national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. jacky jacky

Claim Number: FA1009001349241

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden, of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is jacky jacky (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleystorefurniture.com>, registered with ENOM, INC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2010.

 

On September 29, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ashleystorefurniture.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 October 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@ashleystorefurniture.com by e-mail.  Also on October 1, 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 November 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ashleystorefurniture.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 <ashleystorefurniture.com> domain name.

 

3.      Respondent registered and used the <ashleystorefurniture.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ashley Furniture Industries, Inc., holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY FURNITURE HOMESTORE mark (e.g., Reg. No. 2,680,466 issued January 28, 2003).  Complainant uses the mark in connection with retail store services in the field of furniture.

 

Respondent registered the <ashleystorefurniture.com> domain name on March 20, 2010.  The disputed domain name resolves to a website that offers for sale counterfeit versions of Complainant’s goods.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the ASHLEY FURNITURE HOMESTORE mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,680,466 issued January 28, 2003).  The Panel finds these registrations sufficiently prove Complainant’s rights in the ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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.”).  The Panel also concludes it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides.  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).

 

Complainant avers the <ashleystorefurniture.com> domain name is confusingly similar to its ASHLEY FURNITURE HOMESTORE mark.  Respondent eliminates the “home” portion of “homestore” in the third term in Complainant’s mark.  Respondent also inverts the order of the terms so that “furniture” is the third term in the domain name compared to the second term in Complainant’s mark.  Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name.  The Panel finds these slight modifications do not sufficiently distinguish Respondent’s domain name from Complainant’s mark.  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also 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.”).  Therefore, the Panel concludes Respondent’s <ashleystorefurniture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <ashleystorefurniture.com> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests.  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 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.”).  Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant alleges it has not authorized or licensed Respondent to use its ASHLEY FURNITURE HOMESTORE mark in a domain name.  Furthermore, the WHOIS information lists “jacky jacky” as the registrant of the disputed domain name, which the Panel finds is not similar to the <ashleystorefurniture.com> domain name.  Without evidence to the contrary, the Panel finds Complainant’s allegations combined with the WHOIS registrant information suggests that Respondent is not commonly known by the <ashleystorefurniture.com> domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Complainant contends the <ashleystorefurniture.com> domain name resolves to a website that offers furniture for sale.  Complainant submits screen shots of the website resolving from the disputed domain name.  These screen shots show a website that displays images of furniture next to captions like “Rafferty Sofa Table by Ashley Furniture” and “Brookfield Round End Table By Ashley Furniture.” In addition, the resolving website contains text that reads “Lowest Price On Ashley Store Furniture: Best Ashley Store Furniture For Sale.”  The Panel finds that Respondent uses the disputed domain name in an attempt to profit from the sale of counterfeit versions of Complainant’s goods.  Moreover, the Panel finds Respondent is attempting to pass itself off as Complainant.  Therefore, the Panel concludes Respondent does not use the <ashleystorefurniture.com> domain name for 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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).


The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds Respondent’s confusingly similar domain name resolves to a website that offers for sale counterfeit versions of Complainant’s goods.  As a result, the Panel finds that the resolving website competes with Complainant’s business.  Therefore, the Panel finds the <ashleystorefurniture.com> domain name disrupts Complainant’s business and that this behavior amounts to registration and use in bad faith 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 Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).

 

As previously discussed, Respondent attempts to use the <ashleystorefurniture.com> domain name to profit from the sale of counterfeit versions of Complainants’ goods.  Moreover, the <ashleystorefurniture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark.  Consequently, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site.  Therefore, the Panel determines Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); 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)).

 

Finally, the Panel concludes that Respondent’s attempt to pass itself off as Complainant supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ashleystorefurniture.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  November 12, 2010

 

National Arbitration Forum

 

 

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