Ashley Furniture Industries, Inc v. Pluto Domain Services Private Limited
Claim Number: FA0810001227159
Complainant is Ashley Furniture Industries, Inc (“Complainant”), represented by Terrence
J. Madden, of Kostner, Koslo & Brovold LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ashleyfurnitureoutlet.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of November
4, 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@ashleyfurnitureoutlet.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <ashleyfurnitureoutlet.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 <ashleyfurnitureoutlet.com> domain name.
3. Respondent registered and used the <ashleyfurnitureoutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells furniture and furniture-related accessories
through its retail stores. Complainant
markets its furniture products under the A ASHLEY FURNITURE mark, which
Complainant registered with the United States Patent and Trademark Office
(“USPTO”) on
Respondent registered the <ashleyfurnitureoutlet.com>
domain name on
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.
The Panel finds that Complainant has established rights in
the A ASHLEY FURNITURE mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant contends that
Respondent’s <ashleyfurnitureoutlet.com>
domain name is confusingly similar to its A
ASHLEY FURNITURE mark. The <ashleyfurnitureoutlet.com> domain name differs from Complainant’s mark in four ways:
(1) the letter “A” has been removed from the beginning of the mark; (2) the
space between “ASHLEY” and “FURNITURE” has been removed; (3) the descriptive
term “outlet” has been added to the end of the mark; and (4) the generic
top-level domain (“gTLD”) “.com” has been added to the end of the mark. Under
Policy ¶ 4(a)(i), removing single letters and spaces does not distinguish a
domain name from a mark, nor does adding descriptive terms. See Down
E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <ashleyfurnitureoutlet.com> domain name. Under Policy ¶ 4(a)(ii), after a complainant makes a prima facie case against a respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that the burden is now on Respondent to show evidence that it does have rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <ashleyfurnitureoutlet.com> domain name
nor has it ever been the owner or licensee of the A ASHLEY FURNITURE mark. The WHOIS record for the disputed domain name
lists Respondent as “Pluto Domain Services
Private Limited;” what’s more, Respondent has not shown any evidence
contrary to Complainant’s contentions that Respondent is not known by any
variant on the A ASHLEY FURNITURE mark. The
Panel therefore finds that Respondent is not commonly known by the <ashleyfurnitureoutlet.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent is using the <ashleyfurnitureoutlet.com> domain name to host a website that features links to third-party websites offering products that compete
with Complainant’s business. Complainant contends that Respondent receives
“click-through” fees from those third-party websites, and therefore commercially
benefits from the use of the disputed domain name. The Panel finds that this use by Respondent
of the <ashleyfurnitureoutlet.com> domain name
is neither a bona fide offering of
goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the
respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with the complainant, was not a bona
fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <ashleyfurnitureoutlet.com> domain
name to divert Internet customers from Complainant’s website to Respondent’s
websites that resolve from the disputed domain name, through the confusion
caused by the similarity of the A ASHLEY FURNITURE mark and the <ashleyfurnitureoutlet.com> domain
name. Complainant also contends that
Respondent is intentionally disrupting Complainant’s business by diverting
confused customers to third-party websites that offer products competing with
Complainant’s business. The Panel finds
that Respondent did disrupt Complainant’s business, and therefore did register
and use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Complainant also contends that Respondent is gaining
commercially from this diversion, through the click-through fees that
Respondent is receiving from the third-party websites. The Panel agrees and finds that Respondent is
intentionally using the disputed domain name for commercial gain through creating
a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶
4(b)(iv), this use is also evidence of Respondent’s registration and use in bad
faith.
See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also Associated
Newspapers Ltd. v. Domain Manager, FA 201976
(Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 18, 2008
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