Ashley Furniture Industries, Inc. v. Konstantinos Zournas
Claim Number: FA0811001235340
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 <ashley.biz>, registered with Moniker Online Services, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., 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 November 21, 2008, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <ashley.biz> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, 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 December 1, 2008, NAF received from Complainant a Complaint, amended as to the spelling of Respondent’s address in the header of the Complaint. On December 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 22, 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.
A timely Response was received and determined to be complete on December 22, 2008.
Complainant submitted an Additional Submission on January 5, 2009, which was technically deficient, as it was untimely. However, Panel has ruled to accept the Additional Submission as being in sufficient compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission on January 10, 2009, which was also accepted by the Panel as timely.
On January 13, 2009, Complainant submitted a second Additional Submission. The Panel has ruled to deem this Submission deficient, as only one Additional Submission
may be included in evidence.
The Panel reviewed Respondent’s Second Additional Submission on January 19, 2009, and considered same to be deficient, as it is not in compliance with Supplemental Rule 7(e), which only permits one Additional Submission.
Also on January 13, 2009, the National Arbitration Forum, due to exceptional circumstances, issued an Order Extending Time for Rendering Decision to January 16, 2009.
On December 30, 2008, , pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain name <ashley.biz> be transferred from Respondent to Complainant.
A. Complainant alleges as follows:
Complainant states in its Complaint that the domain name is identical to the Complainant’s registered mark ASHLEY.
Complainant alleges, that to the best of its knowledge, that the Respondent has not used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Accessing the domain name resolves to a “parked” website that contains only links to other websites, including websites that offer products from competitors of the Complainant, such as La-Z-Boy.
To the best of the Complainant’s knowledge, the Respondent is not known by the domain name. A search of the United States Patent and Trademark Office’s online database reveals no registrations or pending applications for the trademark “Ashley” by the Respondent.
A Google search for “Ashley” and the Respondent’s name resulted in no relevant matches.
Complainant lastly alleges that the (Complainant?) Respondent is not making a legitimate use of the domain name but is using it only to link to other websites, including links to websites offering products from competitors of the Complainant. As a result, the Respondent is using the domain name to mislead consumers from the Complainant to its competitors.
Complainant states, on information and belief, that the Respondent registered the domain name in order to prevent the Complainant from doing so. The Respondent is not known by the domain name. A search of domain name disputes on the National Arbitration Forum reveals that the Respondent has been named as a respondent in four (4) other cases. In three (3) of those cases, the domain name was ordered transferred.
As noted above, accessing the domain name resolves to a website that contains only links to other websites, including websites offering products from competitors of Complainant. Presumably the Respondent is receiving consideration for this use of the domain name. This use of the domain name creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, endorsement or association of products of Complainant’s competitors accessed through the Respondent’s domain name.
With regards to whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Respondent stated that, “Respondent will not address Policy, para. 4(a)(i) as whether a domain name is identical or confusingly similar to a mark is usually proven with submission of a trademark.”
With regards to whether the Respondent has rights or legitimate interests in respect of the domain name, Respondent states as follows:
The disputed domain name <ashley.biz> is composed solely of the common name Ashley , which is both a first and a last name, used for both males and females, in both English and non-English speaking countries. Respondent cites Annex 1 of the Ashley name ranking at the US Census, in support of his contentions.
Respondent discusses the Dictionary.com meaning of Ashley (See Annex 2), the prevalence of babies named Ashley (See Annex 3), and the Wikipedia.org website which states that “the name “Ashley” is of English origin, from a place name and surname that meant "from the ash tree field/meadow." (See Annex 4).
Respondent includes Annex 5 showing the website Searchforancestors.com, which shows listings for the last name Ashley. Ashley is the name of many people in the world (per Annex 6). Respondent cites that innumerable past Panels have found that last names are strictly protected under UDRP, and cites many cases for this theory in Annex 7.
Respondent states that Ashley is a common geographic indicator, per Annex 8 and
Annex 9. Respondent cites cases for the proposition that geographical indications are not included within the scope of UDRP.
Respondent states that the word/name “Ashley” is subject to substantial third party use unaffiliated with the Complainant, such as for automobiles and a typeface and medical terminology. See Annex 10. Respondent states that Ashley is a name used in many websites and domains without any particular connotation with the Complainant that relate to commercial, non-commercial, geographical, or educational.
Respondent states that it acquired <ashley.biz> because it incorporated a first or
last name or place name, which it believed was valuable as
such. Respondent is a
based web developer, who also develops themed search portals. Respondent uses
<ashley.biz> in connection with third party paid search advertising, and it is used as
search portal. <ashley.biz> is used as an ancestry portal providing links to various
genealogy websites. Complainant is correct that Respondent derives revenue from
directing web traffic from the portal site, as is the common practice among portal sites
generally. Respondent states that such use is a bona fide offering of goods or services.
<ashley.biz> also features a search function, as shown in Annex 18.
Respondent registers domain names that become available for registration through
expiration. The domain <ashley.biz> was registered because it consists of the first or last
name. Ashley. In addition, as Ashley is the name of many places, it can be used as a
website in conjunction with Respondent’s website. Regions.info. that is under
development. Respondent registered the domain <ashley.biz> on June 11, 2004.
Respondent states that it has never been “commonly known by the domain name”, nor has he acquired a trademark, but that that does not mean that he doesn’t have legitimate interests in the domain. Respondent purchased the domain name in June of 2004, before it received notice of the dispute. Complainant did not institute proceeding until December of 2008. This delay demonstrates that Complainant did not believe that its claims were truly warranted.
With regards to whether the domain name <ashley.biz> has been registered and used in bad faith, Respondent alleges as follows. Respondent registered the domain name on June 11, 2004, because the domain name was expired and because it incorporates a common first name or a last name and a place name. This is not evidence of bad faith, unless the selection of the domain and the manner in which it issued are related to the willful exploitation of another’s trademark.
Respondent states that any value of the disputed domain derives from the extensive worldwide third party use of the name Ashley, rather than from any alleged fame of Complainant’s mark.
Respondent is not a
resident of the
(based upon Annex 25, listing Complainant’s store locations and a lack of evidence
submitted by Complainant) that Complainant does not have a store in
that Complainant has no enforceable trademark rights in
The <ashley.biz> homepage is a generic directory/portal that contains links to genealogy websites and a search function provided by Sedo.com that is a partner of Google. This homepage wasn’t used to divert Internet users from looking at the Complainant’s website. The homepage is used to serve genealogy links until Respondent decides if the geographical website <ashley.biz> will be designed and implemented. Respondent alleges that Complaint’s trademark does not extend to any of the services offered at the website, so no visitor would be mislead. Respondent states that it has engaged in no intentional behavior to divert the Complainant’s customers, to pass itself off as the Complainant or to derive commercial benefit by confusing users seeking Complainant’s website. The sole fact of providing links through a generic directory does not constitute bad faith. Respondent states that he is not a competitor of the Complainant and clearly did not register the domain <ashley.biz> in order to disrupt the business of Complainant.
Respondent alleges that it is a website developer who has registered a portfolio of domains incorporating common words, generic and short terms, useful phrases, first and last names and geographical terms such as <blog.info>, <buy.info> and <fees.info>. Respondent is a domainer in the sense that he has a substantial portfolio, but considering the volume of domain names in Respondent’s possession, it cannot be established that Respondent has established a pattern of conduct of registering infringing domain names. Respondent states that accordingly, for all of the above reasons, that Complainant has failed to meet its burden of bad faith registration.
alleges that Complainant engaged in reverse domain name hijacking, in that
Complainant filed a complaint not only that was without merit, but also was
that frivolous. Respondent states that Complainant’s trademark was not known
C. Additional Submissions
Complainant, in its Additional Submission, alleges as follows:
The Complainant does not contend that it has the exclusive right to the use of the term “Ashley,” only the exclusive right to the use of the term with regards to furniture. This right includes the right to prevent others from using the term with regards to furniture.
Contrary to Respondent’s
contentions, Complainant alleges that the Respondent had constructive notice of
the Complainant’s ownership of the trademark ASHLEY based on the Complainant’s
registration of that trademark in
Complainant also states that the
Complainant has registered the trademark “Ashley” in the European countries of
Complainant states that the fact that Respondent had constructive notice of the Greek trademark registration is evidence that Respondent registered the disputed domain name in bad faith.
Further evidence of Respondent’s bad faith is the fact that the domain name registrant listed a fictitious business name on its registration. Complainant’s proof that the business name is fictitious is the fact that Complaint’s correspondence directed to Respondent was returned as undeliverable because the domain name owner was not known, in accordance with the tracking detail outlined on Complainant’s Exhibit D. With regards to Respondent engaging in bad faith usage, Complainant contends that an archived version of the Respondent’s website, located at the domain name is set forth in its Exhibit E. This Exhibit shows that the result of entering the domain name is that the domain resolves to a website that included only links to other websites offering furniture, including furniture offered by the Complainant’s competitors, including La-Z-Boy. This archived version of the website was active as of September 26, 2008.
Complainant continues in its contentions, stating, while it is true that the Respondent’s website now is used as a ‘click through’ site for genealogical research sites, entering the term furniture in the search function for that site produces a list of other websites through which the viewer can locate furniture offered by other manufacturers or distributors, including competitors of the Complainant (see Exhibit G).
Complainant’s response to Respondents reverse domain name hijacking allegation is as follows:
The Complainant wrote two letters (September 22, 2008 and October 10, 2008) asking the Respondent to contact the Complainant to discuss the possible transfer of the name to the Complainant. Even though these letters were returned as undeliverable, the Complainant sent copies of its earlier letters via an e-mail message to the Respondent on October 20, 2008. This e-mail message was not returned as undeliverable and the Respondent did not respond to the e-mail. If the Respondent truly operated a legitimate business of developing and selling domain names, the Respondent would either have listed its business name correctly on its domain name registration or responded to the Complainant’s e-mail message.
With regards to whether Complainant
has rights to the name Ashley, Respondent states that Complainant’s Exhibit A
in its Additional Submission represents an application requesting a foreign
Respondent states that
Complainant’s Exhibit B consists solely of arbitrary numbers, rather than
publicly available figures showing substantial sales in
Respondent alleges that he did not have constructive knowledge of the Complainant,
merely because courier mail was not deliverable to his Whois address. Further
Respondent is not a fictitious person, but in fact owns a passport, which can be produced
to Panel, upon request.
Respondent further replies that disputed domain name was registered in good faith, as it comprises a common first or last name, or geographic term. Further, a registration in good faith cannot later be converted into a registration in bad faith due to subsequent conduct.
Respondent questions as to why archived versions of the <ashley.biz> website were not produced at the inception and speculates that they were manufactured by the Complainant. The dates on Complainant’s Exhibits E & F, indicating the results of the search for furniture as a result of using the search function, was respectively January 5, 2009 and December 31, 2008, rather than the archived date of September 26, 2008.
Complainant is complaining that the website <ashley.biz> displays advertisements for furniture. This is only after the Complainant actively entered the word furniture in the search function, hat yielded the results he is claiming. Respondent asserts that other Panels have found that this use of the search function by a Complainant is not evidence of bad faith of the Respondent. The “hard links” at the tops and bottoms of the website always stay the same, and the links are always connected to various categories and the internet in general.
In accordance with Exhibit 4, the General Manager of Sedo states in a e-mail on the 26th of November that the master keyword used for the domain name <ashley.biz> was “Ashley” and says that this keyword was set on June 21, 2004. This proves that the keyword was not set to furniture at any time in the four (years?) following the domain name registration.
Complainant has not alleged any confusion by their clients entering the domain name <ashley.biz> looking for the Complainant. Respondent avers that no one can get confused as the official website of the Complainant is located at <ashleyfurniture.com>.
Respondent lastly states that Complainant made no arguments as to why this is not a reverse domain name hi-jacking attempt by the Complainant. Complainant’s referred to an October 20, 2008 e-mail that was not received by Respondent, and now that Respondent has received notice of the Complaint, Respondent is making an appropriate Response. Respondent points the Panel to a case that Respondent alleges closely
matches the present case, that is, HSM Argentina S.A. v. Vertical Axis, Inc., D2007-0017 (WIPO May 1, 2007).
(1) the domain name <ashley.biz> registered by the Respondent is identical or confusingly similar to the trademark ASHLEY, a trademark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name <ashley.biz>; and
(3) the domain name <ashley.biz> has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent’s <ashley.biz> domain name contains the ASHLEY mark in its entirety along with the generic top-level domain (“gTLD”) “.biz.” The Panel determines that the addition of a gTLD is irrelevant under a Policy ¶ 4(a)(i) analysis, and therefore concludes pursuant to this element of the Policy that Respondent’s <ashley.biz> domain name is identical to Complainant’s ASHLEY mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Both parties note
that Respondent’s <ashley.biz>
domain name resolves to a parked website displaying various hyperlinks, some of
which promote Complainant’s competitors.
Respondent states that this website is hosted by Sedo. Complainant contends, and Respondent
acknowledges, that Respondent receives click-through fees for each redirected
Internet user. The Panel therefore concludes
that Respondent’s use of the <ashley.biz>
domain name constitutes neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Complainant has submitted evidence that Respondent has been ordered by three previous UDRP Panels to transfer infringing domain names to the respective complainants in those cases. The Panel finds that this demonstrates Respondent’s pattern of bad faith. registration and use pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant has submitted credible evidence (See Exhibit E in Complainant’s Additional Submission) that Respondent’s use of the <ashley.biz> domain name is likely to disrupt Complainant’s business because of the competing hyperlinks posted on the resolving website. This method of competition merits a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry); 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 the respondent used the disputed domain name to advertise goods and services of the complainant’s competitors, thereby disrupting the complainant’s business).
Panel has ruled,
that based upon registration of the trademark Ashley in
Complainant has submitted credible evidence that Respondent’s use of the <ashley.biz> domain name is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of the competing products advertised by the hyperlinks on the resolving website. The influential evidence was Complainant’s Exhibit E, in its Additional Submission, consisting of an archived page of Respondent’s website <ashley.biz> which not only indicated that the domain may be for sale by owner, but which also listed “sponsored listings” of competitors, such as Macys.com/Furniture; JCPenney.com and Target.com. This archived version of the website, which was active as of September 26, 2008, shows that the domain name was in fact, being used to provide links to furniture websites offering furniture products for sale by competitors of the Complainant, including Martha Stewart Furniture. These sponsored listings are evidence of likely confusion, which leads the Panel to conclude that Respondent registered and is using the <ashley.biz> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
The Panel finds that the doctrine of laches is not relevant to its consideration of the instant claim. Therefore, the Panel has chosen not to consider the doctrine of laches when it reached its determination in this proceeding. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defence of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”).
Reverse Domain Name Hijacking
Because the Panel has found that Complainant has satisfied Policy ¶ 4(a)(i), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Even if Panel had not satisfied its burden under the Policy, a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim, is not required See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <ashley.biz> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq.,
Dated: January 20, 2009
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