Ashley Furniture Industries Inc. v. Ename
Holdings
Claim Number: FA0204000110848
PARTIES
Complainant
is Ashley Furniture Industries Inc.,
Arcadia, WI (“Complainant”) represented by Daniel
J. Aiman, of Kostner Koslo &
Brovold. Respondent is Ename Holdings, Wilmington, DE (“Respondent”)
represented by Jordan H. Richland.
The
domain name at issue is <ashley.biz>,
registered with Corporate Domain Names,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 25, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
2002, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 24, 2002.
Complainant
and Respondent each submitted an Additional Submission, which were both
determined to be untimely. Therefore,
it is the Panel’s discretionary right to consider or disregard the Additional
Submissions upon determining the outcome.
On July 2, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
as the single Panelist.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
Respondent
has registered a domain name that is identical to a mark in which Complainant
has rights and that Respondent has no such rights or legitimate interests.
Further Complainant alleges that Respondent has no legitimate intent to use or
develop the disputed domain name and that Respondent acted in bad faith and
with knowledge at the time of registering the disputed domain name that
Complainant had rights in the mark.
B. Respondent makes the following
allegations in response:
Respondent
contends that Respondent’s background in registering domain names in the area
of medical services qualifies Respondent to register this domain name. Respondent contends that Respondent has
registered names under the names of each of Respondent’s children, under
Respondent’s nickname and under Ashley for Respondent’s partner and
professional colleague, Ashley Coffield. Respondent admits that Respondent has
registered domain names in the past for the purpose of holding them for sale.
Respondent urges that no bad faith exists.
C. Additional Submissions:
Both
Parties submitted Additional Submissions, which were not filed timely. The Panel reviewed those submissions and
finds that consideration of them would not affect the outcome set out in this
Decision.
Complainant
has established in this proceeding that it holds rights in the Ashley mark
through registration with the United States Patent and Trademark Office and
through continuous use. Complainant
holds various marks containing the Ashley mark, including Registration Numbers
1,600,879 for furniture; 1,864,076 for retail sales; 2,231,864 for retail store
services; 2,449,045 for retail store services; 76/363814 for retail store
services; 1,604,686 for furniture; 1,903,578 for furniture; 1,886,621 for
furniture; 2,053,455 for furniture; and 75/614,632 for mattresses.
Further,
Complainant’s interest in the mark has been protected internationally in
thirty-seven countries.
Respondent
registered the disputed domain name March 27, 2002.
Respondent
has not registered the mark Ashley anywhere and has shown no intent to engage
in a bona fide commercial enterprise using the Ashley or <Ashley.biz>
name.
Respondent
is Ename Holdings. Respondent is not known as Ashley or <Ashley.biz>.
And, Respondent is not the Ashley Coffield, whose name Respondent relates was
made the subject of a domain name filing.
In fact, Respondent suggests that Ename Holdings is really Jordan H.
Richland, a fact that suggests to the Panel that Respondent has no proprietary
rights to register and use Ms. Coffield’s name as though she were chattel or an
alter ego to Respondent.
Respondent further concedes knowledge of
the trademark at the time the domain name in issue was registered.
Paragraph 15(a) of the STOP 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 STOP Policy requires that Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain
name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established its rights in the ASHLEY mark through worldwide trademark
registration and considerable commercial endeavor that the Panel presumes had
generated good will that attaches to the name and is associated with
Complainant.
The
domain name registered by Respondent <Ashley.biz> contains the
central core name contained within all of Complainant’s marks. Respondent’s domain name only adds the
inconsequential “.biz” to Complainant’s mark.
Therefore, Respondent’s domain name is identical to Complainant’s
mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent may show rights in
an identical domain name under STOP Policy ¶ 4(c) where Respondent demonstrates
that:
i.
The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name; or
ii.
Before any
notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
iii.
The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has acquired no trademark or
service mark rights.
STOP Policy ¶ 4(c) provides, without limitation,
that a Respondent may demonstrate rights and/or interests in a domain name by
making the above three-part showing; however, an unnamed third party cannot
assert its rights or interests on behalf of a Respondent in order to prevent
the transfer of a domain name to the Complainant and a Respondent may not act
without right to assert the rights of a third party who is not a party to the
action in order to prevent that transfer. Here, Complainant has established its
rights to the ASHLEY mark. Respondent has not shown a right to use the ASHLEY
mark either existing in Respondent or as a result of Respondent’s personal and
professional association with Ashley Coffield, who is not a party to this
dispute. See Seagate Tech. LLC v. TC
Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (finding that a Respondent
cannot assert the rights of a third party to demonstrate rights or legitimate
interests pursuant to STOP Policy ¶ 4(a)(ii) when that third party has not
formally intervened in the proceeding); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests under the UDRP where no such right or interest is
immediately apparent to the Panel and Respondent has not come forward to
suggest any right or interest it may possess).
Further, Respondent has made no use of
the domain name and presents no evidence of a business plan for the domain
name. Without evidence to show
demonstrable plans to use the domain name it may be presumed that there are no
plans to use the domain name. Thus,
Respondent has not met the burden of STOP Policy ¶ 4(c)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000)
(finding that absent evidence of preparation to use the domain name for a
legitimate purpose, the burden of proof lies with the Respondent to demonstrate
that it has rights or legitimate interests); see also Gene Logic Inc. v.
Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to
show rights or legitimate interests in the disputed domain name Respondent must
establish with valid evidence “a course of business under the name, or at least
significant preparation for use of the name prior to learning of the
possibility of a conflict” with an IP Claimant).
Respondent is not known as Ashley;
Respondent’s personal and professional associate is Ashley Coffield and she is
not a party. No evidence in this proceeding shows that Respondent is commonly
known as ASHLEY or as <ashley.biz>. Therefore, Respondent has no rights or legitimate interests in
the domain name pursuant to STOP Policy ¶ 4(c)(iii). See Broadcom Corp.
v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in domain name when Respondent is not
known by the mark).
Accordingly, Respondent is unable to show
rights and legitimate interest in the disputed domain name under any one of the
three-part showing set out above and the Panel finds that Respondent has no
rights or legitimate interests in the disputed domain name, thus, STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent had constructive notice of
Complainant’s rights in the ASHLEY mark prior to registering the disputed domain
name due to Complainant’s trademark registrations and distribution of its
products in thirty-seven countries around the world, including Respondent’s
home country. Furthermore, Respondent
had actual notice of Complainant’s rights in the ASHLEY mark because of the
notification received from the STOP registration procedure. Respondent’s registration of <Ashley.biz>,
despite knowledge of Complainant’s rights, constitutes bad faith registration
under STOP Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence
of bad faith includes actual or constructive knowledge of commonly known mark
at the time of registration); see also Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the domain name
is evidence of bad faith”); see also Gene Logic Inc. v. Bock,
FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the
STOP Policy and the notice given to Respondent regarding existing IP Claims
identical to its chosen domain name precluded good faith registration of
<genelogic.biz> when Respondent registered it with “full knowledge that
his intended business use of this domain name was in direct conflict with a
registered trademark of a known competitor in exactly the same field of
business”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the STOP Policy, the Panel concludes that relief shall be hereby
GRANTED.
Accordingly,
it is Ordered that the <ashley.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Furthermore, subsequent challenges under the STOP Policy against this
domain name SHALL NOT be permitted because there are no further IP
Claims.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 16, 2002.
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