Ashley Furniture Industries, Inc. v. Webstarts
Claim Number: FA1010001354998
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Webstarts (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturerepair.com>, registered with TUCOWS, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2010; the National Arbitration Forum received payment on October 26, 2010.
On October 27, 2010, TUCOWS, INC. confirmed by e-mail addressed to the National Arbitration Forum that the <ashleyfurniturerepair.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 29, 2010, the Forum served upon Respondent the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@ashleyfurniturerepair.com. Also on October 29, 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 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant manufactures and sells furniture under its registered ASHLEY mark.
Complainant registered its ASHLEY trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879, issued June 12, 1990).
Respondent registered the disputed domain name on February 21, 2009.
The disputed domain name resolves to a website posting links to the websites of Complainant’s competitors in the furniture industry.
Respondent’s <ashleyfurniturerepair.com> domain name is confusingly similar to Complainant’s ASHELY mark.
Respondent is not commonly known by the <ashleyfurniturerepair.com> domain name, and Respondent is not authorized to use the ASHLEY mark.
Respondent does not have any rights to or legitimate interests in the domain name <ashleyfurniturerepair.com>.
Respondent registered and uses the disputed <ashleyfurniturerepair.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has registered the ASHLEY trademark with the USPTO. This is sufficient to establish Complainant’s rights in the mark and satisfies the requirements of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding that trademark registration with the USPTO was adequate to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <ashleyfurniturerepair.com> domain name is confusingly similar to Complainant’s ASHLEY mark. The domain name has incorporated Complainant’s mark in its entirety and simply added the descriptive terms “furniture” and “repair.” The addition of such descriptive terms to a registered mark in forming a domain name does not result in a unique domain name. This is especially the case where the descriptive terms are closely related to Complainant’s business. Likewise, Respondent’s addition to the domain name of the generic top-level domain (“gTLD”) “.com” is insufficient to remove the disputed domain name from the realm of confusing similarity vis-à-vis Complainant’s ASHLEY mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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 a complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark): further see Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel therefore concludes that Respondent’s disputed <ashleyfurniturerepair.com> domain name is confusingly similar to Complainant’s ASHLEY trademark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), the burden is, in the first instance, upon Complainant to prove prima facie that Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant has made out a prima facie showing in support of its allegations on this point, the burden shifts to Respondent to show that it nonetheless has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has made out a prima facie showing under this head of the Complaint, while Respondent, for its part, has failed to make a timely response to the allegations of the Complaint. We may therefore presume that Respondent lacks rights to or legitimate interests in the <ashleyfurniturerepair.com> domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.
However, we elect to examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has any rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by reflecting that Complainant asserts, without contradiction from Respondent, that Respondent is not commonly known by the <ashleyfurniturerepair.com> domain name, and that Respondent is not authorized to use the ASHLEY mark. Moreover, the pertinent WHOIS information for the contested domain name does not indicate that Respondent is commonly known by the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <ashleyfurniturerepair.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also observe that Complainant alleges, and Respondent does not deny, that Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, which consists of links to the websites of Complainant’s competitors in the furniture business. We may comfortably presume from the circumstances here presented that Respondent receives click-through fees in return for redirecting Internet traffic to these third-party websites. Respondent’s use of the contested domain name in this manner is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal website with hyperlinks to various third-party websites, some of which may be in direct competition with the business of 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the business of a complainant 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)).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent is using the disputed domain name and resolving website to post links to various third-party websites, most of which compete with Complainant in the manufacturing and sale of furniture. Respondent’s inclusion on the resolving website of hyperlinks to the websites of Complainant’s competitors disrupts Complainant’s business. Internet users interested in Complainant’s furniture products may thus be led to purchase products from Complainant’s competitors. Such a use constitutes evidence of bad faith registration and use of the subject domain name pursuant to 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004):
Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriat-ing Complainant’s mark to refer customers seeking Complainant to Com-plainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent uses the disputed domain name, which is confusingly similar to Complainant’s ASHLEY trademark, to divert Internet users through hyperlinks to Respondent’s website. Because of this redirection, Internet users are likely to become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the disputed domain name’s resolving website and posted hyperlinks. We presume that Respondent benefits from this confusion through the receipt of click-through fees from the visits of Internet users to the websites resolving from these sponsored links. Therefore, we conclude that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that a respondent’s use of a disputed domain name to advertise car dealerships that competed with a complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturerepair.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 3, 2010
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