Ashley Furniture Industries, Inc. v. ashley-furniture-store.com c/o abadi
Claim Number: FA0905001262150
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence
J. Maddenof Kostner, Koslo & Brovold LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ashley-furniture-store.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 11, 2009; the National Arbitration Forum received a hard copy of the Complaint May 12, 2009.
On May 12, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <ashley-furniture-store.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has 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 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 3, 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@ashley-furniture-store.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <ashley-furniture-store.com>, is confusingly similar to Complainant’s ASHLEY FURNITURE mark.
2. Respondent has no rights to or legitimate interests in the <ashley-furniture-store.com> domain name.
3. Respondent registered and used the <ashley-furniture-store.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., produces and retails furniture and furniture related accessories. Complainant owns a number of trademarks with the United States Patent and Trademark Office (“USPTO”) for the A ASHLEY FURNITURE family of marks (i.e. Reg. No. 1,604,686 issued July 3, 1990).
Respondent registered the <ashley-furniture-store.com> domain name January 21, 2007, some nineteen or more years after Complainant established rights in the mark contained within the disputed domain name. Respondent’s disputed domain name resolves to a website displaying third-party links in competition with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 Complainant established rights in the ASHLEY
FURNITURE mark pursuant to Policy ¶ 4(a)(i) through
registration of the mark with the USPTO.
See Miller Brewing
Complainant contends that Respondent’s <ashley-furniture-store.com> domain name is confusingly similar to Complainant’s
ASHLEY FURNITURE mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Respondent’s disputed
domain name contains Complainant’s ASHLEY FURNITURE mark, adds the generic term
“store,” adds hyphens between the terms of the domain name, and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that addition of a generic term with an obvious
relationship to a complainant’s business creates a confusing similarity between
the disputed domain name and the complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624
(Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term
“finance,” which described the complainant’s financial services business, as
well as a gTLD, did not sufficiently distinguish the respondent’s disputed
domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Dr. Ing. h.c. F. Porsche AG v.
Anderson, D2004-0312 (WIPO July 2, 2004) (finding the
<porschesales.com> domain name to be confusingly similar where the
respondent added the generic term “sales” to the complainant’s PORSCHE
mark). In addition, the Panel finds that
a disputed domain name that adds hyphens between the terms of a domain name
containing Complainant’s mark creates a confusing similarity between the disputed
domain name and the established mark. See Health Devices Corp. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks all rights and legitimate interests in the <ashley-furniture-store.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant made the required prima facie showing. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
When a Respondent fails to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, this Panel examines the evidence for applicable Policy ¶ 4(c) elements before making a final determination relative to Respondent’s rights and legitimate interests.
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register domain names using
the ASHLEY FURNITURE mark. Respondent’s WHOIS
information identifies Respondent as “ashley-furniture-store.com c/o abadi.” Although
Respondent appears to be commonly known by the disputed domain name from the
WHOIS information, the Panel finds that without affirmative evidence of
Respondent being commonly known by the disputed domain name, Respondent
lacks all rights and legitimate interests in the disputed domains name pursuant
to 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 City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
Respondent is using the <ashley-furniture-store.com>
domain name to display links advertising third-party websites, some of which
are in competition with Complainant. Such
use permits the Panel to make an inference that Respondent is using the
disputed domain name to earn click-through fees. The Panel finds that
Respondent has not made a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and
has not made a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Wells Fargo
& Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites 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) because the registrant presumably receives
compensation for each misdirected Internet user); see also 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 Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s registration and use of the <ashley-furniture-store.com> domain name to display links to Complainant’s competitors on the resolving website constitutes a disruption of Complainant’s business and supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s use of the <ashley-furniture-store.com> domain name to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s ASHLEY FURNITURE mark and by offering links to competing websites is further evidence of bad faith. The Panel finds that Respondent’s use permits an inference that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied the elements of ICANN 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 <ashley-furniture-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 22, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum