Complainant and its mark at the time of registration. Respondent’s registration and use of a domain name confusingly similar to the mark, when it clearly knew of Complainant’s mark and its business, evidences bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

            Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <theshawgrp.com> domain name be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: March 1, 2002

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