Ashley Furniture Industries, Inc. v. Metroplus Lifestyle
Claim Number: FA1206001451334
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Metroplus Lifestyle (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitureindia.com> (the “Domain Name”), registered with INDIALINKS WEB HOSTING PVT.LTD (the “Registrar”).
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2012; the National Arbitration Forum received payment on June 29, 2012.
On July 11, 2012, the Registrar confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with the Registrar and that Respondent is the current registrant of the Domain Name. It follows that Respondent is bound by the Registrar’s 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, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@ashleyfurnitureindia.com. Also on July 11, 2012, 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.
An informal but timely Response was received on July 31, 2012. On August 6, 2012 Complainant filed a timely Additional Submission. The Panel has had regard to the Response and the Additional Submission.
On August 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant says the Domain Name, which was registered on June 11, 2011, is confusingly similar to Complainant’s United States trademarks registered for goods and services in relation to furniture, namely ASHLEY, No.1,600,879, registered on June 12, 1990 and used since 1946; A ASHLEY FURNITURE INDUSTRIES, No. 1,604,686, registered on July 3, 1990 and used since 1984; and A ASHLEY FURNITURE, No. 2,894,665, registered on October 19, 2004 and used since 2001. Complainant says that Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Complainant says that, having regard to the long use and incontestability of its marks, Respondent had actual or constructive notice of them when registering the Domain Name. Even if Respondent contends that it did not have constructive knowledge of Complainant’s U.S. trademark registrations, in 1990 Complainant registered the mark ASHLEY in Thailand (No. Korl 17601), where Complainant says Respondent resides.
Complainant further says, both as to legitimacy and bad faith, that to the best of its knowledge Respondent is not commonly known by the Domain Name, is not a customer of Complainant and is not licensed or otherwise authorized by Complainant to use its marks in a domain name. The Domain Name resolves to an inoperative website, so consumers seeking Complainant’s furniture or stores, being diverted to the inoperative website of Respondent, may believe that site is endorsed by or associated with Complainant, become frustrated, and seek the products of Complainant’s competitors. Accordingly Respondent is not making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain.
Through its counsel, Complainant raised its concerns with Respondent in April, 2012, alleging trademark infringement and seeking transfer of the Domain Name. It received an e-mail in reply dated April 18, 2012 stating that a response could not be provided before May 2, 2012 because the writer was traveling. The e-mail concluded:
“You will have to wait until then. Meanwhile you can think of a better solution that is beneficial for both of us.”
Despite a reminder, Complainant says no response was received prior to the filing of the Complaint.
B. Respondent
In its informal Response, Respondent says the Complaint is false, frivolous, and misleading; that Complainant has no existence in the Indian subcontinent; and the furniture brand ASHLEY is unknown to the Indian market. Accordingly the question of domain name violation in the Indian subcontinent does not arise.
Complainant has registered the trademark ASHLEY in Thailand. Respondent is based in India, not Thailand, so there is no violation of trademark or domain name by Respondent in the Indian subcontinent.
Respondent registered the Domain Name through the Registrar and therefore has done everything within legal parameters. Respondent has not used the Domain Name for commercial gain, has not created any website using the Domain Name so has never enticed customers on the basis of the Domain Name in India or elsewhere.
Customers browse a particular website only if told to do so or if it is promoted through search engine optimization. Search engines do not yield results for websites which do not exist.
Complainant has failed to state true and correct facts, and Respondent has never used and will never use the Domain Name for a commercial purpose.
Respondent is presently in the business of office chairs, and Complainant is into home furniture as mentioned in the Complaint so there is no question of misusing the Domain Name by Respondent.
Complainant has failed to file any proof to prove that the Domain Name has been misused or that Respondent is attempting to misuse it. The Complaint is simply harassment of Respondent without any substantive proof. This was brought to the notice of Complainant but Complainant has failed to mention it.
The allegations are baseless and unsubstantiated. Therefore the Complaint deserves dismissal in limine and Respondent should be awarded adequate damages for its harassment from Complainant for no reason whatsoever.
C. Additional Submissions
In its Additional Submission, Complainant says it also has trademark registrations in India for ASHLEY, No. 821,772 and ASHLEY & LOGO, No. 319,592, both registered on October 5, 1998, and for ASHLEY FURNITURE HOMESTORE, No. 1,924,426, registered on February 18, 2010. The goods and services represented by these marks (furniture and furniture stores) are very similar to the goods sold by Respondent (office chairs) and the Domain Name is confusingly similar to these marks.
Complainant says it is well known worldwide with substantial worldwide sales and advertising of furniture. Respondent intends to use the Domain Name to sell office chairs. A domain name in the “.com” gTLD is accessible throughout the world and more particularly outside India.
Complainant has established all the elements entitling it to relief.
Rule ¶15(a) 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."
Policy ¶4(a) 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 Policy does not require proof of trademark infringement, hence the concept put forward by Respondent of violation/non-violation of domain names in particular territories do not arise for consideration.
Complainant clearly has rights in its registered trademarks relating to furniture.
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006‑0812. The top level domains “.com”, “.net,” and “.org” are to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000‑1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000‑0429.
In finding confusing similarity, many panels have found that the mere addition of a descriptive term to a complainant’s mark does not adequately distinguish a disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006‑0211 (finding <competewithwalmart.com> confusingly similar to WAL-MART); HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001‑0343, (finding <bankwithhsbc.com> confusingly similar to HSBC); F. Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006‑0717 (finding <weightlosswithxenicalinfo.info> confusingly similar to XENICAL); and Jay Leno v. Garrison Hintz, WIPO Case No. D2009‑0569 (finding <weeknightswithjayleno.com> confusingly similar to JAY LENO).
The Panel finds the Domain Name <ashleyfurnitureindia.com> to be confusingly similar to Complainant’s ASHLEY marks since Internet users are likely to wonder whether the Domain Name emanates from an outlet of Complainant’s furniture business located in India. Likewise, the Domain Name is confusingly similar to Complainant’s marks which incorporate both the words “ashley” and “furniture”.
Complainant has established this element of its case.
Policy ¶4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for purposes of Policy ¶4(a)(ii), i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant’s contentions are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
As to whether Respondent is commonly known by the Domain Name, Respondent does not claim to be commonly known by the Domain Name, and the WHOIS information identifies the registrant as “Metroplus Lifestyle”. The Panel finds that Respondent is not commonly known by the Domain Name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006).
As to whether Respondent is making a legitimate noncommercial or fair use of the Domain Name, the Domain Name resolves to an inactive website that Internet Explorer is unable to access. Respondent’s failure to make active use of the Domain Name does not qualify as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006).
Respondent says it registered the Domain Name through the Registrar and therefore has done everything within legal parameters. This does not suffice to demonstrate rights or a legitimate interest in the Domain Name because registration is subject to the Policy. In State Farm Mut. Auto. Ins. Co. v. Rocky E. Faw (National Arbitration Forum (“NAF”) case FA 94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate non-commercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (NAF case FA 94970).
The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Complainant has established this element of its case.
Policy ¶4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of Policy ¶4(a)(iii), i.e.
(i) circumstances indicating that the respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) the respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Complainant asserts actual or constructive knowledge of its trademarks on the part of Respondent. The better view, at least in cases in which the respondent is not resident in the US, is that there is no place for constructive knowledge under the Policy. See The Way Int’l Inc. v. Diamond Peters, WIPO Case No. D2003-0264.
In considering whether it is likely that Respondent had actual knowledge of Complainant or its marks when the Domain Name was registered, the Panel notes that, given the “.com” gTLD, the Domain Name conveys the meaning to a worldwide audience of Internet users that it is the Indian outlet of an international furniture supplier called Ashley. Complainant is an international furniture supplier called Ashley. Its marks are registered with respect to furniture, including in India, where Respondent resides. The parties are competitors since Respondent is “in the business of office chairs”. Contrary to Respondent’s assertion, the Complaint does not say or indicate that Complainant is “into home furniture”, nor would this be of any moment, since Internet users familiar with Complainant’s business would be likely to regard office chairs sold under the Domain Name as being authorized by Complainant.
Respondent has not expressly denied knowledge of Complainant or its marks and Respondent’s own name does not include the word Ashley. In the absence of any explanation from the Respondent as to why the Domain Name was chosen, and taking all the above circumstances into account, the Panel finds that it is more likely than not that Respondent had the Complainant or its marks in mind when registering the Domain Name.
In light of this finding, Respondent’s email of April 18, 2012, saying, “Meanwhile you can think of a better solution that is beneficial for both of us” is indicative of registration for the primary purpose of selling or offering the Domain Name for sale to Complainant at a profit, within Policy ¶ 4(b)(i).
Likewise, Respondent’s use of the Domain Name to resolve to an inoperative website is indicative of registration for the primary purpose of disrupting the business of a competitor within Policy ¶ 4(b)(iii).
Accordingly the Panel finds that the Domain Name was registered and is being used in bad faith.
Complainant has established this element of its case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 20, 2012.
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