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Shaw Industries Group, Inc., Columbia Insurance Company v. shawindustries [2005] GENDND 1916 (23 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc., Columbia Insurance Company v. shawindustries

Case No. D2005-1037

1. The Parties

The First Complainant is Shaw Industries Group, Inc., Dalton, Georgia, United States of America and the Second Complainant is Columbia Insurance Company, Omaha, Nebraska, United States of America, represented by Neal & McDevitt, United States of America.

The Respondent is shawindustries, General Delivery, Georgetown, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <shawindustries.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2005. On October 4, 2005, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On October 4, 2005, Address Creation 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on October 7, 2005. 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2005.

The Center appointed John Swinson as the Sole Panelist in this matter on November 9, 2005. 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

The First Complainant is Shaw Industries Group, Inc., a corporation with its principal place of business located in Georgia, United States of America. It is a Berkshire Hathaway Company.

The Second Complainant is Columbia Insurance Company, a corporation with its principal place of business in Nebraska, United States of America.

The First and Second Complainants are related companies owned by the same corporate parent. Together the First and Second Complainants are called the “Complainants” for the purposes of this decision.

The Second Complainant is the holder of United States trademark registrations for the word mark “SHAW”, as evidenced by the trademark registration numbers below (“SHAW” word marks):

Registration Number	Goods and Services	Registration Date
2291182	Carpets	November 9, 1999
2877500	Non-metal floor tiles and wooden flooring	August 24, 2004

The First Complainant is a carpeting and flooring company. The First Complainant uses the “SHAW” word marks in connection with carpeting and flooring related goods. The First Complainant is well known throughout the United States of America and internationally for supplying carpeting and other flooring related goods. In addition the First Complainant has websites through which it promotes its products and store locations and provides company information most of which divert through to <shawfloors.com>.

The disputed domain name was registered by the Respondent on October 18, 2003.

5. Parties’ Contentions

A. Complainant

The Complainants rely on the factual background set out in section 4 (“Factual Background”) above.

The Complainants contend that the disputed domain name is identical or at least confusingly similar to the mark “SHAW” as registered and used by the Complainants, as the disputed domain name fully incorporates the Complainants’ mark and adds the generic term “industries”.

According to the Complainants, the Respondent has no right or legitimate interest in the disputed domain name as:

(a) the Respondent is not listed as an owner of any United States trademark containing any “SHAW” formatives;

(b) there is no evidence that the Respondent has applied for any United States trademark registrations;

(c) there is no evidence of the 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;

(d) there is no evidence that the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; and

(e) the Respondent is not making a legitimate non-commercial or fair use of the domain name.

In addition the Complainants allege that the Respondent registered and used the disputed domain name in bad faith as the Respondent 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 of a product or service on the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order to qualify for a remedy, the Complainants must make out the three elements set out in paragraph 4(a) of the Policy, namely:

(a) the domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainants.

A. Identical or Confusingly Similar

There are two elements that the Complainants must establish under paragraph 4(a)(i) of the Policy – (1) that the Complainants have rights in a trademark or a service mark and (2) that the disputed domain name is identical or confusingly similar to the mark.

The Panel finds that the Complainants have established that they have valid rights in the “SHAW” mark. The Panel considers that the Complainants have provided strong evidence of extensive use of that mark in the United States of America and internationally and consequentially have goodwill in the mark.

The only two differences between the disputed domain name and the Complainants’ “SHAW” mark are the addition of the word “industries” and the addition of the top-level domain “.com” suffix.

It is well established that the suffix “.com” is an irrelevant distinction that does not change the likelihood for confusion. See Microsoft Corporation v. Amit Mehrotra, (WIPO Case No. D2000-0053)

“Industries” is a generic word. The use of such a generic word does not serve to distinguish the Respondent’s website from the “SHAW” mark sufficiently to avoid the disputed domain name being confusingly similar to the Complainants’ mark.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainants contend that the Respondent has no legitimate interest in the use of the disputed domain name.

Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s legitimate rights in the disputed domain name for the purposes of 4(a)(ii) of the Policy. The Respondent had the opportunity to respond and present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding establishing any circumstances that could demonstrate any rights or legitimate interest to the disputed domain name.

The Complainants are not entitled to relief simply by default, however the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147).

There is no evidence of the 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. The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Complainants have shown evidence that its mark “SHAW” has been used widely in the United States of America since 1985 and is also known internationally.

The Panel visited the website at the disputed domain name on November 21 and 22, 2005. This website consisted of links to other websites such as flooring and carpet suppliers, gambling websites and dating websites. In addition, the website used the Complainants’ “SHAW” word mark in relation to carpet and flooring related products, and was designed to look like a legitimate website for a carpet company. There was no statement or notice appearing on the website at the disputed domain name making it clear that the website was not associated with the Complainants (or any other supplier of products and services referred to on the website) to reduce the likelihood of confusion as to the existence of such an association. The website appears to be designed to present users with search engine results, and thus derives revenue from click-throughs from confused web users wanting to deal with Shaw Industries.

There appears to be a clear intent to attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainants mark.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, the panel orders that the domain name, <shawindustries.com> be transferred to the First Complainant.

John Swinson
Sole Panelist

Dated: November 23, 2005