Ashley
Furniture Industries, Inc. v.
Claim Number: FA1008001338917
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 <ashleyfurniturewholesale.com> and <millenniumashleyfurniture.com>, registered with 1 & 1 INTERNET AG.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010.
On August 5, 2010, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturewholesale.com> and <millenniumashleyfurniture.com> domain names are registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the names. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 August 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ashleyfurniturewholesale.com and postmaster@millenniumashleyfurniture.com by e-mail. Also on August 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurniturewholesale.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark.
Respondent’s <millenniumashleyfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE and MILLENIUM marks.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturewholesale.com> and <millenniumashleyfurniture.com> domain names.
3. Respondent registered and used the <ashleyfurniturewholesale.com> and <millenniumashleyfurniture.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., holds multiple trademark registrations for its ASHLEY family of marks with the United States Patent and Trademark Office (“USPTO”):
ASHLEY 1,600,879 issued June 12, 1990;
ASHLEY FURNITURE 2,894,665 issued October 19, 2004;
ASHLEY FURNITURE
INDUSTRIES 1,604,686 issued July 3, 1990;
MILLENNIUM 1,721,104 issued September 29, 1992.
Complainant uses these marks in connection with furniture and retail store services in the field of furniture.
Respondent, Cripple Creek Roadhouse Grill c/o Michael Dills, registered the <millenniumashleyfurniture.com> domain name on April 20, 2007 and the <ashleyfurniturewholesale.com> domain name on October 17, 2008. The disputed domain names redirects Internet users to a website which has as its heading <carolinafurniturewholesale.com> and includes links to other websites that offer furniture products manufactured or distributed by competitors of 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."
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 asserts rights in its ASHLEY family of marks based on its holding of trademark registrations with the USPTO:
ASHLEY 1,600,879 issued June 12, 1990;
ASHLEY FURNITURE 2,894,665 issued October 19, 2004;
ASHLEY FURNITURE
INDUSTRIES 1,604,686 issued July 3, 1990;
MILLENNIUM 1,721,104 issued September 29, 1992.
The Panel finds that Complainant’s registrations of its marks with the USPTO is sufficient evidence of Complainant’s rights in the mark for the purpose of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that Respondent’s <ashleyfurniturewholesale.com>
domain name is confusingly similar
to Complainant’s ASHLEY FURNITURE mark. Respondent’s
disputed domain name contains Complainant’s entire mark, eliminates the spaces
between the terms, adds the generic term “wholesale,” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the addition of a generic term does not distinguish a disputed domain name
from a mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of
the generic term “collection” to Complainant’s HARRY POTTER mark failed to
distinguish the domain name from the mark); see
also Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end). Additionally, the Panel finds that the removal
of spaces and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis as spaces are impermissible in, and a TLD is a
required element of, every domain name. See Bond & Co. Jewelers, Inc. v.
Complainant also
asserts that Respondent’s <millenniumashleyfurniture.com>
domain name is confusingly similar to Complainant’s MILLENNIUM and ASHLEY
FURNITURE marks. Respondent’s disputed
domain name merely combines both marks, deletes the space between the terms in
Complainant’s ASHLEY FURNITURE mark, and adds the gTLD “.com.” The Panel finds that the combination of two
marks creates a confusing similarity for the purposes of Policy ¶ 4(a)(i). See Nintendo
of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where respondent combined the complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name). The Panel also finds that the removal of a
space and the addition of a gTLD do not distinguish a disputed domain name from
mark. See Bond & Co. Jewelers,
Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); 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).
Nevertheless, the Panel will examine the record to determine if Respondent
has rights or legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by
the disputed domain names. The WHOIS
information lists the registrant of the disputed domain names as “Cripple Creek
Roadhouse Grill c/o Michael Dills,” which the Panel finds is not similar to the
disputed domain names. Without evidence
in the record to the contrary, the Panel finds that Respondent is not commonly
known by the disputed domain names pursuant to 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).
Respondent’s <millenniumashleyfurniture.com> domain name was registered on April 20, 2007 and Respondent’s <ashleyfurniturewholesale.com> domain name was registered on October 17, 2008. The disputed domain names redirect Internet users to a website which has as its heading <carolinafurniturewholesale.com> and includes links to other websites that offer furniture products manufactured or distributed by competitors of Complainant. The Panel finds that Respondent’s use of the disputed domain names to redirect Internet users who may be seeking Complainant’s goods and services to a competing website 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and use of
the <ashleyfurniturewholesale.com> and <millenniumashleyfurniture.com> domain names to
attract Complainant’s potential customers and redirect them to a competing
website constitutes a disruption of Complainant’s business and is evidence of
bad faith registration and use under 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 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).”).
Respondent’s use of the confusingly similar disputed domain names in order to profit by intentionally attracting Internet users to a website by creating a strong likelihood of confusion with Complainant’s ASHLEY FURNITURE and MILLENNIUM marks is further evidence of bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent likely profits from the redirection of these Internet users. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of 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, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that 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 <ashleyfurniturewholesale.com> and <millenniumashleyfurniture.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 16, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum