Ashley Furniture Industries, Inc. v. Private Whois Service
Claim Number: FA1009001345313
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden, of KOSTNER, KOSLO & BROVOLD LLC, Wisconsin, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurntiurehomestore.com>, registered with INTERNET.BS CORP.
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 September 7, 2010.
On September 8, 2010, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurntiurehomestore.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 September 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@ashleyfurntiurehomestore.com by e-mail. Also on September 10, 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 October 18, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurntiurehomestore.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 <ashleyfurntiurehomestore.com> domain name.
3. Respondent registered and used the <ashleyfurntiurehomestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., is a furniture retail corporation. Complainant hold multiple trademark registrations for its ASHLEY FURNITURE HOMESTORE mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,449,045 issued May 8, 2001).
Respondent, Private Whois Service, registered the <ashleyfurntiurehomestore.com> domain name on May 8, 2010. The disputed domain names resolves to a website which only features links to other websites including websites offering furniture products manufactured or distributed by 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.
Complainant contends it has established rights in the ASHLEY FURNITURE HOMESTORE mark. Previous panels have found that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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.”). Previous panels have also held that a complainant is not required to register a mark within the country a respondent resides in. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Thus, the Panel determines that Complainant has established rights in its ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <ashleyfurntiurehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark. The disputed domain name differs from Complainant’s mark only by the misspelling of the term “furniture” in Complainant’s mark, the deletion of spaces, and the addition of a generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of spaces fails to properly distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that the misspelling of the term “furniture” fails to properly distinguish the disputed domain name from the Complainant’s mark. See The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). The Panel finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s <ashleyfurntiurehomestore.com> is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant argues that Respondent lacks rights and legitimate interests in the <ashleyfurntiurehomestore.com> domain name. Previous panels have found that when a complainant makes a prima facie showing in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”). The Panel finds that Complainant has made out a prima facie case in support of its argument. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <ashleyfurntiurehomestore.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <ashleyfurntiurehomestore.com> domain name. Complainant alleges that it has not authorized or licensed Respondent to use its registered trademark in the domain name. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed name. The WHOIS information identifies Respondent as “Private Whois Service” which is not similar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <ashleyfurntiurehomestore.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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 uses the <ashleyfurntiurehomestore.com> domain name to redirect Internet users to a “parked” website which only contains links to other websites, including those offering furniture products manufactured or distributed by competitors of the Complainant. Respondent likely receives compensation, either directly or indirectly in the form of reduced fees for domain name hosting services, by allowing the domain name to be used as a “parked” website. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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 finds that Complainant has satisfied Policy ¶4(a)(ii).
Respondent’s <ashleyfurntiurehomestore.com> domain name redirects Internet users to a website which contains links to other websites, including some in direct competition with Complainant’s furniture business. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because it diverts Internet users who are looking for products offered by Complainant to other websites that offers products of Complainant’s competitors. The Panel finds that Respondent’s use of the <ashleyfurntiurehomestore.com> domain name does disrupt Complainant’s furniture business, which constitutes bad faith registration and use under Policy ¶ 4 (b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panels infers that Respondent receives compensation, either directly or indirectly in the form of reduced fees for domain name hosting services, by allowing the domain name to be used a “parked” website. Internet users searching for Complainant may find Respondent’s website because of Respondent’s confusingly similar disputed domain name. Internet users may become confused as to Complainant’s sponsorship and affiliation with the disputed domain name, redirecting website, and featured links. Respondent attempts to profit off this confusion by allowing the domain name to be used as a “parked website.” The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurntiurehomestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 20, 2010
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