Ashley Furniture Industries, Inc. v. Keith Litchauer
Claim Number: FA1609001692611
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Keith Litchauer (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <getashleyfree.com>, <freeashleyfurniture.com>, and <ashley4free.com> ‘the Domain Names’ 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 6, 2016; the Forum received payment on September 8, 2016.
On Sep 7, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <getashleyfree.com>, <freeashleyfurniture.com>, and <ashley4free.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 September 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2016 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@getashleyfree.com, postmaster@freeashleyfurniture.com, postmaster@ashley4free.com. Also on September 9, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarized as follows:
The Domain Names are confusingly similar to the Complainant’s registered trade marks ASHLEY, A ASHLEY FURNITURE & design and A ASHLEY FURNITURE INDUSTRIES & design registered in the USA for furniture with first use in commerce being at least as early as 1946, 1984 and 2001 respectively with the only substantive differences being the addition of the non distinctive terms ‘free’, ‘get’ and ‘4’ as part of the Domain Names.
The Respondent has no rights or legitimate interests in the Domain Names created in 2015. Respondent is not commonly known by the Domain Names. The Complainant has not licensed the Respondent to use its trade marks.
The websites attached to the Domain Names feature links to other websites not connected with the Complainant including those offering the products of competitors of the Complainant for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant’s has registered trade marks ASHLEY, A ASHLEY FURNITURE & design and A ASHLEY FURNITURE INDUSTRIES & design registered in the USA for furniture with first use in commerce being recorded as at least as early as 1946, 1984 and 2001 respectively with the only substantive differences being the addition of the non distinctive terms ‘free’, ‘get’ and ‘4’ as part of the Domain Names.
The websites attached to the Domain Names feature links to other websites not connected with the Complainant including those offering the products of competitors of the Complainant for commercial gain.
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(f), 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 (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 Domain Names each consist of the Complainant's ASHLEY mark, the generic number '4’ and/or the generic terms ‘’get’, ‘free’ and/or ‘furniture’ and a gTLD.
Panels have found confusing similarity where numerals were added to a mark in a domain See Omnitel Pronto Italia SpA v Bella, D2000-1641 (WIPO Mar 12, 2001) (finding that the contested omnitel2000.com domain name is confusingly similar to the Omnitel trade mark.) Similarly with added generic terms See Yahoo! Inc v Zuccarini, D2000-0777 (WIPO Oct. 2, 2000)(finding that the registration and use of multiple domain names containing the Complainant’s mark together with generic words such as ‘chat’ and ‘financial’ were confusingly similar under the Policy).
gTLDs do not serve to distinguish the Domain Name from a mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Names, and is not making a legitimate non commercial or fair use of the name. The sites attached ot the Domain Names appear to be set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit by pointing to third party links unconnected with the Complainant including those competing with the complainant's services. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.)
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent's use on its sites is commercial and he is using them to link to third party web sites in a confusing manner. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites. (See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug 2, 2015)(holding that the respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to the complainant’s business through which the Respondent presumably gained).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the<getashleyfree.com>, <freeashleyfurniture.com>, and <ashley4free.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 14, 2016
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