national arbitration forum

 

DECISION

 

American Signature Inc. v. Frank Parrish

Claim Number: FA1002001306009

 

PARTIES

Complainant is American Signature Inc. (“Complainant”), represented by Theodore R. Remaklus, of Wood Herron & Evans, L.L.P., Ohio, USA.  Respondent is Frank Parrish (“Respondent”), Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americansignaturefurnitures.us>, registered with Melbourne It Ltd.

 

PANEL

The undersigned certifies that he 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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2010.

 

On February 7, 2010, Melbourne It Ltd confirmed by e-mail to the Forum that the <americansignaturefurnitures.us> domain name is registered with Melbourne It Ltd and that Respondent is the current registrant of the name.  Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 11, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On March 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <americansignaturefurnitures.us> domain name is confusingly similar to Complainant’s AMERICAN SIGNATURE FURNITURE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <americansignaturefurnitures.us> domain name.

 

3.      Respondent registered and used the <americansignaturefurnitures.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, American Signature Inc., holds multiple trademark registrations for its AMERICAN SIGNATURE FURNITURE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,553,760 issued March 26, 2002) in connection with furniture and home and office furnishings.

 

Respondent registered the <americansignaturefurnitures.us> domain name on December 1, 2009.  The disputed domain name resolves to a website that features Complainant’s mark and that offers goods that compete with Complainant’s business.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Respondent registered the <americansignaturefurnitures.us> domain name on December 1, 2009.  The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the AMERICAN SIGNATURE FURNITURE mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,553,760 issued March 26, 2002).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant contends Respondent’s <americansignaturefurnitures.us> domain name is confusingly similar to Complainant’s AMERICAN SIGNATURE FURNITURE mark.  The disputed domain name contains Complainant’s AMERICAN SIGNATURE FURNITURE mark, adds the letter “s,” and adds the country code top-level domain (“ccTLD”) “.us.”  The Panel finds that the addition of the letter “s” to Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark.  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 UDRP ¶ 4(a)(i)); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).  The Panel also finds that the addition of a ccTLD is irrelevant in distinguishing between a disputed domain name and a mark.  See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).  Therefore, the Panel concludes Respondent’s <americansignaturefurnitures.us> domain name is confusingly similar to Complainant’s AMERICAN SIGNATURE FURNITURE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <americansignaturefurnitures.us> domain name.  The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case ini support of its allegations.  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <americansignaturefurnitures.us> domain name.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <americansignaturefurnitures.us> domain name.  The WHOIS information identifies Respondent as “Frank Parrish.”  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <americansignaturefurnitures.us> domain name pursuant to Policy ¶ 4(c)(iii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); 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 uses the <americansignaturefurnitures.us> domain name to resolve to a website that features Complainant’s mark and that offers goods that compete with Complainant’s business.  The Panel finds the use of a confusingly similar disputed domain name for this purpose is not a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv).  See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s <americansignaturefurnitures.us> domain name resolves to a website that features Complainant’s mark and that offers goods that compete with Complainant’s business.  Internet users interested in Complainant’s furniture and home furnishings may instead purchase competing furniture products because of Respondent’s confusingly similar disputed domain name.  The Panel finds Respondent’s use of the <americansignaturefurnitures.us> domain name disrupts Complainant’s furniture and home furnishings business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under UDRP ¶ 4(b)(iii)).

 

The Panel infers Respondent profits from the sale of competing furniture and home furnishings on the website resolving from the <americansignaturefurnitures.us> domain name.  Internet users, searching for Complainant’s furniture products, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain names and resolving website.  Respondent attempts to profit from this confusion.  The Panel finds Respondent’s use of this disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <americansignaturefurnitures.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  March 23, 2010

 

 

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