Ashley Furniture Industries, Inc. v. Shishu Singh
Claim Number: FA1208001458950
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Shishu Singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnituretoday.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2012; the National Arbitration Forum received payment on August 23, 2012.
On August 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituretoday.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@ashleyfurnituretoday.com. Also on August 27, 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.
A timely Response was received and determined to be complete on September 17, 2012.
On September 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the following trademark registrations with the United States Patent and Trademark Office ("USPTO") including ASHLEY (Reg. No. 1,600,879 registered June 12, 1990); A ASHLEY FURNITURE (Reg. No. 2,894,665 registered October 19, 2004); and ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686 registered July 3, 1990).
Complainant also owns a trademark registration with the India Controller General of Patents, Designs, and Trademarks (“ICGPDT”) for the ASHLEY (Reg. No. 821,772) and ASHLEY & Design marks (Reg. No. 319,592).
Respondent’s <ashleyfurnituretoday.com> domain name is confusingly similar to Complainant’s marks.
Respondent is not commonly known by the disputed domain name, is not a customer of Complainant’s, and has not been licensed or authorized to use Complainant’s marks in any way.
Respondent’s domain name resolves to a parked website featuring links to various websites, including those that compete with Complainant in the furniture industry.
Respondent has registered and is using the disputed domain name in bad faith by hosting a parked website featuring links to various competing and unrelated products and businesses for commercial gain.
Respondent had actual or constructive knowledge of Complainant’s rights in the ASHLEY marks prior to registering the disputed domain name.
B. Respondent
Respondent contends as follows:
Respondent did not register the disputed domain name with the intention of harassing anyone and did not know that anyone possessed the ASHLEY mark.
Respondent registered the disputed domain name after reading an article on <godaddy.com> about cash parking services for domain names and decided to try it himself.
Respondent has corresponded with Complainant’s counsel regarding the domain name, although not timely because of access to e-mail issues.
Respondent had the access code to transfer the domain name to Complainant, but Complainant’s counsel refused to do so.
Respondent has no objection to the transfer of the disputed domain name to Complainant.
Complainant owns several USPTO registrations for ASHLEY and related marks A ASHLEY FURNITURE and ASHLEY FURNITURE INDUSTRIES and as well as a registration with the ICGPDT for the ASHLEY mark.
Respondent has no objection to the transfer of the at-issue domain name to 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.
However, the instant case may be decided under a qualified exception to finding each of the factors under Paragraph 4(a). The Panel’s following analysis is essentially the same, and nearly word for word, as its analysis in Seagate Technology LLC v. Whois Agent / Whois Privacy Protection Service, Inc., FA1432711 (Nat. Arb. Forum April 18, 2012) in which the respondent also expressly agreed that the domain name should be transferred to the complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Notwithstanding Policy Paragraph 4(a), Rules Paragraph 15(a) permits a panel to summarily grant a complainant’s requested relief without deference to Paragraph 4(a)ii or 4(a)iii when a respondent consents to such relief.
That a Panel may deviate from the normal requirements of Paragraph 4(a) under certain circumstances is wholly logical. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).
As a prerequisite to obtaining the relief requested even where, as here, Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in the at-issue domain name under Policy ¶4(a)(i). This it does. Complainant establishes rights in the ASHLEY related marks under Policy ¶ 4(a)(i) through its various trademark registrations with the USPTO as well by its registration of ASHLEY with the ICGPDT. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Respondent’s <ashleyfurnituretoday.com> domain name is also confusingly similar to Complainant’s marks. The at-issue domain name may be formed by simply removing the letter “A” from the A ASHLEY FURNITURE mark and the spaces from between the terms of the mark, adding the generic term “today,” and appending the generic top-level domain “.com” to the resulting string. Such changes are insufficient to distinguish the disputed domain name from the A ASHLEY FURNITURE mark. See 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 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); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark).
Since the at-issue domain name is confusingly similar to Complainant’s registered trademark, it is thus outcome determinative that Respondent unequivocally does not object to transfering the at‑issue domain name to Complainant. Given the foregoing and as discussed below, the Panel sees no basis requiring further substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii).
This Panel concludes that when a respondent consents to transferring its domain name to the complainant judicial economy dictates that the panel should simply proceed to grant the complainant’s requested relief in recognition that there is no dispute between the parties regarding the at-issue domain name’s disposition. However, some panels disagree that a respondent’s consent to transfer forecloses further analysis under Paragraphs 4(a)(ii) and 4(a)(iiii) and have urged that even though a respondent agrees to transfer an at-issue domain name, a panel should nonetheless proceed to a decision containing analysis under Paragraph 4(a)(ii) and/or 4(a)(iii). In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel states:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
While the Graebel Van Lines panel suggests that allowing a domain name to be transferred by consent without more shields cybersquatters from adverse findings, this Panel respectfully considers such concern to be inappropriate. Rather, the Panel is of the opinion that the UDRP has no business serving a policing function or exposing cybersquatters apart from that which follows in deciding whether or not an at-issue domain name should be transferred from the respondent.
Judicial economy and the purpose of the UDRP to provide an abbreviated low cost process to settle domain name disputes demands the expeditious and economical resolution of UDRP disputes to the extent reasonably possible. A respondent that consents to a complainant’s requested relief allows the parties, the dispute resolution provider, and the Panel, to dispense with having to consume unnecessary time and resources on matters that are superfluous to the dispute’s outcome. “When a respondent consents to transfer … it serves little purpose to expend the panel's and the parties’ resources in an exercise which will have no impact on the ultimate outcome of the decision process.” See Tokyu Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc. D2008-1406 (WIPO December 8, 2008). In Tokyu, like in the instant case, the respondent’s consent to transfer was unequivocal and express.
Furthermore, given that a respondent agrees to the complainant’s requested relief such respondent’s responsive submissions will likely offer little or no substantive defense. In such cases it is likely that a response will be less effective in addressing Paragraph 4(a) concerns (if addressed at all) than in the situation were a respondent decides to defend its domain name on the merits. Conclusions drawn from analysis under Paragraph 4(a)ii and 4(a)iii that are based on the terse response of a respondent who has agreed to transfer its domain name are thus of dubious validity.
Importantly, the singularly narrow task before this Panel is to determine whether or not the requested relief should be granted, denied, or the case dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis added).
A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What amounts to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and the complainant has rights in a confusingly similar at-issue domain name then only under particular circumstance that call into question the validity of the respondent’s consent, or for similar other good cause, might a panel need to proceed to consider the merits of a complaint via further analysis under Paragraph 4(a). Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
Having established that Respondent’s domain is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and further having established that Respondent does not object to the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnituretoday.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 23 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page