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