national arbitration forum

DECISION

Ashley Furniture Industries, Inc. v. PabloPalermao

Claim Number: FA0802001152230

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden, of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is PabloPalermao (“Respondent”), Peru.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyfurniturehomestore.com>, registered with Moniker Online Services, Inc.

PANEL

The undersigned certifiy that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Charles K. McCotter, Jr., David E. Sorkin, P-E H. Petter Rindforth, Chair as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 19, 2008.

On February 26, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturehomestore.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ashleyfurniturehomestore.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On March 31, 2008, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Charles K. McCotter, Jr., David E. Sorkin and P-E H. Petter Rindforth, Chair, 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." 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <ashleyfurniturehomestore.com> domain name is identical to Complainant’s ASHLEY FURNITURE HOMESTORE mark.

2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturehomestore.com> domain name.

3. Respondent registered and used the <ashleyfurniturehomestore.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

The Complainant is the owner of the U.S. trademark registration No. 2,680,466 ASHLEY FURNITURE HOMESTORE (word) in class 35, first used in commerce on June 1, 1998, application filed on January 1, 2002 and the mark registered on January 28, 2003.

Complainant is also the owner of the following U.S. trademark registrations:

- No. 2,231,864 ASHLEY HOMESTORES (word) in class 35, registered on March 16, 1999

- No. 2,449,045 ASHLEY FURNITURE HOMESTORE & Design in Class 35, registered on May 8, 2001

- No. 2,980,669 A ASHLEY FURNITURE HOMESTORE & Design in Class 35, first used in commerce on April 15, 2004, application filed June 7, 2004 and the mark registered on August 2, 2005.

Respondent registered the disputed domain name on April 30, 2004.

DISCUSSION

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."

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.”).

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.

Identical and/or Confusingly Similar

The relevant part of the disputed domain name is “ashleyfurniturehomestore.” 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.”).

Complainant has established rights in the ASHLEY FURNITURE HOMESTORE trademark in the U.S. through the word mark registration mentioned above. Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning. Therefore Complainant has proved relevant trademark rights to ASHLEY FURNITURE HOMESTORE. See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes 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).

The disputed domain name is identical to Complainant’s registered word mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names”). The domain name is likewise confusingly similar to at least Complainant’s ASHLEY FURNITURE HOMESTORE & Design marks.

The Panel concludes that the Complainant has satisfied the requirements of Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Complainant has the initial burden of showing that Respondent has neither rights nor legitimate interests in the disputed domain name. Complainant has asserted that Respondent lacks all rights and legitimate interests in the <ashleyfurniturehomestore.com> domain name, and the Panel finds that Complainant’s assertions are sufficient to establish a prima facie case under Policy ¶ 4(a)(ii). The burden then shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.

The WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, as the Respondent is listed as “PabloPalermao”, and and there is no other evidence in the record indicating that Respondent is commonly known by <ashleyfurniturehomestore.com>.

Complainant asserts that the domain name resolve to a website that provides links to commercial websites, both related and unrelated to Complainant. It is already concluded above that “ashleyfurniturehomestore” is identical to the Complainant’s trademark ASHLEY FURNITURE HOMESTORE and it is also well established that Respondent’s use cannot constitute a bona fide use of the domain name pursuant to Policy ¶ 4(c)(i). See TM Acquisition Corp. v. Gary Lam, FA 280499 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP); see als Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Complainant is a U.S based company, and the Complaint is supported by Complainant’s U.S. trademark registrations, whereas the Respondent seems to be based in Peru according to the WHOIS information.

The Complainant has not submitted any evidence or arguments in order to prove that Complainant’s trademark ASHLEY FURNITURE HOMESTORE is well known or at least registered in Peru. On the other hand, it is hardly a coincidence that the Respondent registered a 24 lettered domain name identical to Complainant’s trademark and thereafter used it for a website with links to Complainant’s competitors. The only conclusion possible for this Panel is that Respondent was well aware of the Complainant’s trademark rights and business at the time of the domain name registration and accordingly registered and used <ashleyfurniturehomestore.com> with the Complainant in mind.

Respondent’s use - presumably for commercial gain - of the disputed domain name for a commercial web directory website linking users to competing services is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the same. In Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003), the panel found that “[r]egistration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”

Another indication of bad faith registration and use is the fact that Respondent has previously been ordered to transfer a disputed domain name to a complainant in a UDRP decision. See Amcore Fin., Inc. v. PabloPalermaeo, FA 1082151 (Nat. Arb. Forum Nov. 15, 2007). While this case alone may not be evidence that Respondent has engaged in a pattern of cybersquatting, it shows that the present case is not just an isolated incident and that Respondent has an experience of register domain names identical to US trademarks.

The Panel holds that the Respondent has registered and is using the disputed domain name in bad faith and concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <ashleyfurniturehomestore.com> domain name be TRANSFERRED from Respondent to Complainant.

Charles K. McCotter, Jr., David E. Sorkin, P-E H. Petter Rindforth, Chair, Panelists

Dated: April 11, 2008

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