Ashley Furniture Industries, Inc. v. Ashley Furnitures c/o Scott Offen
Claim Number: FA0810001231233
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 <ashleyhomestores.org>, registered with Register.com 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 October 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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.
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 <ashleyhomestores.org> domain name is identical to Complainant’s ASHLEY HOMESTORES mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyhomestores.org> domain name.
3. Respondent registered and used the <ashleyhomestores.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., is a retailer of home furniture. Complainant operates under the ASHLEY HOMESTORES mark (Reg. No. 2,231,864 issued Mar. 16, 1999), which was registered with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed <ashleyhomestores.org> 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 registered its ASHLEY HOMESTORES mark with the
USPTO in 1999, which predates Respondent’s registration of the disputed domain
name in the instant proceeding by a number of years. The Panel finds that Complainant’s
registration of the ASHLEY HOMESTORES mark with the USPTO therefore confers
upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i) in order
to achieve UDRP standing in this case. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Respondent’s disputed <ashleyhomestores.org> domain name
contains only Complainant’s mark, while it omits the space between the words
and adds the generic top-level domain “.org.”
The Panel takes strong note of the fact that such alterations are
considered immaterial and irrelevant under the UDRP. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). This burden requires Complainant to assert
facts supporting this allegation in order to obtain a sufficient prima facie case. Because the Panel finds that Complainant has
met this burden, Respondent is therefore compelled to prove its rights and
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
The disputed domain name resolves to no operating website,
and the sole resolving web page displays the message “The page cannot be
displayed.” Respondent has not tendered
a response in this case, and the Panel is not beholden to deciphering
Respondent’s presumed purpose for the disputed domain name. Rather, it is sufficient under the UDRP that
mere inactive holding of a disputed domain name constitutes ample evidence that
Respondent has failed to provide any actual use or demonstrable preparations to
use the disputed domain name in some bona
fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. & Hewlett-Packard
Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005)
(“The Panel finds that the [inactive] holding of a domain name that is
identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Bloomberg L.P. v. SC
Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum
Another consequence of Respondent’s failure to counter Complainant’s arguments in a response is that the record, based primarily on Complainant’s assertions and the WHOIS information, suggests that Respondent is not commonly known by the disputed domain name. While the WHOIS information does list the registrant as “Ashley Furnitures c/o Scott Offen,” the Panel notes that no corroborating evidence has materialized before the Panel. It would be difficult to discern a contrary finding, given that the disputed domain name has no current usage. As mentioned previously, the Panel must take the evidence before it to apply the Policy. In so doing, it is sufficient within this record to conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
When conducting its analysis under Policy ¶ 4(a)(iii), the
Panel need not limit itself to the enumerated bad faith registration and use
factors under Policy ¶ 4(b). Rather, it
may, and chooses to here, consider the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web,
The common theme within the record is the lack of any usage
of the disputed domain name. Respondent
has not provided any information that would suggest that it has, or had at some
point, ideas or plans for the disputed domain name. Here, it is enough to find that Respondent’s
blatant use of Complainant’s mark in an identical disputed domain name, and
subsequent lack of use of the domain name itself, constitutes collectively bad
faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith); see also Pirelli & C. S.p.A. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyhomestores.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY
Dated: December 8, 2008
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