Ashley Furniture Industries, Inc. v. Telos CHAMIR
Claim Number: FA1107001398288
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Telos CHAMIR (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnituresucks.info>, registered with Key-Systems GmbH.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2011; the National Arbitration Forum received payment on August 3, 2011. The Complaint was received in both the German and English languages.
On August 5, 2011, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituresucks.info> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 August 5, 2011, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of August 25, 2011 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@ashleyfurnituresucks.info. Also on August 5, 2011, the German language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <ashleyfurnituresucks.info>, is confusingly similar to Complainant’s A ASHLEY FURNITURE mark.
2. Respondent has no rights to or legitimate interests in the <ashleyfurnituresucks.info> domain name.
3. Respondent registered and used the <ashleyfurnituresucks.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., is a designer and manufacturer of furniture products. Complainant owns several trademarks with the United States Patent and Trademark Office ("USPTO") for its ASHLEY name and mark, including:
1. ASHLEY (Reg. No. 1,600,879 registered June 12, 1990);
2. A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686 registered July 3, 1990); and
3. A ASHLEY FURNITURE (Reg. No. 2,894,665 registered October 19, 2004).
Respondent, Telos CHAMIR, registered the <ashleyfurnituresucks.info> domain name November 19, 2010. Respondent’s disputed domain name resolves to a website that features third-party links to Complainant’s competitors in the furniture industry.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant presented sufficient evidence to support a finding that it has established rights in the ASHLEY (Reg. No. 1,600,879 registered June 12, 1990); A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686 registered July 3, 1990); and A ASHLEY FURNITURE marks (Reg. No. 2,894,665 registered October 19, 2004), through its submission of trademark certificates with the USPTO. Complainant need not own a trademark registration in the country where Respondent resides under the Policy. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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).
Complainant contends that the <ashleyfurnituresucks.info> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark. Complainant argues that the domain name merely removes the letter “a” and the spaces from its mark, while adding the generic term “sucks” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that such changes to Complainant’s mark do not render the domain name distinct from Complainant’s mark, thus making the domain name confusingly similar under 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); see also ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent has no to rights or legitimate interests in the <ashleyfurnituresucks.info> domain name. Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Respondent failed to respond to the Complaint, permitting the Panel to assume that Respondent has no rights to or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, this Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant urges that Respondent is not commonly known by the <ashleyfurnituresucks.info> domain name, and that Complainant gave Respondent no permission to use Complainant’s mark. The WHOIS information identifies “Telos CHAMIR” as the registrant of the disputed <ashleyfurnituresucks.info> domain name. No evidence on record suggests that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to a Policy ¶ 4(c)(ii) analysis. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Complainant also contends that Respondent placed the disputed domain name with a parking agency, which in turn displays third-party links to Complainant’s competitors such as, “Crate & Barrel,” “Macy’s,” and “Pottery Barn.” Complainant contends that Respondent receives commercial compensation from the businesses advertised and linked to on its website, and that such use of a domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the domain name to host a website that features various third-party links to competing furniture manufacturers and sellers is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services 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)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
As previously noted, Respondent is using the disputed domain name to resolve to a website that features third-party links to competing furniture producers and sellers. The Panel presumes that such conduct likely results in a loss of business for Complainant, because Internet users searching for Complainant’s goods may be diverted to purchase the goods of Complainant’s competitors if they happen upon Respondent’s website. Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent benefits commercially from its use of the <ashleyfurnituresucks.info> domain name through the use and receipt of click-through or affiliate fees. The Panel, in the absence of a Response from Respondent, is permitted to make an inference that Respondent profits from its use of the domain name at issue, and further that registering a domain name that is confusingly similar to another’s mark for such a purpose is evidence of bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <ashleyfurnituresucks.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 7, 2011.
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