Ashley Furniture Industries, Inc. v. Michael Bowman
Claim Number: FA1107001397439
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrance J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Michael Bowman (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2011; the National Arbitration Forum received payment on July 7, 2009.
On July 7, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the domain names <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com> are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 July 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2011 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@ashleyhomestorepittsburgh.com and postmaster@ashleyfurniturepittsburgh.com. Also on July 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received by the National Arbitration Forum and determined to be complete on August 1, 2011.
On August 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, among other things, that:
Complainant is a maker and marketer of household furniture, and has been so engaged since 1946.
Complainant is the owner of the trademark ASHLEY FURNITURE HOMESTORE, on file with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 2,449,045, registered May 8, 2001).
Respondent registered the disputed <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com> domain names on February 8, 2011.
The disputed domain names are confusingly similar to Complainant’s mark.
Respondent had at least constructive knowledge of Complainant’s mark at the time the subject domain names were registered.
Complainant has not licensed or otherwise authorized Respondent to use its mark in a domain name.
The website resolving from the disputed <ashleyfurniturepittsburgh.com> domain name indicates that the website is “under construction.”
The website resolving from the disputed <ashleyhomestorepittsburgh.com> domain name redirects Internet users to Complainant’s official website at its domain name <ashleyfurniturehomestore.com>.
Respondent is not making a legitimate non-commercial or fair use of either of the subject domain names.
Respondent has no rights to or legitimate interests in either of the disputed domain names.
Respondent has registered and is using the disputed domain names in bad faith.
B. Respondent
Respondent contends, among other things, that:
Respondent has eight (8) years of experience working in the furniture industry.
There is no Ashley HomeStore in the area surrounding Pittsburgh, Pennsylvania, USA, nor has there ever been.
The
disputed domain names are not confusing to the public because there are no
Ashley stores in the neighborhood of Pittsburgh.
Respondent has shown no bad faith intent to profit from the Ashley name.
Respondent’s registration and use of the disputed domain names have not caused Complainant any financial loss or loss of customers.
Respondent has never claimed to represent Complainant in the marketplace.
The website to which the <ashleyfurniturepittsburgh.com> domain name resolves is a generic placeholder independently maintained by an Internet service provider.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names have been registered and are being used by Respondent in bad faith.
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.
Complainant has rights in the ASHLEY FURNITURE HOMESTORE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant had sufficiently established rights in a mark through its registration of the mark with the USPTO); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that a complainant had established rights in its marks for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
The <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com> domain names are confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark because both disputed domain names consist of Complainant’s mark, omitting either the word “homestore” or “furniture” and adding the geographic term “pittsburgh” and the generic top-level domain (“gTLD”) “.com.”
See for example, Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), and WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), demonstrating that foreshortened versions of the mark of another used to create a domain name do not render the domain distinct from the mark under the standards of the Policy. Similarly, see Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), finding that a domain name comprised of both a complainant’s mark and a geographic term is nonetheless confusingly similar to that complainant’s mark.
Moreover, the attachment of a gTLD to a mark of another in forming a domain name has no effect on a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purposes of determining whether the resulting domain name is confusingly similar to the mark of another).
Therefore, the Panel finds that Respondent’s <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com> domain names are each confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE trademark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain names, at which point the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that, under UDRP ¶ 4(a)(ii), a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name before the burden shifts to that respondent to show that it does have such rights or interests); 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.
Complainant has made the requisite prima facie showing under this head of the Policy. Complainant contends, and Respondent does not deny, that Respondent is not licensed or otherwise authorized to use Complainant’s ASHLEY FURNITURE HOMESTORE mark in any way. Moreover, the pertinent WHOIS information for the contested domain names identifies the registrant only as “Michael Bowman,” which does not resemble either of the domains. We conclude, therefore, that Respondent is not commonly known by the <ashleyfurniturepittsburgh.com> and <ashleyhomestorepittsburgh.com> domain names and so has not demonstrated any rights to or legitimate interests in the domains under the provisions of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that a respondent was not commonly known by the <thirteen.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
There is no dispute that the contested <ashleyhomestorepittsburgh.com> domain name redirects Internet users to Complainant’s own official website at the domain name <ashleyfurniturehomestore.com>. Respondent’s unauthorized use of the disputed domain name to redirect Internet users to Complainant’s own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) because Respondent’s employment of the domain affords it ultimate control over the use of the domain, control to which it is not entitled. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that a respondent was attempting to build up “mistaken confidence” in a disputed domain name by having it resolve to a complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).
There is likewise no dispute as to Complainant’s assertion that Respondent’s <ashleyfurniturepittsburgh.com> domain name resolves to a webpage which is “under construction” and empty of content. The “under construction” message signifies that the disputed domain name is not in active use. Given that the domain has been in Respondent’s control for approximately six months, the available evidence indicates that Respondent has not shown rights to or legitimate interests in the domain under Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using them for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel thus finds that Respondent has no rights to or legitimate interests in either of the contested domain names <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com> under Policy ¶ 4(a)(ii).
Respondent uses the <ashleyhomestorepittsburgh.com> domain name to resolve to Complainant’s own website at the <ashleyfurniturehomestore.com> domain name. Although this use may not cause immediate harm to Complainant, the fact that a domain name which is confusingly similar to Complainant’s mark is subject to another’s control is sufficient to permit us to find that Respondent’s registration and use of the domain are in bad faith under Policy ¶ 4(a)(iii), regardless of whether or not Respondent profits from its employment of the domain. On the point, see Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003):
Respondent caused the domain name to resolve to a selected portion of Complainant’s website …. This prevented Complainant from choosing whether to have the domain name resolve to that particular portion of the site, or indeed to that particular site at all. While Respondent may not have obtained any commercial advantage or inflicted any readily measurable harm, it has nonetheless interfered with Complainant’s use of its own … trademark in its own advertising strategy, and deprived the Complainant of the ability to control how its trademark (or confusingly similar variants) are being used.
See also McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum June , 2010) (finding that a respondent's use of a contested domain name to resolve to a complainant’s official website was evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii)).
Similarly, the <ashleyfurniturepittsburgh.com> domain name is not currently in use, and the resolving website displays a message that the website is “under construction.” Respondent’s inactive use of this disputed domain name reveals bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its disputed domain name in the three months after its registration indicated that that respondent registered the domain in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name, and that that failure permits an inference of registration and use of the domain in bad faith).
Finally on the point of bad faith, we take note of Respondent’s effort to suggest the absence of a motive on his part to confuse the public by the use of the contested domain names, each of which connects the name of Ashley with the locality of Pittsburgh, Pennsylvania. Respondent says that the public cannot be confused by the domains, as formulated, because there is no Ashley HomeStore in that city. But Respondent is in the furniture business. He cannot fail to know, therefore, that the community in which his business operates, which is only a short distance from Pittsburgh city center, is part of a broader metro area which has three Ashley HomeStores, in Altoona and Johnstown, Pennsylvania, and in Boardman, Ohio. We need not speculate as to the full reach of Respondent’s motivation in attempting to link the regional center of Pittsburgh with the Ashley name in domain names under his control. It is enough for now to know that Respondent’s protestations of innocence in registering and using the contested domains by reference to the supposed absence of a market presence for Complainant in Pittsburgh is, at best, disingenuous.
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <ashleyhomestorepittsburgh.com> and <ashleyfurniturepittsburgh.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 11, 2011
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