Shaw Cablesystems G.P. v. Milan Kovac
Claim Number: FA1208001460888
Complainant is Shaw Cablesystems G.P. (“Complainant”), Canada. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shawconnect.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2012; the National Arbitration Forum received payment on October 16, 2012. The Complaint was received in both English and Slovak.
On October 15, 2012, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <shawconnect.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 23, 2012, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of November 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shawconnect.com. Also on October 23, 2012, the Slovak language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shawconnect.com> domain name is confusingly similar to Complainant’s SHAW mark.
2. Respondent does not have any rights or legitimate interests in the <shawconnect.com> domain name.
3. Respondent registered or used the <shawconnect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant states that it is a general partnership of Shaw Communications Inc. Complainant’s submits that its cable operations provide cable television, Internet and digital phone services to residential and business customers. Complainant also contends that it owns 55 trademarks and 160 domain names incorporating the SHAW name. Complainant asserts that its trademark holdings with the CIPO include those for the SHAW (Reg. No. TMA597803) and SHAW.CA marks (Reg. No. TMA648038). The Panel finds that Complainant has submitted sufficient evidence indicating its trademark ownership of the SHAW family of marks, and that such evidence establishes Policy ¶ 4(a)(i), regardless of Respondent’s location in Slovakia. See Cactus Rests. Ltd. v. Web Master, FA 671297 (Nat. Arb. Forum May 23, 2006) (“The Panel should not “second guess” the Patent Offices of Canada and the USA to say that Cactus Club should not have been registered as a trademark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
As for the second prong of Policy ¶ 4(a)(i), Complainant states “The Domain Name includes the registered trademark SHAW.” The Panel notes that Respondent’s <shawconnect.com> domain name contains the SHAW mark entirely while adding the generic term “connect” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that as such the disputed domain name is confusingly similar to Complainant’s SHAW mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent does not own any trademarks encompassing the disputed domain name. While Complainant does not argue that Respondent is not commonly known by the disputed domain name, the Panel observes that the WHOIS information for the <shawconnect.com> domain name identifies “Milan Kovac” as the registrant. The Panel compares the registrant information with the terms of the disputed domain name, and finds that no connection appears to exist between the two. Without any evidence being submitted by Respondent, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Complainant claims that Respondent’s disputed domain name resolves to a “landing page that references ‘SHAW CANADA’, ‘Shaw WebMail Login’, ‘Email Sign in’, “SMTP Mail Server’ ‘WebMail Server’ and ‘Shaw Internet Service’. This landing page links to the Complainant’s website www.shaw.ca.” Complainant also contends that Respondent’s website is set up to disrupt Complainant’s business with the intent for commercial gain. The Panel notes that Complainant’s screenshot of the disputed domain name shows that the resolving website features various third-party links to Complainant’s official website as well as links to home builders and renovators and e-mail services. See Complainant’s Exhibit D. The Panel notes that Complainant provides cable television service, and that the links presented in the screenshot, which do not resolve to Complainant’s official website, are therefore non-competing. Prior UDRP panels have held that similar use of disputed domain names does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and this Panel so finds in the present proceedings. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant argues that Respondent has registered the disputed domain name in “order to attract Internet users to the sites to which the domain names are linked with the intention of causing such trouble and confusion that eventually the Complainant or a competitor of the Complainant would be obliged to purchase, or lease the domain name from the Respondent for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain name.” While the Panel declines to find that bad faith exists under Policy ¶ 4(b)(i) as Complainant seems to be arguing without further evidence or extrapolation, the Panel notes the circumstances surrounding the disputed domain name’s resolving website may allow a finding of bad faith under Policy ¶ 4(b)(iv). As noted above, Complainant has shown that the disputed domain name resolves to a website featuring links to Complainant’s official website as well as links to other, unrelated businesses. See Complainant’s Exhibit D. The Panel presumes that Respondent commercially benefits from such use of the disputed domain name, as prior UDRP Panels have done. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). Therefore, the Panel finds that Respondent’s use of the SHAW mark within the <shawconnect.com> domain name in connection with a click-through links directory website is sufficient evidence for the Panel to find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shawconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 3, 2012
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