Ashley Furniture Industries, Inc. v. Kegelmaster Intl. c/o David Wallick
Claim Number: FA0809001226148
Complainant is Ashley
Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden, of Kostner, Koslo & Brovold LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ashleyfurnitures.biz> and <ashleyfurnitures.net>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain names are confusingly similar to Complainant’s ASHLEY FURNITURE mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain names.
3. Respondent registered and used the <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the ASHLEY FURNITURE mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,984,655
issued
The <ashleyfurnitures.biz>
and <ashleyfurnitures.net>
domain names were both registered on
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.
The Panel finds that Complainant has sufficiently
established rights in the ASHLEY FURNITURE mark through registration of the
mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Both <ashleyfurnitures.biz>
and <ashleyfurnitures.net>
domain names contain the ASHLEY FURNITURE mark in its entirety followed by the
letter “s” and the generic top level domain (“gTLD”) “.biz” or “.net.” The addition of one letter at the end of a
mark does not differentiate a disputed domain name. Moreover, the inclusion of a gTLD is a
necessary component in all domain names and so is irrelevant to a Policy ¶
4(a)(i) analysis. For these reasons, the
Panel finds that the <ashleyfurnitures.biz>
and <ashleyfurnitures.net>
domain names are confusingly similar to Complainant’s ASHLEY FURNITURE mark
pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
It is Complainant’s
burden that it establishes a prima facie case against Respondent in
order for these proceedings to be held.
However, once this burden is met, the burden is shifted to Respondent to
show that it does have rights or legitimate interests in the disputed domain
names. The Panel finds that this
preliminary threshold has been met and that it is now incumbent upon Respondent
to come forward with evidence demonstrating its rights or legitimate interests
in the disputed domain names. 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 Swedish Match UK Ltd.
v. Admin, Domain, FA
873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
Respondent failed
to reply to the Complaint. As a
consequence, the Panel may presume that Respondent lacks rights and legitimate
interests in the <ashleyfurnitures.biz>
and <ashleyfurnitures.net>
domain names unless clearly
contradicted by the evidence. With this
consideration in mind, the Panel will proceed to examine the record for the
elements laid out in Policy ¶ 4(c). See
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
The WHOIS information for both of the disputed domain names
lists Respondent under the alias “Kegelmaster Intl. c/o David Wallick.” There is
no obvious connection between this alias and the disputed domain names. Without any additional information in the
record, the Panel finds that Respondent is not commonly known by either the <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain
names pursuant to Policy ¶ 4(c)(ii). 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); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The <ashleyfurnitures.biz>
and <ashleyfurnitures.net>
domain names each resolve to a parked website offering a commercial search
engine and a series of links to third-parties, many of whom offer furniture
related services and products that compete with those offered by
Complainant. As a consequence, the Panel
finds this use to constitute neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409
(Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to
offer any goods or services on its website other than links to a variety of
third-party websites, it was not using a domain name in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10,
2007) (concluding that the use of a confusingly similar domain name to operate
a portal with hyperlinks to various third-party websites, some of which may be
in direct competition with a complainant, does not constitute 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)).
Respondent has offered to sell the disputed domain names for
US $2,000.00 and threatened to post a website criticizing Complainant if
Complainant did not comply with Respondent’s demand. The Panel considers this to demonstrate a willingness
to depart with the disputed domain names on the part of Respondent. Accordingly, the Panel determines this to
constitute additional evidence that Respondent lacks rights and legitimate
interests in the <ashleyfurnitures.biz>
and <ashleyfurnitures.net>
domain names pursuant to Policy ¶ 4(a)(ii).
See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25,
2007) (concluding that a respondent’s willingness to sell a domain name to the
complainant suggests that a respondent has no rights or legitimate interests in
that domain name under Policy ¶ 4(a)(ii)); see
also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding
no rights in a domain name where the respondent offered the infringing domain
name for sale and the evidence suggests that anyone approaching this domain
name through the worldwide web would be "misleadingly" diverted to
other sites).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered to sell the disputed domain names to
Complainant and has further demanded the sale and threatened in lieu thereof to
post a website that criticizes and otherwise attempts to tarnish Complainant’s
business. The Panel finds that these
facts establish that Respondent registered and is using the <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain
names in bad faith under Policy ¶ 4(b)(i).
See George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb.
Forum Apr. 25, 2007) (concluding that the respondent registered and was using
the <gwbakeries.mobi> domain name in bad faith according to Policy ¶
4(b)(i) where it offered it for sale for far more than its estimated
out-of-pocket costs it incurred in initially registering the disputed domain
name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer to sell it to the trademark owner or a
competitor of the trademark owner").
Furthermore, the current use of the disputed domain names involves a series of links that if clicked-upon redirect Internet users to various third-parties, many of which offer products and services that directly compete with Complainant. Therefore, the Panel considers one of Respondent’s purposes in registering and using the disputed domain names to be disruption of Complainant’s business. Accordingly, the Panel finds this to be further evidence of Respondent’s bad faith registration and use of the <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain names under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
The Panel also finds that Respondent has created a
likelihood of confusion as to Complainant’s source and endorsement of the
disputed domain names and corresponding websites, for Respondent’s commercial
gain. Therefore, the Panel finds that
Respondent has engaged in bad faith registration and use under Policy ¶
4(b)(iv). See Allianz of Am. Corp. v.
Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also 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).
The Panel concludes that 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 <ashleyfurnitures.biz> and <ashleyfurnitures.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 11, 2008
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