Ashley Furniture Industries, Inc. v. Key Home Furnishings
Claim Number: FA1112001421756
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Key Home Furnishings (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2011; the National Arbitration Forum received payment on December 29, 2011.
On December 29, 2011, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2012 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@ashleyfurniturediscountcoupons.com, postmaster@ashleyfurnitureexperts.com, postmaster@freedeliveryashleyfurniture.com, postmaster@freeashleyfurniturecoupons.com, postmaster@bestpriceonashleyfurniture.com, and postmaster@ashleyfurnitureconnection.com. Also on December 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com> domain names are confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com> domain names.
3. Respondent registered and used the <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., manufacturers and sells furniture in its retail stores. Complainant owns a trademark registration for the ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879 registered June 12, 1990).
Respondent, Key Home Furnishings, registered the <bestpriceonashleyfurniture.com> and <freedeliveryashleyfurniture.com> domain names on January 13, 2011 and the <ashleyfurnitureconnection.com>, <freeashleyfurniturecoupons.com>, <ashleyfurnitureexperts.com>, and <ashleyfurniturediscountcoupons.com> domain names on January 17, 2011. The disputed domain names resolve to pay-per-click directories featuring links to competing furniture providers with titles like “Leather Chairs And,” “Alco Furniture Store,” “Premier Tibetan Furniture,” etc.
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.
Complainant owns a trademark registration for the ASHLEY mark with the USPTO (Reg. No. 1,600,879 registered June 12, 1990). The Panel finds that registering a trademark with the USPTO successfully proves that Complainant has rights in the ASHLEY mark for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s ASHLEY mark. The disputed domain names each include the ASHLEY mark, the generic top-level domain (“gTLD”) “.com,” and one or more of the following generic or descriptive terms: “furniture,” “connection,” “best,” “price,” “on,” “free,” “coupons,” “delivery,” “experts,” and/or “discount.” Past panels have established that adding a descriptive or generic term to a complainant’s mark does not defeat a claim of confusing similarity. See Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Prior UDRP cases have also repeatedly held that a gTLD does not distinguish a disputed domain name from a mark in any way pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel accordingly determines that Respondent’s <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com> domain names are confusingly similar to Complainant’s ASHLEY mark for the purposes of Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case arguing against Respondent’s rights and legitimate interests that is sufficient to shift the burden of proving rights and legitimate interests to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent declined to respond, however, and thus has presented the Panel with nothing in defense of its position. Without further argument from Respondent, the Panel may assume that Complainant’s allegations are true and find that Respondent lacks rights and legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.
Complainant asserts that it has not licensed or otherwise authorized the Respondent to use its ASHLEY mark. The WHOIS information for the disputed domain names indicates that the registrant is “Key Home Furnishings.” The Panel determines that the WHOIS information fails to suggest any relationship between Respondent and the disputed domain names. Based on Complainant’s allegations and the lack of other contrary evidence, the Panel concludes that Respondent is not commonly known by the disputed domain names and therefore possesses no rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant contends that Respondent’s disputed domain names are being used to host parked websites offering pay-per-click links to other websites that offer furniture, including products manufactured or distributed by Complainant’s competitors, such as “Haverty’s,” “Crate & Barrel,” and “Flexsteel.” Complainant provides screenshots of each of the disputed domain names to support this allegation. The Panel agrees with Complainant’s argument that hosting these links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s mark to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant makes no specific allegations under Policy ¶ 4(b)(iii). Complainant’s arguments and submitted screenshots indicate, however, that Respondent uses the disputed domain names to advertise competing products and companies via pay-per-click links. The Panel finds that these advertised links can divert Complainant’s potential customers away from Complainant and toward its competitors, which disrupts Complainant’s business as a form of competition. The Panel thus determines that Respondent’s activities at the disputed domain names reveals bad faith registration and use pursuant to Policy ¶ 4(b)(iii) due to their competitive disruption of Complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirected Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that the websites located at Respondent’s disputed domain names are parked websites displaying links to other websites that offer furniture products, including products manufactured and sold by Complainant’s competitors. Complainant asserts that Respondent presumably receives compensation for hosting these hyperlinks and redirecting Internet users to these advertised websites and that Respondent therefore uses the confusingly similar disputed domain names to attract and mislead Internet users for its own profit. The Panel concludes that Respondent’s efforts to use Complainant’s mark for its own commercial gain by attracting and confusing consumers indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See Altavista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Assoc. 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 concludes that Complainant has satisfied 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 <ashleyfurniturediscountcoupons.com>, <ashleyfurnitureexperts.com>, <freedeliveryashleyfurniture.com>, <freeashleyfurniturecoupons.com>, <bestpriceonashleyfurniture.com>, and <ashleyfurnitureconnection.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 7, 2012
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