Ashley Furniture Industries, Inc. v. Pluto Domain Services Private Limited
Claim Number: FA0811001235333
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden, of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Pluto Domain Services Private Limited (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ashleyfurnitureindustriesinc.com>, registered with Lead Networks Domains Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On December 2, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureindustriesinc.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 December 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 24, 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@ashleyfurnitureindustriesinc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
The Complainant is known by the trade name Ashley Furniture Industries, Inc. In addition, the Complainant owns the trademark A ASHLEY FURNITURE INDUSTRIES by virtue of its ownership of U.S. Reg. No. 1,604,686. The trademark is used for goods and services in International Class 20, including furniture, and has been so used since at least as early as January, 1984. The same trademark is also registered (U.S. Reg. No. 3,267,080) for goods and services in International Class 39, including freight transportation by trucks. The Complainant has filed applications to register the trademark for goods and services in Class 11, including lamps, in International Class 24, for comforters, bed skirts, throws, and pillow shams, and in International Class 27, for area rugs.
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The domain name is identical to the Complainant's trade name. The domain name is virtually identical to the Complainant's registered trademarks noted above, and to the pending applications to register the trademark, with the only difference being the addition of the generic "inc".
The Respondent has no rights or legitimate interests in respect of the domain name(s) that is the subject of the complaint.
To the best of Complainant's knowledge, the Respondent is not known by the domain name. A Google search for "ashley" and "Private Whois" revealed no relevant matches, other than another domain name dispute against the Respondent. A search of the United States Patent and Trademark Office's online database for registered trademarks or pending trademark applications revealed none owned by Private Whois. Accessing the domain name resolves to a website that contains only links to other websites, including websites offering products manufactured or sold by competitors of the Complainant.
Based on this fact, it does not appear that the Respondent has made use or demonstrable preparations to use the domain name for a bona fide offering of goods or services.
The domain name was registered and is being used in bad faith.
To the best of the Complainant's knowledge, the Respondent is not the true owner of the domain name, but only a "mask" or "front" to protect the true owner's anonymity. This fact suggests the true owner does not have a legitimate business purpose for registering this domain name. As noted above, the domain name is used only to link to other websites, including web sites offering products from competitors of the Complainant. Presumably, the Respondent is receiving consideration for such links.
The fact that the domain name is identical to the Complainant's trade name and virtually identical to the Complainant's trademark, coupled with the fact that the domain name contains only links to other sites, including sites offering products for the Complainant's competitors, suggests that the domain name was registered to disrupt Complainant's business by diverting viewers to competitor's websites. This diversion creates a likelihood of confusion as to source, sponsorship or affiliation with regard to these competitors' products.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., operates a furniture business. Complainant registered its A ASHLEY FURNITURE INDUSTRIES mark with the United States Patent and Trademark Office (“USPTO”) on July 3, 1990 (Reg. No. 1,604,686). Complainant uses its A ASHLEY FURNITURE INDUSTRIES mark to promote its furniture business.
Respondent registered the <ashleyfurnitureindustriesinc.com> domain name on March 2, 2007. Respondent’s disputed domain name resolves to a website displaying links to third-party websites that compete with Complainant’s business.
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 has provided the Panel with evidence of the registration of its A ASHLEY FURNITURE INDUSTRIES mark with the USPTO. The Panel finds this registration sufficiently establishes Complainant’s rights in its A ASHLEY FURNITURE INDUSTRIES mark pursuant to Policy ¶4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also 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.").
Respondent’s <ashleyfurnitureindustriesinc.com> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE INDUSTRIES mark because it copies the mark with the additions of the generic abbreviation “inc” and the generic top-level domain “.com” and deletes the leading “A.” The Panel finds these changes do not sufficiently detract from the dominant portion of Respondent’s disputed domain name, which is Complainant’s “A ASHLEY FURNITURE INDUSTRIES” mark. This Panel finds the disputed domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE INDUSTRIES mark pursuant to Policy ¶4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of this allegation and then the burden shifts to Respondent to prove it does possess rights or legitimate interests in the <ashleyfurnitureindustriesinc.com> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”). The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c).
Respondent’s disputed domain name resolves to a website featuring links to third-party websites, including websites that compete with Complainant’s furniture business. Respondent likely receives “click-through” fees for this use of the disputed domain name. Such web sites can be easily established by a template. This Panel finds Respondent’s use of the <ashleyfurnitureindustriesinc.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
Furthermore, Complainant contends Respondent is not commonly known by the disputed domain name. The WHOIS information does not indicate Respondent is commonly known by the disputed domain name (because a nominee is the record owner for the domain name) and Complainant has not authorized Respondent to use the A ASHLEY FURNITURE INDUSTRIES mark in any manner. This Panel finds Respondent is not commonly known by the disputed domain name 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, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s disputed domain name resolves to a website offering links to competing third-party websites. The Panel finds this disrupts Complainant’s business and is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s confusingly similar <ashleyfurnitureindustriesinc.com> domain name resolves to a website featuring links to third-party websites of competing furniture businesses. The use of Complainant’s A ASHLEY FURNITURE INDUSTRIES mark in Respondent’s disputed domain name creates a likelihood of confusion among Internet users as to Complainant’s affiliation with the website resolving from Respondent’s disputed domain name. Additionally, Respondent presumably receives compensation in the form of “click-through” fees for its use of the disputed domain name. This Panel finds Respondent is attempting to profit from its use of the confusingly similar disputed domain name. The Panel finds Respondent’s actions constitute bad faith registration and use pursuant to Policy ¶4(b)(iv). See 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; see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Respondent has concealed its WHOIS information by having a
nominee act as the domain name owner.
While the Panel can imagine legitimate reasons to do this for a personal
web site, the Panel is hard-pressed to imagine a legitimate business reason to
conceal the contact information for a bona
fide business. In the absence of any
explanation, this fact alone suggests the domain name was registered and is
being used in bad faith.
The Panel finds Policy ¶4(a)(iii) 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 <ashleyfurnitureindustriesinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 28, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum