Ashley Furniture Industries, Inc. v. ADR Media Group Corp / Johann Von Sanger
Claim Number: FA1206001450063
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is ADR Media Group Corp / Johann Von Sanger (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwashleyfurniturehomestore.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2012; the National Arbitration Forum received payment on June 22, 2012.
On June 23, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wwwashleyfurniturehomestore.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainRegistry.com 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 June 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@wwwashleyfurniturehomestore.com. Also on June 26, 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 July 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant contends that it has rights in the ASHLEY FURNITURE HOMESTORE mark, used in connection with retail furniture store goods and services and registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,680,466 registered January 28, 2003).
2. Complainant asserts that the <wwwashleyfurniturehomestore.com> domain name is confusingly similar to Complainant’s mark and the disputed domain name resolves to a website that contains only links to other websites belonging to competitors of Complainant.
3. Complainant further alleges that Respondent has not been licensed to use the ASHLEY FURNITURE HOMESTORE mark or anything deviation of it.
4. In addition, Complainant contends that Respondent registered and is using the <wwwashleyfurniturehomestore.com> domain name in bad faith because the <wwwashleyfurniturehomestore.com> domain name is meant to attract Internet users in order for Respondent to commercially gain and Respondent had constructive and actual knowledge of Complainant’s rights in its mark when Respondent registered and began using the <wwwashleyfurniturehomestore.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the ASHLEY FURNITURE HOMESTORE mark. Respondent did not submit a Response in this proceeding.
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.”).
Complainant argues that it has rights in the ASHLEY FURNITURE HOMESTORE mark. Complainant provides the Panel with evidence of its ownership of a USPTO trademark registration for the ASHEY FURNITURE HOMESTORE mark (Reg. No. 2,680,466 registered January 28, 2003). Registration of a trademark with a trademark authority is evidence of having rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Additionally, the location of the parties involved in a dispute is irrelevant to a determination of rights under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wwwashleyfurniturehomestore.com> domain name is confusingly similar to the ASHLEY FURNITURE HOMESTORE mark. The deletion of spaces and addition of the generic top-level domain (“gTLD”) “.com” does not bar the Panel from holding the disputed domain name to be confusingly similar. 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.”). Respondent’s addition of the letters “www” as a prefix to Complainant’s mark does not negate an affirmative finding under Policy ¶ 4(a)(i). See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Therefore, the Panel finds that Respondent’s <wwwashleyfurniturehomestore.com> domain name is confusingly similar to the ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use the ASHLEY FURNITURE HOMESTORE mark. Complainant provides the Panel with the WHOIS record for the <wwwashleyfurniturehomestore.com> domain name, which lists “ADR Media Group Corp / Johann Von Sanger” as the domain name registrant. Lack of authorization and WHOIS records are relevant in determining whether a respondent is commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <wwwashleyfurniturehomestore.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name is evidence of its lack of rights and legitimate interests. Complainant asserts that the <wwwashleyfurniturehomestore.com> domain name resolves to a website that features links to competing furniture goods and services. The Panel therefore finds that the <wwwashleyfurniturehomestore.com> domain name is being used for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that the <wwwashleyfurniturehomestore.com> domain name resolves to a website offering only links to competing furniture products and to Complainant’s competitors. Complainant argues that consumers trying to locate Complainant’s website may be diverted to these competitors’ products, to the competitive disadvantage of the Complainant, whose trademarks are being used to accomplish such diversions. Complainant asserts that Respondent is profiting from this diversion. Based upon this uncontradicted record, the Panel finds that Respondent registered and is using the <wwwashleyfurniturehomestore.com> domain name in bad faith to take commercial advantage of Internet users mistakes under 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).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the ASHLEY FURNITURE HOMESTORE mark. Complainant argues that Complainant’s trademark registrations through the USPTO indicate that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwashleyfurniturehomestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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