Ashley Furniture Industries, Inc. v. Versata Software, Inc. c/o Versata Hostmaster
Claim Number: FA0904001259286
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 <ashleycompanies.com>, registered with Red Register, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2009.
On April 27, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleycompanies.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. has verified that Respondent is bound by the Red Register, 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 May 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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@ashleycompanies.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <ashleycompanies.com> domain name is confusingly similar to Complainant’s THE ASHLEY COMPANIES mark.
2. Respondent does not have any rights or legitimate interests in the <ashleycompanies.com> domain name.
3. Respondent registered and used the <ashleycompanies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., is the owner of the trademark THE ASHLEY COMPANIES, which was registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,903,578, issued July 4, 1995). Complainant uses THE ASHLEY COMPANIES mark in conjunction with the sale and marketing of furniture.
Respondent registered the disputed domain name on December 8, 2004. Respondent is using the <ashleycompanies.com> domain name to resolve to a website offering sponsored click-through links that further resolve to various commercial websites, including those of 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 since Complainant registered its THE
ASHLEY COMPANIES mark with the USPTO, it has established sufficient rights in
the mark to satisfy Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA
652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb. Forum
Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a
complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <ashleycompanies.com> domain name is confusingly similar to THE ASHLEY COMPANIES mark. Complainant argues that the disputed domain name consists of the dominant features of Complainant’s mark, with the exception of the omitted word “the,” and with the addition of the generic top-level domain name “.com.” The Panel concludes that the deletion of the word “the” fails to alleviate the confusing similarity between Complainant’s THE ASHLEY COMPANIES mark and Respondent’s <ashleycompanies.com> domain name. See Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"). Complainant further alleges that the addition of the generic top-level domain name “.com” is irrelevant for a Policy ¶ 4(a)(i) analysis. The Panel concludes that the affixation of a generic top-level domain name is insufficient to adequately distinguish the disputed domain name from Complainant’s THE ASHLEY COMPANIES mark. See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <ashleycompanies.com> domain name is confusingly similar to Complainant’s THE ASHLEY COMPANIES mark.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or legitimate interests in the <ashleycompanies.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must first make a prima facie case to support this allegation. Once Complainant satisfies this burden of production, the burden shifts to Respondent to bring themselves within the purview of Policy ¶ 4(c) by establishing rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)) In this case, Respondent has failed to respond to the Complaint. The Panel may conclude from this failure to respond that Respondent lacks any rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Complainant has presented a prima facie case and the Panel now chooses to consider whether an evaluation of all the evidence produces any rights or legitimate interests for Respondent in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not authorized to use
Complainant’s THE ASHLEY COMPANIES mark and therefore has no rights or
legitimate interests in the <ashleycompanies.com> domain
name. Complainant further alleges that
Respondent is not commonly known by the <ashleycompanies.com>
domain name. The WHOIS information lists
Respondent as “Versata Software, Inc. c/o Versata Hostmaster.” The Panel finds that there is no evidence in
the record to suggest that Complainant is commonly known by the disputed domain
name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant further alleges that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is using the disputed domain name solely to divert Internet users. The <ashleycompanies.com> domain name resolves to a parked website displaying click-through links to various commercial websites, including those of Complainant’s competitors. The Panel finds that this does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel may presume that Respondent is earning click-through fees based on such use. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s presentation of
competitive click-through links to Internet users diverted to Respondent’s
website via the disputed domain name evidences Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also
Complainant also asserts that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). Respondent is presumably generating revenue from the disputed domain name based on the click-through fees. The Panel therefore concludes that Respondent is profiting by taking advantage of the confusing similarity between Complainant’s THE ASHLEY COMPANIES mark and the disputed domain name. Such use, attracting Internet users to the disputed domain name for commercial gain, constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleycompanies.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 9, 2009
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