national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v Fundacion Private Whois / Domain Administrator

Claim Number: FA1208001456872

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashley-homestore.com>, registered with INTERNET.BS CORP.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2012; the National Arbitration Forum received payment on August 8, 2012.

 

On August 9, 2012, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <ashley-homestore.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name.  INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS 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 August 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@ashley-homestore.com.  Also on August 13, 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 September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <ashley-homestore.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ASHLEY HOMESTORES and ASHLEY FURNITURE HOMESTAR marks.

 

Respondent does not have any rights or legitimate interests in the domain name at issue.

 

Respondent registered and used the domain name at issue in bad faith.

 

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

 

FINDINGS

Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY mark (Reg. No. 1,600,879 registered June 12, 1990), its ASHLEY HOMESTORES mark (Reg. No. 2,231,864 registered March 16, 1999), and its ASHLEY FURNITURE HOMESTAR mark (Reg. No 2,680,466 registered January 28, 2003).  Complainant has used the marks in relation to its furniture business since as early as 1946.

 

Respondent registered the <ashley-homestore.com> domain name on November 10, 2011, with constructive knowledge of Complainant’s rights in the ASHLEY marks. Respondent’s disputed domain name resolves to a website that appears in Japanese, appearing to include an article regarding an anti-cancer implant product. Respondent does not use the <ashley-homestore.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is not licensed to use any of Complainant’s ASHLEY marks. Respondent’s use of the disputed domain name for an unrelated purpose with the intent to profit is not a legitimate use of the domain name.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

Complainant owns rights in its trademarks through registration with the USPTO for its ASHLEY mark (Reg. No. 1,600,879 registered June 12, 1990), its ASHLEY HOMESTORES mark (Reg. No. 2,231,864 registered March 16, 1999), and its ASHLEY FURNITURE HOMESTAR mark (Reg. No 2,680,466 registered January 28, 2003). The trademark registrations with the USPTO establish Complainant’s rights in its marks under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  The Policy ¶ 4(a)(i) does not require Complainant to register its marks in the country where Respondent resides and operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

The <ashley-homestore.com> domain name is confusingly similar to Complainant’s ASHLEY HOMESTORES mark because it incorporates the “dominant and distinctive” portions Complainant’s mark, with the addition of a hyphen and the generic top-level domain (“gTLD”) “.com.” The disputed domain name also removes the space between the words of the mark and the “s” at the end of the mark. The changes made render the <ashley-homestore.com> domain name confusingly similar to Complainant’s ASHLEY HOMESTORES mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

 

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

 

Rights or Legitimate Interests

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.”).

 

Complainant does not allege that Respondent is not commonly known by the <ashley-homestore.com> domain name. However, the Panel notes that the WHOIS information identifies Fundacion Private Whois / Domain Administrator as the registrant of the disputed domain name, and the Panel finds that the WHOIS information is evidence that Respondent is not commonly known by the <ashley-homestore.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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 lacks rights and legitimate interests in the <ashley-homestore.com> domain name and uses the domain name to market Respondent’s anti-cancer implants, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), stated that by using a confusingly similar domain name to the complainant’s mark in order to misdirect Internet traffic to the resolving website which featured unrelated goods and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s unrelated use of the <ashley-homestore.com> domain name to attempt to sell its anti-cancer implant does not constitute 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) and demonstrates that Respondent has no rights or legitimate interests in the disputed domain name.

 

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

 

Registration and Use in Bad Faith

It appears that Respondent expects to make a profit by advertising its product through the <ashley-homestore.com> domain name because Respondent misleadingly diverts consumers who seek Complainant’s furniture products. The Panel finds that Respondent purposely attempts to confuse and attract Internet consumers to increase traffic to its website in order to make a commercial profit, which demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Complainant’s trademark registrations with the USPTO provide Respondent with constructive knowledge of Complainant’s rights in the ASHLEY marks.  While the Panel declines to make a finding of Respondent’s bad faith registration based on constructive knowledge alone, it concludes that registering a confusingly similar domain name to Complainant’s ASHLEY HOMESTORES mark demonstrates Respondent’s actual knowledge of Complainant’s rights.  Therefore, Respondent’s registration of the <ashley-homestore.com> domain name was in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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

 

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 <ashley-homestore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  September 14, 2012

 

 

 

 

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