Ashley Furniture Industries, Inc. v. Andrew Rempfer
Claim Number: FA1511001647003
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Jeffrey H. Brown of Michael Best & Friedrich LLP, Illinois, United States. Respondent is Andrew Rempfer (“Respondent”), Nevada, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfurnitureovertimewages.net>, <ashleyfurnitureovertimewages.info>, <ashleyfurnitureovertimewages.com>, <ashleyfurnitureovertime.com>, <ashleyfurnitureindustriesovertime.net>, <ashleyfurnitureindustriesovertime.info>, <ashleyfurnitureindustriesovertime.com>, <ashleyfurnitureindustriesclassaction.net>, <ashleyfurnitureindustriesclassaction.info>, <ashleyfurnitureindustriesclassaction.com>, <ashleyfurnitureclassaction.net>, <ashleyfurnitureclassaction.info>, and <ashleyfurnitureclassaction.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 13, 2015; the Forum received payment on November 13, 2015.
On November 16, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ashleyfurnitureovertimewages.net>, <ashleyfurnitureovertimewages.info>, <ashleyfurnitureovertimewages.com>, <ashleyfurnitureovertime.com>, <ashleyfurnitureindustriesovertime.net>, <ashleyfurnitureindustriesovertime.info>, <ashleyfurnitureindustriesovertime.com>, <ashleyfurnitureindustriesclassaction.net>, <ashleyfurnitureindustriesclassaction.info>, <ashleyfurnitureindustriesclassaction.com>, <ashleyfurnitureclassaction.net>, <ashleyfurnitureclassaction.info>, and <ashleyfurnitureclassaction.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2015 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@ashleyfurnitureovertimewages.net, postmaster@ashleyfurnitureovertimewages.info, postmaster@ashleyfurnitureovertimewages.com, postmaster@ashleyfurnitureovertime.com, postmaster@ashleyfurnitureindustriesovertime.net, postmaster@ashleyfurnitureindustriesovertime.info, postmaster@ashleyfurnitureindustriesovertime.com, postmaster@ashleyfurnitureindustriesclassaction.net, postmaster@ashleyfurnitureindustriesclassaction.info, postmaster@ashleyfurnitureindustriesclassaction.com, postmaster@ashleyfurnitureclassaction.net, postmaster@ashleyfurnitureclassaction.info, and postmaster@ashleyfurnitureclassaction.com. Also on November 17, 2015, 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 Response was received and determined to be complete on December 14, 2015. The Response was received after the deadline to file a response, therefore the Forum did not consider this Response to be in compliance with ICANN Rule #5 (a) (below) and/or the Annex to the Supplemental Rules.
On December 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the largest home furniture retailer and manufacturer in the United States and the largest manufacturer of furniture in the world. Complainant has registered the mark ASHLEY FURNITURE in 2004 and the mark ASHLEY FURNITURE INDUSTRIES in 1990. It uses its marks in connection with its extremely well-known brand of furniture and furniture stores. It offers its products in 123 countries around the world.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s marks as they wholly incorporate Complainant’s marks and merely add generic terms, eliminate the spacing between the words of Complainant’s marks, and add the generic top-level domains (“gTLD”) “.net,” “.info,” and “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Second, Respondent is not licensed or authorized to use Complainant’s marks. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain names to direct Internet users to websites that both compete with and are unrelated to Complainant’s business. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain names in bad faith. First, Respondent is using the disputed domain names to disrupt and compete with Complainant’s business by creating confusion through the registration and use of confusingly similar domain names. Second, Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Finally, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent states that he is an attorney representing a class of 68 current and former employees of Complainant, which is being sued for violating these employees' overtime wage rights and credit reporting rights in two separate lawsuits in the federal district court in Nevada. Respondent has not published any content to any of the web sites pointed to by the disputed domain names. Instead, GoDaddy is apparently allowing third party providers to post content to the websites.
Respondent alleges that the disputed domain names are not identical or even similar. Complainant has failed to support its claims of confusing similarity with any evidence. The terms “unpaid wages” and “overtime wages” have disapproving connotations, thereby distinguishing the disputed domain names from Complainant’s marks. Terms like those aforementioned clearly indicate that the disputed domain names are not affiliated with Complainant’s marks and cannot be considered confusingly similar. Respondent cites UDRP precedent to support its position.
Respondent states that he has rights and legitimate interests under Policy ¶ 4(a)(ii). First, Respondent’s use of Complainant’s mark constitutes nominative fair use in that it is used solely to refer to Complainant. Respondent must use Complainant’s mark in order to inform the public of its legal rights and remedies against Complainant. Respondent cites UDRP precedent to support its position.
Respondent alleges that it has not registered and used the disputed domain names in bad faith per any of the provisions of Policy ¶ 4(b). Specifically, Respondent is not using the disputed domain names to attract Internet users to intentionally sow confusion; Respondent’s websites are not operational yet. Respondent cites UDRP precedent to support its position.
Complainant owns the marks ASHLEY FURNITURE and ASHLEY FURNITURE INDUSTRIES and uses them to market its furniture products. The marks and the products are well known.
Complainant’s registration of its mark dates back to 1990.
The disputed domain names were registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names point to web sites that contain advertising for a variety of products, some of which compete with those of 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."
Before considering the three substantive elements of the Policy, the Panel must first rule on a procedural issue, namely the fact that the Response was tardy. Paragraph 10(b) of the Rules provides that, in all cases, the Panel shall ensure that the parties are treated with equality and that each Party is given a fair opportunity to present its case. The tardy Response was received prior to the transmission of the case file to the Panel. Thus the Panel decides to admit the tardy Response. Other panels have taken a similar approach, see for example Young Genius Software AB .v. MWD, James Vargas, D2000-0591 (WIPO Aug. 7, 2000).
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.
Complainant uses its registered marks in connection with its well-known brand of furniture and furniture stores. The disputed domain names are confusingly similar to Complainant’s marks as they wholly incorporate Complainant’s marks and merely add generic terms, eliminate the spacing between the words of Complainant’s marks, and add the gTLDs “.net,” “.info,” and “.com.” Previous panels have held that the addition of a generic term to a complainant’s mark does not serve adequately to distinguish a disputed domain name from a complainant’s mark under 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)). Previous panels have also held that the elimination of spacing between the words of a complainant’s mark does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Finally, previous panels have concluded that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Respondent asserts that the terms “unpaid wages” and “overtime wages” have disapproving connotations, thereby distinguishing the disputed domain names from Complainant’s marks. Moreover, Respondent alleges that terms like those aforementioned clearly indicate that the disputed domain names are not affiliated with Complainant’s marks and cannot be considered confusingly similar. A minority of previous panels have held that the addition of terms to a trademark that are critical of the complainant eliminates the risk of confusing similarity between the disputed domain names and Complainant’s marks.
However, the terms mentioned by previous panels, such as “fraud” and “sucks”, have much clearer negative connotations than the terms used in the disputed domain names. The term in the present case that has the clearest negative connotation is “class action”, but even that does not have as strong a negative association as do “fraud” or “sucks”. Indeed, it is possible that Complainant would create a dedicated web site to present its view of class action lawsuits, its view on overtime wages, and even its view on unpaid wages. Thus it cannot be said that the terms used in the disputed domain names are sufficiently negative to eliminate the risk of confusion.
Furthermore, the majority view of past panels is that generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements). Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name. See the WIPO Overview 2.0 and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, D2000-0662 (WIPO Sep. 19, 2000); Société Air France v. Mark Allaye-Chan, D2009-0327 (WIPO May 14, 2009). And see in particular Ginn Real Estate Company LLC v. Hilton Wiener, FA 1211342 (Nat. Arb. Forum Aug. 20, 2008).
Respondent argues that Complainant has not presented any evidence of actual confusion. But such evidence is not required under the Policy. According the WIPO Overview 2.0, the first element of the policy is satisfied if the relevant trademark is recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. See Mile, Inc. v. Michael Burg, D2010-2011 (WIPO Feb 7, 2011) and the cases it cites; and Ginn Real Estate Company LLC v. Hilton Wiener, FA 1211342 (Nat. Arb. Forum Aug. 20, 2008).
For these reasons, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
It is not disputed that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Further, Respondent has no license or authorization to use Complainant’s marks. The WHOIS information merely lists “Andrew Rempfer” as registrant. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues, and provides evidence to show, that Respondent uses the disputed domain name to direct Internet users to websites that both compete with and are unrelated to Complainant’s business. Previous panels have held that a respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when the website resolving from the disputed domain name displayed links to products and services which directly competed with Complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Previous panels have also held that a respondent’s use of a disputed domain name to operate a website featuring links to goods and services unrelated to the complainant was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Respondent argues that he is not using the disputed domain names, and that they will be used for a legitimate activity, namely to provide information on various law suits against the Complainant. While that activity is surely legitimate, it will also likely result in commercial gain for Respondent, which would be bad faith use under the Policy, see Ginn Real Estate Company LLC v. Hilton Wiener, FA 1211342 (Nat. Arb. Forum Aug. 20, 2008), which cites Asset Loan Co. Pty Ltd v. Rogers, D2006-0300 (WIPO May 2, 2006).
Respondent cites KBR, Inc. v. Jeffrey L. Raizner, FA 1413439 (Nat. Arb. Forum Dec. 27, 2011)(finding the use of the KBR mark in the domain name was appropriate when respondent law firm used the web site to report on litigation against complainant). But that case must be distinguished from the present case, because in the cited case the website at the disputed domain name contained news published by media, videos showing partners of Respondent's law firm reporting on current developments of the litigation against Complainant, press articles on recent judicial decisions, blogs and other content related to such litigations. That is not the case here.
Indeed, the record shows that the disputed domain names resolve to web sites that display advertising links to web sites that offer a variety of products, some of which compete with Complainant’s products. Past panels have held that the mere presence of hyperlinks, those in competition with and unrelated to, a complainant’s business does not constitute a bona fide offering of good or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
As noted above, Respondent states that he registered the disputed domain names with the intent to create a web site that would contain information critical of Complainant. He argues that that is a legitimate use under the Policy.
As noted above, the disputed domain names are not sufficiently clearly associated with criticism to enable the Panel to accept Respondent’s argument. Furthermore, there is no obvious reason why Respondent would have to register so many domain names in order to build a criticism site. Surely one domain name would suffice.
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
For all the above reasons, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues, and presents evidence to show, that Respondent is using the disputed domain names to disrupt and compete with Complainant’s business by creating confusion through the registration and use of confusingly similar domain names. Previous panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent’s disputed domain names displayed hyperlinks that compete directly with the complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As such, the Panel finds that Respondent registered and is using the disputed domain names in bad faith, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iii).
Complainant asserts that Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Previous panels found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a respondent’s disputed domain names provided links to the complainant’s competitors. 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). Further, previous panels have concluded that a respondent’s use of a disputed domain name to display hyperlinks that are unrelated to the complainant’s business is evidence of bad faith registration and use per Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Respondent contends that he has not registered and used the disputed domain names in bad faith per any of the provisions of Policy ¶ 4(b). Moreover, Respondent argues that he is not using the disputed domain names to attract Internet users to sow confusion intentionally; Respondent asserts that his websites are not operational yet. Respondent’s assertion that his websites are not yet operational does not relieve Respondent of Complainant’s contention that the disputed domain names resolve to websites that display hyperlinks that compete with and are unrelated to Complainant’s business. As was mentioned above, the presence of competing and unrelated hyperlinks on the resolving website of a disputed domain name constitutes bad faith registration and use 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); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Respondent cites Cedars-Sinai Medical Center v. Initiative Legal Group, FA 1455024 (Nat. Arb. Forum Sep 12, 2010). But in that case the web site at the disputed domain name contained an initial page stating, inter alia:
“Attorney Advertisement. Cedars-Sinai Employees: You Could Be Owed Unpaid Wages! Our law firm, Initiative Legal Group APC, is currently investigating claims that Cedars-Sinai may have failed to pay its employees all wages owed to them. California law may require Cedars-Sinai employees, depending on the facts, to be provided with: Overtime wages; Meal breaks; Rest breaks; Timely wages; and Reimbursement for business expenses. If you worked at Cedars-Sinai, you may be owed money. Our law firm, Initiative Legal Group APC, believes that Cedars-Sinai may have violated the law by failing to fully compensate employees as required by California law. We often pursue claims on a class action basis where the class representative may receive an incentive payment awarded by the court in a successful lawsuit in addition to his or her share of the class recovery. As a law firm that represents consumers, employees, and others who have had their rights violated, Initiative Legal Group APC is committed to obtaining the best possible results for its clients.”
No such statement appears on the web sites pointed to by the disputed domain names in the present case. On the contrary, as already noted, the web sites in the present case contain paid advertising links, including to products that compete with those of Complainant. Thus the present case must be distinguished from the cited case.
For all the reasons given above, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureovertimewages.net>, <ashleyfurnitureovertimewages.info>, <ashleyfurnitureovertimewages.com>, <ashleyfurnitureovertime.com>, <ashleyfurnitureindustriesovertime.net>, <ashleyfurnitureindustriesovertime.info>, <ashleyfurnitureindustriesovertime.com>, <ashleyfurnitureindustriesclassaction.net>, <ashleyfurnitureindustriesclassaction.info>, <ashleyfurnitureindustriesclassaction.com>, <ashleyfurnitureclassaction.net>, <ashleyfurnitureclassaction.info>, and <ashleyfurnitureclassaction.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: 17 December, 2015
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