Shaw Industries Group, Inc. and Columbia Insurance Company v. Global Web Development, LLC
Case No. D2006-0702
1. The Parties
The Complainants are Shaw Industries Group, Inc, of Georgia, United States of America and Columbia Insurance Company of Nebraska, United States of America (collectively, the “Complainant”).
The Respondent is Global Web Development, LLC of Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <shawmethemoney.com>
is registered with Tucows (Delaware) Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2006. On June 7, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 7, 2006, Tucows 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. 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 July 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2006.
The Center appointed Edward C. Chiasson Q.C. as the
sole panelist in this matter on August 7, 2006. The panelist submitted a Statement
of Acceptance and Declaration of Impartiality and Independence, as required
by the Center to ensure compliance with the Rules, paragraph 7. The Administrative
Panel finds that it was constituted properly.
4. Factual Background
The following information derives from the Complaint and the material delivered with it.
The relevant trademarks in the Complaint are SHAW® and various formatives thereof (hereinafter referred to as “Complainants’ marks” or “SHAW® marks”), which the Complainants use in connection with carpeting and flooring related goods and products.
The Complainant Columbia is the sole and exclusive owner of the United States registered trademarks SHAW (and Design)®, U.S. Reg. No. 1444248, which was issued on June 23, 1987 and has been in use since at least as early as November 25, 1985, SHAW® U.S. Reg. No. 2291182, which was issued on November 9, 1999 and has been in use since at least as early as 1985, and SHAW® U.S. Reg. No. 2877500 (collectively referred to as the “SHAW® registrations”).
Because SHAW® U.S. Reg. Nos. 1444248 and 2291182 has been in continuous use for five consecutive years subsequent to the date of registration and is still in use in commerce, it is incontestable under § 15 of the Lanham Act, 15 U.S.C. § 1065.
The Complainants use, own and have owned for numerous years various applications and registrations for the “SHAW® marks” and various formatives thereof for carpeting and flooring related goods and products.
Since at least as early as 1985, the Complainant Shaw has used prominently some of the “SHAW® marks” and names in connection with carpeting and flooring related goods provided directly to the consumer. The Complainant have spent millions of dollars displaying, promoting, and advertising the “SHAW® marks”. As a result of these efforts, the Complainant Shaw is one of the United States’ leading carpeting and flooring companies and is well-known internationally.
The Complainant Shaw owns and has registered numerous domain names containing its “SHAW® marks”, including the domain names <shaw-me-the-money.com> and <shaw-methemoney.com>.
The Complainant is using these domain names in connection with a hard surface flooring promotion for salespersons employed by independent flooring dealers. In this promotion, salespersons are awarded cash bonuses for purchases made by consumers of Shaw flooring products. This promotion has been in existence since 2004.
The Respondent is not listed as an owner of any United States trademark containing any SHAW formatives. There is no evidence that the Respondent owns any or has applied for any United States trademark registrations or that the Respondent (as an individual, business, or other organization) has been known commonly by the subject domain name.
Although the website to which the subject domain name resolves presently is inactive, it was at one point being used to advertise a sex, telephone service. Previously, when consumers typed the URL “www.shawmethemoney.com”, they arrived at a site that advertised sex, telephone services and which solicited telephone sex customers.
The Respondent did not participate in this proceeding.
5. Parties’ Contentions
A. Complainant
The Complainants relies on their use and registration of the “SHAW® marks”. They assert that the subject domain name is confusingly similar to these marks. The Complainants notes that the words “me the money” are added and contend: “[t]he presence of this phrase does nothing to differentiate the domain name registration from the registered SHAW® marks”.
To support the proposition that the Respondent does not have a legitimate interest in the subject domain name, the Complainant notes that the Respondent is not authorized to use the Complainant’s marks or the subject domain name and that the Respondent presently makes no use of the subject domain name, although it did do so previously for a pornographic site.
Reference also is made to the ownership of domain names that incorporate the words “Shaw me the money”.
Bad faith is said to be illustrated by facts that support the other claim criteria.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(I) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(I) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;
(ii) registration of the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the “SHAW® marks”.
The subject domain name incorporates as its primary element the Complainants’ SHAW mark in its entirety. It also includes the words “me the money”, and the suffix “.com”, the latter of which can be disregarded for the purpose of this comparison. The inclusion of the words “me the money” after the word “shaw” do little to distinguish the subject domain name from the Complainants’ SHAW mark. Because the Complainant Shaw appears to have made considerable prior use of its SHAW mark in combination with the words “me the money” to offer flooring goods and services through its registered domain name <shaw-me-the-money.com>, the potential for confusion between the subject domain name and the SHAW mark is enhanced. The Administrative Panel is satisfied that the Complainant have met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The fact that a respondent uses a domain name to resolve to a pornographic site is not per se illegitimate, but using a domain name that is confusingly similar to the mark of another for that purpose raises questions of legitimacy.
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so it would be subject to the inferences that flow ordinarily from the not unreasonable assertions of fact of a complainant.
The Respondent appears to have no authority to use the Complainant’s mark and it has registered a domain name containing words identical to those used by the Complainant in its business. That is, the Respondent has incorporated into the subject domain name the use by the Complainant of its mark.
The Administrative Panel is satisfied that the Complainants have made at least a prima facie showing that the Respondent lacks rights or legitimate interests in the subject domain name. This has not been rebutted by the Respondent.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not lead automatically to a conclusion of bad faith, but the facts leading to the finding often are relevant to the bad faith inquiry.
The phrase “shaw me the money” appears to be unique to the Complainants. Its use by the Respondent suggests that it knew about the Complainants, their business and mark at the time the subject domain name was registered. No plausible or legitimate reason is given for choosing the phrase. The course of conduct of the Respondent does not provide any credible basis for using the phrase or suggest any plausible good faith based on which registration or use may have occurred.
The Administrative Panel is satisfied that the Complainants have met the requirements
of paragraph 4(a)(iii) of the Policy.
7. Decision
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asked that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson Q.C.
Sole Panelist
Dated: August 18, 2006
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