Ashley Furniture Industries, Inc. v. amir shirazi
Claim Number: FA1507001628869
Complainant is Ashley Furniture Industries, Inc. ("Complainant"), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is amir shirazi ("Respondent"), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleybrandfurniture.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2015; the Forum received payment on July 17, 2015.
On July 15, 2015, GoDaddy.com, LLC confirmed by email to the Forum that the <ashleybrandfurniture.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 July 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@ashleybrandfurniture.com. Also on July 20, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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.
On July 23, 2015, the Forum received email correspondence from Respondent containing what appears to be a forwarded message from GoDaddy.com, LLC, stating that a different domain name had been removed from Respondent's account.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses ASHLEY and related marks in connection with furniture and other goods and services. Complainant's U.S. trademark registration for ASHLEY issued in 1990 and reflects a first use date of 1946. Complainant also holds a U.S. registration for a mark comprised of a stylized "A" and the words ASHLEY FURNITURE, issued in 2004.
Complainant contends that the disputed domain name <ashleybrandfurniture.com>, registered in 2015, is confusingly similar to its marks; that Respondent has no rights or legitimate interests in the disputed domain name; and that the domain name was registered and is being used in bad faith. In support thereof, Complainant notes that the disputed domain name was registered through a proxy service, and alleges that Respondent is not commonly known by the domain name, and has not been licensed or otherwise authorized to use Complainant's marks. Complainant states that the domain name resolves to a page comprised of links to other websites, including competitors of Complainant, and alleges that Respondent receives compensation for allowing its domain name to be used for this purpose.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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 disputed domain name <ashleybrandfurniture.com> corresponds to Complainant's registered ASHLEY and ASHLEY FURNITURE marks, with the generic terms "brand" and (in one instance) "furniture" and the ".com" top-level domain appended thereto. These changes are insufficient to distinguish the domain name from Complainant's marks. See, e.g., Ashley Furniture Industries, Inc. v. amir shirazi, FA 1621012 (Forum July 6, 2015) (finding <ashleyfurnituredirectbuy.com> confusingly similar to ASHLEY FURNITURE). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered marks; it was registered in the name of a privacy service; and its only apparent use has been for a website comprised of pay-per-click links. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Ashley Furniture Industries, Inc. v. amir shirazi, FA 1621012, supra. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location." The instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See, e.g., Robert Half Int'l Inc. v. Mark Schacht, FA 1622554 (Forum July 8, 2015). Furthermore, a domain name may be so closely connected with a well-known trademark that its very use suggests opportunistic bad faith. See, e.g., Bloomberg Finance L.P. v. Guo Mian, FA 1619037 (Forum June 12, 2015) (finding opportunistic bad faith in registration of <bloombergdata.net>).
Respondent has registered a domain name that incorporates Complainant's marks, and has apparently used it solely for the purpose of hosting links to competing products. The links appear on a parked page maintained by the registrar, and it is not clear that Respondent controls or profits from the links. However, Respondent registered the domain name through a privacy service in an apparent effort to conceal his identity, and has been previously found to have registered and used a similar domain name in bad faith. See Ashley Furniture Industries, Inc. v. amir shirazi, FA 1621012, supra. Under the circumstances, the Panel finds that Respondent registered and used the disputed domain name in bad faith. See Ashley Furniture Industries, Inc. v. Isaac Schreiber, FA 1398088 (Nat. Arb. Forum Aug. 19, 2011) (finding bad faith in similar circumstances).
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleybrandfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 17, 2015
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