Ashley Furniture Industries, Inc. v. None
Claim Number: FA1209001463414
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is None (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitureonlineweb.com>, registered with Tucows, Inc.
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 September 19, 2012; the National Arbitration Forum received payment on September 21, 2012.
On September 19, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureonlineweb.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 September 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@ashleyfurnitureonlineweb.com. Also on September 21, 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 October 17, 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
Complainant owns the ASHLEY mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,600,870 registered June 12, 1990). Complainant is involved in retail store sales of furniture. Complainant has used its mark in relation to its business since 1946.
Respondent registered the <ashleyfurnitureonlineweb.com> domain name on June 4, 2012. The disputed domain name is confusingly similar to Complainant’s ASHLEY mark. Respondent lacks rights and legitimate interests in the <ashleyfurnitureonlineweb.com> domain name, and uses the domain name to host a parked website that contains only hyperlinks to other websites. Respondent receives compensation in return for hosting other entities’ hyperlinks. Respondent is not commonly known by the <ashleyfurnitureonlineweb.com> domain name and is not affiliated with Complainant in any way. Respondent registered and uses the disputed domain name in bad faith because it makes a commercial gain by confusing consumers as to the origin and sponsorship of the domain name and resolving website. Respondent had actual and constructive knowledge of Complainant’s mark prior to registering the <ashleyfurnitureonlineweb.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ASHLEY mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <ashleyfurnitureonlineweb.com> domain name, and that Respondent registered and uses the domain name 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.”).
Complainant contends that it has rights in the ASHLEY mark as a result of its USPTO trademark registrations (e.g., Reg. No. 1,600,870 registered June 12, 1990). In UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), the panel determined that a USPTO registration established the complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). The Panel concludes that Complainant successfully holds rights in the ASHLEY mark under Policy ¶ 4(a)(i) through its USPTO registrations.
Complainant alleges that the <ashleyfurnitureonlineweb.com> domain name is confusingly similar to the ASHLEY mark, citing the use of Complainant’s entire mark, with the additions of the descriptive term “furniture,” the generic terms “online” and web,” and the addition of the generic top-level domain (“gTLD”) “.com.” Adding descriptive and generic terms and a gTLD to Complainant’s mark does not distinguish the disputed domain name from the ASHLEY mark; thus, the <ashleyfurnitureonlineweb.com> domain name is confusingly similar to Complainant’s ASHLEY mark for the purposes of 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)); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. 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 argues that Respondent is not commonly known by the <ashleyfurnitureonlineweb.com> domain name. The WHOIS information associated with the domain name identifies “None” as the registrant; thus, the WHOIS information does not provide any evidence that Respondent is commonly known by the <ashleyfurnitureonlineweb.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <ashleyfurnitureonlineweb.com> domain name under Policy ¶ 4(c)(i). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant asserts that Respondent’s use of the <ashleyfurnitureonlineweb.com> domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent uses the domain name to maintain a parked website that displays hyperlinks to other websites in exchange for a referral fee. Complainant includes evidence of a screenshot of Respondent’s resolving website which shows that the hyperlinks lead to websites of businesses that offer furniture for sale. The Panel infers that those entities compete with Complainant’s business. The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), stated that the respondent lacked rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) when it used the disputed domain name to host a website that contained links to websites with the complainant’s business. The Panel concludes that by featuring hyperlinks to competing business, Respondent fails to make 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) and therefore does not possess rights or legitimate interests in the <ashleyfurnitureonlineweb.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <ashleyfurnitureonlineweb.com> domain name will cause consumer frustration and confusion because the domain name gives the impression that it is associated with Complainant’s business. Complainant asserts that Respondent receives compensation for allowing a parked website with competing hyperlinks to be hosted at the disputed domain name, and misleads consumers who seek Complainant’s products. The Panel finds that Respondent has demonstrated bad faith registration and use of the <ashleyfurnitureonlineweb.com> domain name under Policy ¶ 4(b)(iv) because Respondent uses the domain name to confuse Internet consumers and attract traffic to its website for the purpose of making a commercial profit. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the ASHLEY mark. The Panel determines that the content appearing at Respondent’s resolving webpage, which offers hyperlinks to businesses whose goods compete with those offered by Complainant’s, demonstrates that Respondent had actual knowledge of Complainant’s mark and finds that Respondent’s registration of the <ashleyfurnitureonlineweb.com> domain name was in bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureonlineweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 24, 2012
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