Ashley Furniture Industries, Inc. v. Kim Bum LLC / Kim Bum
Claim Number: FA1210001467301
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Kim Bum LLC / Kim Bum (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com>, registered with Registermatrix.Com Corp.
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 October 12, 2012; the National Arbitration Forum received payment on October 15, 2012.
On October 19, 2012, Registermatrix.Com Corp. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names are registered with Registermatrix.Com Corp. and that Respondent is the current registrant of the names. Registermatrix.Com Corp. has verified that Respondent is bound by the Registermatrix.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 October 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@ashleyfurnituree.com, postmaster@ashleyfurnitureshowroom.net, and postmaster@myashleyfurniture.com. Also on October 24, 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 November 27, 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. 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
Complainant contends as follows:
Complainant has rights in the ASHLEY mark. The mark is used in connection with the sale of furniture and related retail store services.
Complainant is the owner of the Korean Intellectual Property Office (“KIPO”) registrations for the ASHLEY mark (e.g., Reg. No. 40-0669032 registered July 4, 2006). Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990).
The <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names are confusingly similar to the ASHLEY mark. Each of the domain names incorporates the ASHLEY mark along with some of the following: an additional letter, one or more descriptive terms, a generic term, and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names.
Respondent is not commonly known by the disputed domain names. Respondent has not been licensed or otherwise authorized by Complainant to use the ASHLEY mark or anything confusingly similar to it.
The disputed domain names resolve to parked websites. Respondent registered and is using the <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names in bad faith. Respondent registered and uses the disputed domain names with the intent of commercial gain by misleadingly diverting consumers who are seeking Complainant to Respondent’s websites. Internet users, reaching the parked websites resolving from the <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names, will become frustrated thinking that the domain names are owned by or associated with Complainant, thus tarnishing Complainant’s reputation to consumers. Respondent is presumably profiting from the registration and use of the disputed domain names.
Respondent had constructive and/or actual knowledge of Complainant’s rights in the ASHLEY mark by virtue of Complainant’s trademark registrations. Respondent registered the <ashleyfurnituree.com> domain name on June 1, 2012, the <ashleyfurnitureshowroom.net> domain name on June 14, 2012, and the <myashleyfurniture.com> domain name on June 7, 2012, all 22 years after the ASHLEY mark was registered in the United States and well after Complainant began using the mark. Complainant also has registrations for the ASHLEY mark in Respondent’s country of residence, Korea, which predate the registration of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with KIPO and the USPTO for its ASHLEY mark.
Complainant’s trademark rights in ASHLEY predate Respondent’s registration of each of the domain names.
The WHOIS information for each of the at-issue domain name’s identifies “Kim Bum LLC/Kim Bum” as the registrant.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain names each resolve to a parking page containing links to Complainant’s competitors.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the ASHLEY mark in connection with the sale of furniture and related retail store services. Complainant owns KIPO as well as USPTO registrations for the ASHLEY mark. Therefore, the Panel finds that Complainant has rights in the ASHLEY mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names are each confusingly similar to Complainant’s ASHLEY mark. Each of the domain names incorporates the ASHLEY mark along with some of the following: an additional letter, one or more descriptive terms, a generic term, and a gTLD. Adding a single letter to a trademark to create a domain name fails to distinguish the resulting domain name from the mark under Policy ¶4(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Similarly, the addition of generic and/or descriptive terms does not distinguish any of the relevant at-issue domain names from Complainant’s mark sufficiently for the Panel to find that the at-issue domain name is not “confusing similarity” to Complainant’s trademark under to Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Furthermore, it is well settled that the top level domain name is irrelevant to the Panel’s analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any one or more of the at-issue domain names, Complainant’s prima facie showing acts conclusively as to each at-issue domain name.
The WHOIS information for the at-issue domain names identifies each registrant as “Kim Bum LLC/Kim Bum” and the documentation before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the domain names for the purposes of 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).
Furthermore, the disputed domain names resolve to parked websites which display only links to other websites. Some of the links are to entities competitive with Complainant’s offerings and are listed under headings such as “VISTAFURNITURE” and “USED FURNITURE.” Using the at-issue domain names to host parked websites displaying competitive links does not, and cannot, demonstrate Respondent’s rights or interests in respect of each such at-issue domain name pursuant to either Policy ¶¶ 4(c)(i) or 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)).
The at-issue domain names were registered and are being used in bad faith. As discussed below, Policy ¶4(b)(iv) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain names.
Respondent registered and uses the at-issue domain names with the intent of commercial gain by misleadingly diverting consumers who are seeking Complainant to Respondent’s websites. As mentioned elsewhere herein, the at-issue domain names each address a parked webpage where links are displayed to competing third-parties. It is highly likely that in this manner Respondent is profiting, or intends to profit, from the registration and use of the at-issue domain names. It is also reasonable to infer that Internet users reaching the websites addressed by the <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names, may be confused into believing that such websites are owned by, sponsored by, or associated with Complainant. Using the domain names in this manner is likely to tarnish Complainant’s reputation and goodwill. Therefore, based on the foregoing, the Panel concludes that Respondent registered and is using the at-issue domain names in bad faith pursuant 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).
Finally, Respondent had actual knowledge of Complainant’s rights in the ASHLEY mark at the time it registered the at-issue domain names. Respondent’s actual knowledge of Complainant’s mark is evident by Respondent’s inclusion of the entire ASHLEY mark in each of the at-issue domain names while not having any authority to use such mark in connection with a domain name or otherwise. Moreover, the fact that each of the domain names is used to address a website which, advantaged by the goodwill contained in Complainant’s mark, trades on such mark, likewise shows that Respondent was well aware of Complainant’s ASHLEY mark prior to registering the at-issue domain names. Indeed, it is apparent that the sole reason that Respondent registered the at-issue domain names was to impermissibly take advantage of Complainant’s trademark. Registering and using a domain name with knowledge of a complainant’s rights therein indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See 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); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnituree.com>, <ashleyfurnitureshowroom.net>, and <myashleyfurniture.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 27, 2012
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