Ashley Furniture Industries, Inc. v. Satoshi Shimoshita
Claim Number: FA0812001238993
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 <ashleyfurniturestores.com>, registered with Enom, Inc.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2008.
On December 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturestores.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 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@ashleyfurniturestores.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January13, 2009 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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:
1. Respondent’s <ashleyfurniturestores.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturestores.com> domain name.
3. Respondent registered and used the <ashleyfurniturestores.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates in the retail furniture industry. Complainant promotes and sells its products under the ASHLEY FURNITURE HOMESTORE mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on January 28, 2003 (Reg. No. 2,680,466). Complainant also markets and sells its furniture products under the ASHLEY FURNITURE HOMESTORE mark in at least five countries around the world.
Respondent registered the <ashleyfurniturestores.com> domain name on November 27, 2005. The disputed domain name resolves to a website that contains links to third-party websites offering the products of both Complainant and Complainant’s competitors.
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.
The Panel finds that Complainant has established rights in
the ASHLEY FURNITURE HOMESTORE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”); see
also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154
(WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of
paragraph 4(a)(i) of the Policy whether the
complainant’s mark is registered in a country other than that of the
respondent’s place of business).
Complainant contends that
Respondent’s <ashleyfurniturestores.com> domain name is confusingly similar to its ASHLEY FURNITURE
HOMESTORE mark. The <ashleyfurniturestores.com> domain name differs from Complainant’s mark in three ways:
(1) the spaces between the words have been removed; (2) the term “HOMESTORE”
has been replaced with the term “stores;” and (3) the generic top-level domain
(“gTLD”) “.com” has been added. Removing
spaces from a mark does not sufficiently distinguish a domain name from an
incorporated mark for the purposes of Policy ¶ 4(a)(i). The term “stores” is virtually a synonym of
“HOMESTORES,” the term it replaced, and at the very least is a generic
term. Neither synonyms nor generic terms
render a domain name dissimilar to a mark.
Moreover, the addition of a gTLD does not reduce the likelihood of
confusion between the domain name and the mark, because every domain name must
contain a top-level domain. Therefore,
because the changes made to the disputed domain name neither minimize nor
eliminate the likelihood of confusion between Complainant’s mark and the
disputed domain name, the Panel finds that Respondent’s disputed domain name is
not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v.
Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that,
despite the removal of space between the words of the mark, the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark); see also Am. Eagle Outfitters, Inc. v. Admin, FA
473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark); 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.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the <ashleyfurniturestores.com> domain name nor has it ever
been the owner or licensee of the ASHLEY FURNITURE
HOMESTORE mark. The WHOIS record
for the disputed domain name lists Respondent as “Satoshi Shimoshita.” Respondent has failed to show any evidence
contrary to Complainant’s contentions, and so, in light of the evidence
presented, the Panel finds that Respondent is not commonly known by the <ashleyfurniturestores.com>
domain name pursuant
to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see
also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent maintains a website at the <ashleyfurniturestores.com> domain name that contains links to websites directly competing with Complainant’s business. Incorporating a mark into a domain name with the purpose of diverting Internet users to competing commercial sites is 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site) Therefore, the Panel finds that Respondent’s use of the <ashleyfurniturestores.com> domain name is 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet
customers from Complainant’s website to Respondent’s website through the
confusion caused by the similarity between the ASHLEY FURNITURE HOMESTORE mark
and the <ashleyfurniturestores.com> domain name. Complainant also contends that Respondent
intended to disrupt Complainant’s business by diverting confused customers to
Complainant’s competitors. Because the
Panel finds that Respondent’s use of the disputed domain name disrupts
Complainant’s business, the Panel also finds that this is evidence of
Respondent’s registration and use of the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003)
(“Respondent registered a domain name confusingly similar to Complainant's mark
to divert Internet users to a competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant also contends that Respondent financially benefits because of the diversion of Internet users to Complainant’s competitors, through the click-through fees that third-party websites pay to Respondent whenever Internet users click on the links contained on Respondent’s website. The Panel finds this resulting likelihood of confusion for Respondent’s own commercial gain to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <ashleyfurniturestores.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: January 26, 2009
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