Ashley Furniture Industries, Inc. v. Web Advertising, Corp.
Claim Number: FA0810001227170
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence
J. Madden, of Kostner, Koslo & Brovold LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <signaturedesignfurniture.com>, registered with Domaindoorman, LLC.
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 October 20, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <signaturedesignfurniture.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 October 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 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@signaturedesignfurniture.com by e-mail.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <signaturedesignfurniture.com> domain name is confusingly similar to Complainant’s SIGNATURE DESIGN mark.
2. Respondent does not have any rights or legitimate interests in the <signaturedesignfurniture.com> domain name.
3. Respondent registered and used the <signaturedesignfurniture.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture
Industries, Inc., registered the SIGNATURE DESIGN mark with the United States
Patent and Trademark Office (“USPTO”) on
Respondent registered the <signaturedesignfurniture.com>
domain name 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.
Complainant’s registration of the SIGNATURE DESIGN mark with
the USPTO is sufficient to establish Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
The <signaturedesignfurniture.com> domain name, which was registered by Respondent with Domaindoorman,LLC on June 27, 2006, which was over three years subsequent to the time that the Complainant registered SIGNATURE DESIGN with the USPTO on May 4, 2003, incorporates Complainant’s entire SIGNATURE DESIGN mark and adds the generic top-level domain “.com” and the term “furniture,” which describes the product for which the mark is used. The addition of a generic term that describes Complainant’s business renders the disputed domain name confusingly similar to the 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 Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant
to prove that Respondent does not have any rights or legitimate interests in
the disputed domain name. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or legitimate
interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <signaturedesignfurniture.com>
domain name. Complainant asserts that Respondent
has no license or agreement with Complainant authorizing Respondent to use the
SIGNATURE DESIGN mark, and the WHOIS information identifies Respondent as “Web Advertising, Corp.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain name under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
According to Complainant, the <signaturedesignfurniture.com> domain name resolves to a
website that offers links to third-party websites, some of which are
competitors of Complainant. Respondent’s
use of a domain name that is confusingly similar to Complainant’s SIGNATURE
DESIGN mark to redirect Internet users interested in Complainant’s products to
third-party websites that are both unrelated and in competition with
Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
the respondent’s diversionary use of the complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
the complainant’s competitors, was not a bona fide offering of goods or
services); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <signaturedesignfurniture.com>
domain name, which is confusingly similar to Complainant’s SIGNATURE DESIGN
mark, to redirect Internet users to Respondent’s website that features links to
third-party sites, some of which compete with Complainant’s business. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain name is confusingly similar to Complainant’s SIGNATURE
DESIGN mark, Internet users accessing
Respondent’s disputed domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s use of the <signaturedesignfurniture.com>
domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds 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 <signaturedesignfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 26, 2008
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