Ashley Furniture Industries, Inc. v. Transure Enterprise Ltd. c/o Host Master
Claim Number: FA0810001227729
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 <ashleybeds.com>, registered with Above, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 6, 2008.
On October 7, 2008, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleybeds.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 October 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant registered the ASHLEY trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879, issued June 12, 1990) for furniture products.
Complainant has not granted permission or license to Respondent to use the ASHLEY trademark in any way.
The <ashleybeds.com> domain name was registered on February 12, 2008 and resolves to a parked website displaying a variety of links to third-party websites, many of which offer products and services that compete with those offered under Complainant’s mark.
Respondent’s <ashleybeds.com> domain name is confusingly similar to Complainant’s ASHLEY mark.
Respondent does not have any rights to or legitimate interests in the <ashleybeds.com> domain name.
Respondent registered and uses the <ashleybeds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established rights in the ASHLEY trademark through its registration with the USPTO. See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with a complainant’s registration of the mark AMERIDREAM with the USPTO, that complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003): “[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”
The <ashleybeds.com> domain name contains Complainant’s ASHLEY mark in its entirety, followed by the descriptive term “beds” and the generic top level domain (“gTLD”) “.com.” It is well-established that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Moreover, the addition of a generic term such as “beds,” which has an obvious relationship to Complainant’s business and furniture products sold under the ASHLEY mark, does not sufficiently distinguish the disputed domain name from the mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
As a consequence, we conclude that the <ashleybeds.com> domain name is confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights to and legitimate interests in the dispute domain name. Once Complainant has met this threshold test, the burden is shifted to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).
Complainant’s submission satisfies the minimal requirements of the Policy, and no Response has been filed in this case. Therefore, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004):
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.
See also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003): “It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.” Nonetheless, we will examine the record in consideration of the elements listed in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has rights or interests cognizable under the Policy.
We begin by noting that the pertinent WHOIS information identifies Respondent as “Transure Enterprise Ltd. c/o Hostmaster.” Moreover, Complainant alleges, and Respondent does not deny, that Complainant has not granted permission or license to Respondent to use the ASHLEY mark in any way. In the absence of any contrary evidence in the record, we must conclude that Respondent is not commonly known by the <ashleybeds.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the disputed domain name, including the pertinent WHOIS information and a complainant’s undenied assertion that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Respondent does not contest the allegation of the Complaint to the effect that the <ashleybeds.com> domain name resolves to a parked website, and that this site contains links to various third-parties sites, many of which offer products or services that compete with the business of Complainant. This use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006):
[T]he operation of a ‘parking page’ in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by [UDRP] Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as contemplated by [UDRP] Policy ¶ 4(c)[iii].
To the same effect, see also MEDIATIS
The Panel therefore concludes that Complainant has adequately met the requirements of Policy ¶ 4(a)(ii).
We may presume from the record evidence that Respondent benefits from the parked status of the <ashleybeds.com> domain name through the collection of advertising or referral fees. Having established that the disputed domain name is confusingly similar to Complainant’s mark, resolves to the web sites of business competitors of Complainant, and that Respondent benefits financially from this use, we further conclude that Respondent registered and is using the <ashleybeds.com> domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (finding bad faith registration and use where a respondent parked a disputed domain name with a registrar because “the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the Respondent is also responsible for the sponsored links currently appearing on the website.”); 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.’” Further see Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel thus concludes that Complainant has successfully established the necessary elements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ashleybeds.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 11, 2008
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