Ashley Furniture Industries, Inc. v. Whois Watchdog / Domain Administrator
Claim Number: FA1207001451473
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Whois Watchdog / Domain Administrator (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnture.com>, registered with Rebel.com Corp.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2012; the National Arbitration Forum received payment on July 2, 2012.
On July 3, 2012, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnture.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@ashleyfurnture.com. Also on July 3, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions.
1. Complainant is the owner of the ASHLEY trademarks registered with the United States Patent and Trademark Office (“USPTO”) as follows:
a. ASHLEY (Reg. No. 1,600,879 registered June 12, 1990);
b. A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686 registered July 3, 1990)
c. A ASHLEY FURNITURE (Reg. No. 2,894,665 registered October 19, 2004).
2. Complainant owns a trademark registration for its ASHLEY mark with the Chinese State Administraton of Industry and Commerce (“SAIC”) (Reg. No. 1,118,497 registered October 14, 1997).
3. The <ashleyfurnture.com> domain name is confusingly similar to Complainant’s ASHLEY mark.
4. Respondent misspells the word “furniture” as “furnture” in the disputed <ashleyfurnture.com> domain name.
5. Respondent has no rights or legitimate interests in the <ashleyfurnture.com> domain name.
6. Complainant has made continuous and substantial use of the ASHLEY mark since 1984.
7. The disputed domain name was registered and is being used in bad faith.
8. Respondent registered the <ashleyfurnture.com> domain name on April 30, 2004, significantly after Complainant’s registration of the ASHLEY mark in 1990.
9. Respondent had notice of Complainant’s ASHLEY mark prior to registering the disputed domain name.
10. Complainant has not licensed or authorized Respondent to use its registered ASHLEY trademark in any way.
11. Respondent’s <ashleyfurnture.com> domain name resolves to a “parked” website featuring links, some of which compete with complainant.
12. Respondent is not making a legitimate noncommercial or fair use of the <ashleyfurnture.com> domain name without intent for commercial gain.
13. Respondent is using the confusingly similar <ashleyfurnture.com> domain name to attract Internet users looking for Complainant’s products and services and presumably receiving compensation for resolving the disputed domain name to a “parked” website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the furniture industry.
2. Complainant is the owner of the ASHLEY trademarks registered with the United States Patent and Trademark Office (“USPTO”) as follows:
a. ASHLEY (Reg. No. 1,600,879 registered June 12, 1990);
b. A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686 registered July 3, 1990)
c. A ASHLEY FURNITURE (Reg. No. 2,894,665 registered October 19, 2004).
3. Complainant owns a trademark registration for its ASHLEY mark with the Chinese State Administration of Industry and Commerce (“SAIC”) (Reg. No. 1,118,497 registered October 14, 1997) the jurisdiction in which Respondent is domiciled.
4. Respondent registered the <ashleyfurnture.com> domain name on April 30, 2004. The domain name resolves to a “parked” website featuring links, some of which compete with complainant.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant presents the Panel with evidence of its trademark registration with the USPTO for its ASHLEY mark (Reg. No. 1,600,879 registered June 12, 1990). Complainant also presents the Panel with evidence of its registration with SAIC for the ASHLEY mark (Reg. No. 1,118,497 registered October 14, 1997). Based on this evidence, the Panel finds that Complainant has established rights in its ASHLEY mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and SAIC. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a) (i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ASHLEY mark. Complainant submits that the <ashleyfurnture.com> domain name is confusingly similar to Complainant’s ASHLEY mark within the meaning of Policy ¶ 4(a) (i) and the Panel so finds. Complainant contends that the <ashleyfurnture.com> domain name incorporates Complainant’s ASHLEY mark and adds the misspelled term “furniture,” spelling it “furnture.” The Panel notes that the <ashleyfurnture.com> domain name also features the generic top-level domain (“gTLD”) “.com.” Preceding panels have found that these distinctions are not relevant when distinguishing a disputed domain name from a mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ASHLEY trademark and to use it in its domain name, adding the misspelled word “furniture”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name to resolve to a parked website featuring links to third-party websites which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant asserts that Respondent has no rights or legitimate interest in the <ashleyfurnture.com> domain name pursuant to Policy ¶ 4(a) (ii). Complainant states that according to the WHOIS information, Respondent’s domain name was not registered until more than a decade after Complainant registered its trademark. The Panel notes that the WHOIS information also states that the registrant for the <ashleyfurnture.com> domain name is “Whois Watchdog / Domain Administrator.” The Panel presumes that there is no further indication that Respondent is commonly known by the disputed domain name and, therefore, the Panel concludes that Respondent has no rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c) (ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
(e) Complainant contends that Respondent’s use of the <ashleyfurnture.com> domain name does not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use interest under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant presents evidence that Respondent’s resolving website is a “parked” website that offers links to other websites belonging to competitors of complainant such as; “Living Room Furniture,” “Cheap Living Room Furniture,” “Ashley Furniture Online,” “La-Z-Boy® Furniture Sale,” “China Living Room Furniture, Living Room Furniture Catalog, China,” and “Living Room Furniture, Modern Living Room Furniture, Living Room,” among others. Complainant further states that Respondent presumably receives compensation for hosting a “parked” website. Based on these contentions, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing products of third parties does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use interest under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent shows bad faith registration and use by hosting a “parked” website resolving from a confusingly similar domain name and featuring links to competing websites thereby disrupting Complainant’s business by diverting Internet users to a confusingly similar website as Complainants. Previous panels have found that such activity establishes bad faith registration and use according to Policy ¶ 4(b) (iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting 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).”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Based on this analysis, the Panel finds that Respondent registered and is using the <ashleyfurnture.com> domain name in bad faith pursuant to Policy ¶ 4(b) (iii).
Secondly, Complainant asserts that Respondent shows bad faith registration and use according to Policy ¶ 4(b) (iv). Complainant claims that Respondent is using a confusingly similar domain name to attract Internet users looking for Complainant’s products or services. Complainant further states that Respondent receives compensation for hosting a “parked” website. Previous panels have found that a respondent’s use of a domain name to attract customers and financially profit by creating a likelihood of confusion with a complainant’s mark is evidence of bad faith pursuant to Policy ¶4 (b) (iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”);see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv).”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ASHLEY mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnture.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 2, 2012
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