Shaw Industries Group, Inc. v Zhong Yu

WIPO Case No. D2025-1250

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shaw Industries Group, Inc. v. Zhong Yu

Case No. D2025-1250

1. The Parties

The Complainant is Shaw Industries Group, Inc., United States of America (“US”), represented by Iverson IP,

US.

The Respondent is Zhong Yu, China.

2. The Domain Name and Registrar

The disputed domain name <smartcore-flooring.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2025. connection with the disputed domain name. On March 27, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2025.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on May 5, 2025. 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

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4. Factual Background

The Complainant is a US based company that provides its goods and services related to flooring including but not limited to laminate flooring, planks, vinyl flooring, hardwood flooring, non-metal floor panels, engineered hardwood flooring, and flooring underlayments. The Complainant is the sole owner of a family of SMARTCORE formative trademarks for use in connection with flooring and related goods and services. In addition, some of the SMARTCORE registrations have been in continuous use for five consecutive years subsequent to the date of registration and are still in use in commerce. The Complainant has been prominently using the SMARTCORE registrations and names in connection with a broad variety of flooring related goods, provided directly to consumers since 2013. The Complainant is the registered proprietor of the trademarks in the US mentioned below:

- SMARTCORE ULTRA – US Registration No. 5151716, registered on February 28, 2017, in class 19;

- SMARTCORE – US Registration No. 4516504, registered on April 15, 2014, in class 19;

- SMARTCORE PRO – US Registration No. 5959555, registered on January 14, 2020, in class 19;

- SMARTCORE NATURALS – US Registration No. 5959557, registered on January 14, 2020, in class
19; and

- SMARTCORE SOFT & SOUND – US Registration No. 6319640, registered on April 13, 2021, in class
19.

The details pertaining to these trademarks are annexed as Annex D by the Complainant.

Additionally, the Complainant also owns several domain names featuring the term “smartcore” mentioned below:

- <smartcorefloors.com>

- <smartcore-luxury-vinyl.com>

- <smartcore-lvt.com>

- <smartcore-vinyl.com>

- <smartcorenatural.com>

- <smartcoreultra.com>

- <smartcoreultraxl.com>

The disputed domain name was registered on June 17, 2024. At the time of filing of the Complaint, the disputed domain name resolves to a website titled “Smartcore® Flooring: Vinyl, Pro, Ultra, Waterproof Flooring Official Website”, displaying the Complainant’s SMARTCORE trademark. The disputed domain name, currently redirects to another website – also prominently using the Complainant’s trademark SMARTCORE (see below) on its website:

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disputed domain name provides strong evidence of confusing similarity to the SMARTCORE trademarks. In
this regard the Complainant has relied on Pfizer, Inc. v. United Pharm. Ltd., WIPO Case No. D2001-1206,
Telstra Corp. v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423, E. I. du Pont de Nemours & Co. v.
Richi Indus. S.r.l., WIPO Case No. D2001-1206, Utensilerie Assoc. S.p.A. v. C & M, WIPO Case No.
D2003-0159, Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053, Careerbuilder LLC v. Names
for Sale, WIPO Case No. D2005-0186, Tigerdirect Inc. v. Jim Sun, Sun Son’s Pty, Ltd., WIPO Case No.
DAU2010-0005, and Boscolo Grp. S.p.A. v. domains Ventures, WIPO Case No. D2006-0231.

The Complainant asserts that the Respondent lacks any rights or legitimate interest in the disputed domain name. The Complainant contends that the Respondent is not listed as an owner of any US trademark containing the formative term “Smartcore” and that there is no evidence that the Respondent, as an individual, business or other organization, is commonly known by the disputed domain name. The Complainant further submits that the Respondent has neither made any use, nor any demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services, legitimate, noncommercial or fair use of the disputed domain name. Further, the Complainant contends that the disputed domain name contains no system through which any purchase of goods or services can be made merely contains product description, general information about the company and a form to contact the owner of the website associated with the disputed domain name. Moreover, the Complainant did a search on the Washington Secretary of State Corporations and Charities System on March 17, 2025 only to find that neither any company has been established, nor does any company contain the term “Smartcore” within the state of Washington. A copy of the disputed domain name’s Terms & Conditions page and the Corporations and Charities System Search results are annexed as Annex G and Annex H, respectively along with the Complaint. Further, the “About” page of the disputed domain name indicated that the company is an American company, and is headquartered in Georgia, with no city or town specified, the Complainant further searched on the Georgia Corporations Division Business Search tool and found no evidence of any Georgia-based company in the US by the name “Smartcore Flooring” but only two companies, that operate outside of the flooring industry and is clearly not associated with the Respondent. A copy of the Respondent’s “About” page and a copy of the Georgia business search results are annexed as Annex I and Annex J, respectively along with the Complaint. Further, the Complainant contends that the Respondent has never been authorized by the Complainant to use the SMARTCORE trademarks for any purpose. In this regard the Complainant has relied on Shaw Indus. Grp., Inc. & Columbia Ins. Co. v. Admin., Domain, WIPO Case No. D2007-0583, and Express Scripts, Inc. v. Windgather Invest. Ltd./Mr. Cartwright, WIPO Case No. D2007-0267.

The Complaint contends that the Respondent has registered the disputed domain name in bad faith as the Respondent is familiar with the Complainant and its presence in the carpets and flooring industry, and their trademarks. The Complainant asserts that the registration of a trademark in a domain name, of which the

Respondent must reasonably have been aware, constitutes opportunistic bad faith. The Complainant
submits that they have spent significant amount of money in promoting, selling and advertising the
SMARTCORE products, and it continues to maintain ongoing business operations in the US. The
Complainant further submits that the Respondent’s use of the disputed domain name with a confusingly
similar trademark as the Complainant is aimed at making undue commercial gains by redirecting visitors to
its unconnected website. The Complainant further submits that the Respondent is using the Complainant’s
trademarks nefariously to collect user data and falsely drive inquiries to the Respondent’s contact form,
which constitutes bad faith. In this regard the complainant has relied on Veuve Clicquot Ponsardin, Maison
Fondee en 1772 v. Polygenix Grp. Co., WIPO Case No. D2000-0163, Hardee’s Food Systems, Inc. v. Jones,
WIPO Case No. D2006-1571, Int’l Bus. Publishers, Inc. v. The Ctr. for Bus. Intelligence, LLC, WIPO Case
No. D2001-0181, Lifetime Prods., Inc. v. IQ Mgmt Corp., WIPO Case No. D2004-0719, DaimlerChrysler
Corp. and DaimlerChrysler Ser. N. Am. LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, citing
Royal Bank of Canada v. Henry Chan, WIPO Case No. D2033-0031, and Shaw Industries Group, Inc. &
Columbia Insurance Co. v. Marathon Triad, WIPO Case No. D2006-1408.

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B. Respondent

The Respondent did not reply to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term “flooring” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied with the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel agrees that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel agrees with the Complainant that the Respondent, as an individual, business or other
organization, is not commonly known by the disputed domain name. The Panel finds that the Respondent
has not demonstrated any bona fide, legitimate, noncommercial or fair use of the disputed domain name.
The Panel notes that the disputed domain name incorporates the Complainant’s trademark in full, together
with a term related to the Complainant’s products, and resolves to a website titled “Smartcore® Flooring:
Vinyl, Pro, Ultra, Waterproof Flooring Official Website”, with the Complainant’s trademark displayed thereon.
Internet users may think that the disputed domain name and its related website is connected to the
Complainant, when the same is in fact not true.

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Panels have held that the use of a domain name for illegal activities such as impersonation can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered on June 17, 2024, long visitors to its website through creating a likelihood of confusion with the Complainant.
after the Complainant established rights in its SMARTCORE trademarks and domain names and its variants.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

As described under the second element regarding the use of the website at the disputed domain name, panels have held that the use of a domain name for impersonation constitutes bad faith. WIPO Overview 3.0, section 3.4. The Panel also notes that the Respondent may have used the disputed domain name nefariously to collect user data and falsely drive inquiries through its contact form on the website. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <smartcore-flooring.com> be transferred to the Complainant.

/Shwetasree Majumder/
Shwetasree Majumder
Sole Panelist
Date: May 26, 2025

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the
Complainant’s SMARTCORE trademarks. The Complainant asserts that the Respondent’s use of the term
“flooring” does not differentiate the disputed domain name from its registered SMARTCORE trademarks.
The Complainant contends that the Respondent uses the SMARTCORE trademarks in connection with
flooring goods, as well as the SMARTCORE formative domain name <smartcorefloors.com>. The
Complainant further submits that the Respondent’s use of the words “smartcore”, and “flooring” in its