Ashley Furniture Industries, Inc. v. Colours Ltd
Claim Number: FA1405001559431
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Colours Ltd (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleysfurmiture.com>, registered with Key-Systems GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2014; the National Arbitration Forum received payment on May 16, 2014.
On May 22, 2014, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <ashleysfurmiture.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 May 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2014 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@ashleysfurmiture.com. Also on May 23, 2014, the 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 June 19, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Policy ¶ 4(a)(i)
i. Complainant, Ashley Furniture Industries, Inc., uses the ASHLEY FURNITURE mark in connection with goods and services including retail store services in the field of furniture.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004).
iii. The disputed domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark.
2. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. The website located at the disputed domain name first shows a survey and then becomes a “parked” website, offering only links to other websites, including websites offering products offered by competitors of Complainant.
3. Policy ¶ 4(a)(iii)
i. Respondent has registered and is using the disputed domain name in bad faith.
ii. Respondent has engaged in a pattern of bad faith as demonstrated by prior UDRP decisions.
iii. The website located at the disputed domain name first shows a survey and then becomes a “parked” website, offering only links to other websites, including websites offering products offered by competitors of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides retail store services in the field of furniture.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004).
3.Respondent registered the <ashleysfurmiture.com> domain name on February 22, 2013.
4.The website located at the disputed domain name first shows a survey and then becomes a “parked” website, offering only links to other websites, including websites offering products offered by competitors of Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark Complainant asserts that it uses the ASHLEY FURNITURE mark in connection with retail store services in the field of furniture. Complainant argues that it owns a trademark registration with the USPTO for the ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004). See Complainant’s Exhibit 3. The Panel notes that although Respondent operates in Saint Kitts and Nevis, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s residence or operation, so long as it can prove rights in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant’s USPTO registration of the ASHLEY FURNITURE mark proves that it has rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ASHLEY FURNITURE mark. Complainant contends that Respondent’s <ashleysfurmiture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark. Complainant asserts that Respondent adds the letter “s” after the “ASHLEY” portion of the mark and intentionally misspells the “FURNITURE” portion by substituting the letter “m” for the letter “n.” The Panel holds that Respondent’s inclusion of letters or substitution of letters in a term does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Finally, the Panel notes that Respondent adds a generic top-level domain (“gTLD”) to Complainant’s mark in the disputed domain name. The Panel holds that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel finds that Respondent’s <ashleysfurmiture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ASHLEY FURNITURE mark , and use it in its domain name, merely changing a letter in the spelling of the trademark from ”n” to “m” and adding the letter “s” ;
(b) Respondent registered the disputed domain name on February 22, 3013 ;
(c) The website located at the disputed domain name first shows a survey and then becomes a “parked” website, offering only links to other websites, including websites offering products offered by competitors of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <ashleysfurmiture.com> domain name. Complainant alleges that it has not licensed or otherwise authorized Respondent to use its registered trademarks. The Panel observes that Respondent is identified as “Colours Ltd” in the WHOIS record. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel concludes that Respondent is not commonly known by the <ashleysfurmiture.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant submits that Respondent’s website located at the <ashleysfurmiture.com> domain name first shows a survey and then becomes a “parked” website, offering only links to other websites, including websites offering products offered by competitors of Complainant. See Complainant’s Exhibit 1. The Panel notes that Respondent’s “parked” website provides links titled “Ashley Furniture Store,” “Inexpensive Office Furniture,” “Furniture Outlet,” and others. Id. The Panel determines that Respondent’s use of the domain name to provide links to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in a pattern of bad faith as demonstrated by prior UDRP decisions. In so arguing, Complainant cites to Military Order of the Purpose Heart and Military Order of the Purple Heart Service Found. v. Colours Ltd., D2013-0950 (WIPO July 15, 2013); and Asurion, LLC v. Colours Ltd, D2013-0388 (WIPO April 23, 2013). The Panel will take those decisions into account in its determination of the issue of bad faith in the present matter. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant states that Respondent’s website located at the <ashleysfurmiture.com> domain name first shows a survey and then becomes a “parked” website, offering only links to other websites, including websites offering products offered by competitors of Complainant. See Complainant’s Exhibit 1. The Panel notes that when users arrive at Respondent’s “parked” webpage, they encounter links titled “Solid Pine Bedroom Furniture,” “Homeline Furniture,” “Oak Dining Furniture,” as well as others. Id. Complainant asserts that consumers trying to locate Complainant’s website may be diverted to competitors of Complainant, believing that the disputed domain name is owned by or associated with Complainant. As the Panel finds that Respondent is using the disputed domain name to divert Internet users away from Complainant’s website for which Respondent commercially gains, the Panel holds that Respondent has registered and is using the <ashleysfurmiture.com> domain name in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ASHLEY FURNITURE mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleysfurmiture.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 20, 2014
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