Ashley Furniture Industries, Inc. v. Cripple Creek Roadhouse Grill c/o Michael Dills
Claim Number: FA0809001226654
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden, of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Cripple Creek Roadhouse Grill c/o Michael Dills (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ashleyfurniturecheap.com>, registered with 1 & 1 Internet Ag.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2008.
On September 30, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturecheap.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 October
8, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 28, 2008
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@ashleyfurniturecheap.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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." 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 <ashleyfurniturecheap.com> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturecheap.com> domain name.
3. Respondent registered and used the <ashleyfurniturecheap.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., operates retail furniture stores. Complainant registered numerous trademarks incorporating some variation of “Ashley Furniture,” including the A ASHLEY FURNITURE mark (Reg. No. 2,894,665 issued October 19, 2004 by the United States Patent and Trademark Office (“USPTO”)).
Respondent registered the <ashleyfurniturecheap.com> domain name on April 19, 2007, but has not made any active use of the disputed domain name. Respondent did, however, offer to sell the <ashleyfurniturecheap.com> domain name to Complainant in exchange for $20,000.
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 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.”).
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.
Under the Policy, registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to a complainant. In this case, Complainant provided evidence of its USPTO trademark registration for the A ASHLEY FURNITURE mark. Therefore, Complainant has established rights in this mark pursuant to Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration with the USPTO for the ENTERPRISE mark established the complainant’s rights in the mark).
Respondent’s <ashleyfurniturecheap.com> domain name contains Complainant’s A ASHLEY FURNITURE mark without the first “a” and adds the word “cheap” and the generic top-level domain (“gTLD”) “.com.” The letter “a” is not the distinguishing feature in Complainant’s mark, but rather it is the “ashley furniture” portion that is the dominant portion of the mark, and the disputed domain name. The generic word “cheap” can fairly be associated with any retail store such as Complainant’s to signify good prices, so adding this word in the disputed domain name also does not generate any source-identifying significance. Finally, the addition of the gTLD “.com” is without relevance in this proceeding since all domain names require a top-level domain; this is a well-established principle under the Policy. The Panel therefore finds that Respondent’s <ashleyfurniturecheap.com> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the <ashleyfurniturecheap.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”).
According to Complainant, Respondent is not commonly known
by the <ashleyfurniturecheap.com>
domain name. The WHOIS information
identifies Respondent as “Cripple Creek Roadhouse Grill c/o, Michael
Dills,”. Therefore, the Panel concludes
that Respondent is not commonly known by the <ashleyfurniturecheap.com>
domain name pursuant to 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); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <ashleyfurniturecheap.com>
domain name does not resolve to an active website, and there is no evidence in
the record that it ever has. The Panel
accordingly finds that Respondent has not used the <ashleyfurniturecheap.com> domain name in connection with
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). See George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum
Apr. 25, 2007) (finding that the respondent had no rights or legitimate
interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)
where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc.
v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding
that the respondent’s non-use of the <abc7chicago.mobi> domain name since
its registration provided evidence that the respondent lacked rights or
legitimate interests in the disputed domain name).
Furthermore, Complainant noted in its Complaint that Respondent offered to sell the <ashleyfurniturecheap.com> domain name to Complainant in exchange for $20,000. The Panel presumes that this amount is considerably in excess of Respondent’s out-of-pocket costs. This further demonstrates Respondent’s lack of rights and legitimate interests in the <ashleyfurniturecheap.com> domain name pursuant to Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that Complainant has satisfied the elements
of Policy ¶ 4(a)(ii).
Under Policy ¶ 4(b)(i), a respondent can demonstrate bad faith by registering a domain name with the primary intent of selling it in excess of its out-of-pocket costs. Those are precisely the circumstances in this case. Respondent’s offered to sell the <ashleyfurniturecheap.com> domain name to Complainant for $20,000, no doubt well in excess of its out-of-pocket costs. Respondent’s failure to develop the resolving website further indicates that Respondent registered the <ashleyfurniturecheap.com> domain name primarily with the intent to sell it. Therefore, the Panel concludes that Respondent’s offer to sell the <ashleyfurniturecheap.com> domain name to Complainant for $20,000 demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
The Panel also finds that Respondent’s failure to develop
the website resolving from the <ashleyfurniturecheap.com>
domain name over a period of one and a half years since Respondent registered
the disputed domain name evidences bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding
that non-use of a confusingly similar domain name for over seven months
constitutes bad faith registration and use); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith).
The Panel finds that Complainant has satisfied the requirements of
Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturecheap.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 18, 2008
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