Ashley Furniture Industries, Inc. v. Andrew Bernstein
Claim Number: FA 1357757
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold, Wisconsin, USA. Respondent is Andrew Bernstein (“Respondent”), represented by Dale Hansen of The Law Offices of Dale Allen Hansen, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleydealers.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2010; the National Arbitration Forum received payment on November 11, 2010.
On November 11, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleydealers.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@ashleydealers.com. Also on November 12, 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.
A timely Response was received and determined to be complete on December 3, 2010.
An Additional Submission was received from Complainant on December 7, 2010.
On December 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <ashleydealers.com> domain name is confusingly similar to Complainant’s ASHLEY mark. The Complainant argues that the addition of the generic term “dealers” and the generic top-level domain “.com” to ASHLEY does not avoid likelihood of confusion between the ASHLEY trademark and the <ashleydealers.com> domain name.
Complainant contends that Respondent’s <ashleydealers.com> domain name formerly resolved to a commercial website that offered furniture for sale, including furniture not manufactured or distributed by Complainant. Complainant alleges that this use disrupted Complainant’s business.
The Complainant argues that Respondent has registered and used the <ashleydealers.com> domain name in bad faith by using Complainant’s mark without authorization to attract Complainant’s customers, to mislead them by suggesting an affiliation with Complainant, and to profit from their exposure to a competitor’s website.
Complainant contends that Respondent removed the prior content of the <ashleydealers.com> website after receiving correspondence from Complainant regarding the domain name dispute. Complainant asserts that Respondent’s change to the <ashleydealers.com> website constitutes evidence that Respondent did not have a valid business purpose for registering the disputed domain name.
B. Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Respondent argues that it is the sole shareholder and president of FurnitureDealer.net, Inc., a company that produces and hosts websites for various furniture manufacturers and retailers, including authorized/licensed retailers of Complainant’s furniture. Respondent asserts that it does not itself sell furniture. Respondent contends that it helps its customers develop and implement marketing plans to drive Internet users to the customers’ websites. Some of Respondent’s customers are authorized and licensed retailers of Complainant’s furniture. Respondent explains that the references to other manufacturers’ furniture on <ashleydealers.com> are because many authorized/licensed dealers of Complainant’s furniture also sell and promote furniture made by other companies.
Respondent alleges that it does not compete with Complainant, and that any commercial gain comes from fees paid by customers who are authorized/licensed dealers of Complainant’s furniture. Respondent asserts that it does not divert money from Complainant but rather helps produce sales for the authorized/licensed retailers of Complainant’s products, thereby resulting in a monetary benefit to Complainant. Respondent argues that his use of the <ashleydealers.com> domain name is consistent with Respondent’s rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent further argues that the only reason it deactivated the website subsequent to Complainant’s correspondence was because Respondent is very sensitive to copyright and domain-name issues and wished to deactivate the website until Complainant’s issue was resolved.
Respondent argues that it did not register the <ashleydealers.com> domain name in bad faith and has no intention of competing with Complainant or diverting money or business from Complainant. Respondent’s good faith is demonstrated by the business activities of Respondent’s company, FurnitureDealer.net, Inc., a company that implements marketing plans, and produces and hosts websites, for furniture manufacturers and retailers.
C. Additional Submissions
Complainant argues that Respondent cannot be authorized to use and register <ashleydealers.com> by virtue of any right granted by Respondent’s customers, who may be retailers of Complainant’s products.
This Panel finds:
1) Complainant is the owner of the ASHLEY trademark, which is the subject of Complainant’s United States registration (Reg. No. 1,600,879, issued June 12, 1990).
2) Respondent’s <ashleydealers.com> domain name formerly resolved to a commercial website designed to direct people to third party websites that offered furniture for sale, including products manufactured or distributed by competitors of Complainant.
3) Respondent received commercial gain from operating the <ashleydealers.com> website, the gain derived from payment by Respondent’s customers for directing visitors of <ashleydealers.com> to the customers’ websites.
4) The Respondent’s <ashleydealers.com> domain name now currently resolves to a deactivated website that is not in active use.
5) Respondent is not commonly known by the <ashleydealers.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Andrew Bernstein.”
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."
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 owns rights in the ASHLEY mark by virtue of its United States Patent and Trademark Office (“USPTO”) registration (Reg. No. 1,600,879, issued June 12, 1990). The Panel concludes that Complainant’s evidence of its registration with the USPTO sufficiently proves Complainant’s rights in the mark for the purposes 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 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).”).
Complainant argues that Respondent’s <ashleydealers.com> domain name is confusingly similar to Complainant’s ASHLEY mark because the disputed domain name merely combines Complainant’s mark with the generic term “dealers” and the generic top-level domain (“gTLD”) “.com.”
In this instance, neither the addition of the generic term “dealers” nor the top-level domain “.com” adequately removes the disputed domain name from the realm of confusing similarity with Complainant’s mark. “The addition of the generic word "dealer," "agent" or "agents" does not defeat a claim of confusing similarity.” General Motors Co. v. Rheaume, D2004-0664 (WIPO Nov. 4, 2004); see also Yamaha Motor Corp. USA v. Powers Motor Sports, D2007-0396 (WIPO May 5, 2007); Grohe AG v. grohedealer.com Private Registrant, FA 1355832 (Nat. Arb. Forum Dec. 1, 2010); Compaq Information Technologies Group, L.P. v. Waterlooplein Ltd, FA 109718 (Nat. Arb. Forum May 29, 2002); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a top-level domain to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel concludes that Respondent’s <ashleydealers.com> domain name is confusingly similar to Complainant’s ASHLEY mark according to Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show that it has rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The record is uncontested that Respondent is not commonly known by <ashleydealers.com> domain name. This Panel concludes that Complainant has presented a prima facie case with its argument that Respondent is not commonly known by <ashleydealers.com>.
The <ashleydealers.com> domain name formerly resolved to a website offering furniture for sale. According to Respondent, this website directed users who were searching for Ashley furniture to third party websites, i.e., the websites of Respondent’s customers who offer furniture for sale. These customers sell both furniture manufactured by Complainant, as well as furniture manufactured or distributed by competitors of Complainant.
Respondent alleges that its only commercial gain is from fees paid by its customers who are authorized/licensed dealers of Complainant’s furniture. Respondent asserts that it does not divert money from Complainant but actually helps produce sales for the authorized/licensed retailers of Complainant’s products, which thereby provides monetary benefit to Complainant.
In Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001), the Panel concluded that the use of a manufacturer's trademark as a domain name by an authorized dealer or reseller must satisfy four minimum conditions before it is regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy, the conditions being:
1) the respondent must actually be offering the goods or services at issue;
2) the respondent must use the site to sell only the trademarked goods;
3) the site itself must accurately disclose the respondent's relationship with the trademark owner; and
4) the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The Panel concludes that the <ashleydealers.com> website fails to satisfy at least the first three of these conditions. By Respondent’s description, the website does not directly offer Ashley products and no evidence has been presented to show the website included any disclaimer to avoid confusion with the ASHLEY mark. Furthermore, in contrast to Respondent’s assertion that the website is beneficial to the Complainant, it is possible that Respondent is using the trademark in a domain name to bait consumers and then switch them to other goods. The website was designed to attract visitors searching for Ashley products. If the visitors were already searching for Ashley products, it is unclear how Respondent increased sales for Complainant. In contrast, the website also directly linked to third parties, at least some of which offered competitors products. It is plausible that the website operated in a manner that increased the likelihood that sales would be diverted away from Complainant.
Even if Respondent’s authorized dealers own a license or implied right to use the ASHLEY trademark in a domain name, the Respondent has not proven that dealers have any authority to sublicense such rights to Respondent. See General Motors Co. v. Rheaume, D2004-0664 (WIPO Nov. 4, 2004).(“The fact that a GM dealer agreed to the use of www.gmagent.com and www.gmagents.com does not in any way legitimize any of the GM Domain Name registrations, as the Respondent did not receive the consent of the Complainants, nor was the dealer in a position to license what it was not permitted to license or what it did not own.”).
This Panel concludes that Respondent’s use is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also National Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
For the above reasons, the Panel concludes that Respondent does not have rights or legitimate interests in the <ashleydealers.com> domain name according to Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using Complainant’s mark without authorization to attract Complainant’s customers, to mislead them by suggesting an affiliation with Complainant, and to profit from their exposure to a competitor’s website.
Complainant further argues that Respondents disabling of the website indicates that Respondent did not have a valid business purpose in registering the domain name.
The Panel concludes that the design of the website, which directed customers searching for Ashley products to third party websites, and the business model, which derived economic gain from Respondent’s customers, are indicative of bad faith registration and use. See General Motors Co. v. Rheaume, D2004-0664 (WIPO Nov. 4, 2004) (“[U]sing the terms 'dealers' or 'agent' in association with a well known house mark, constitutes bad faith use for the purpose of attracting business for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement.”); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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).
For the above reasons, this Panel concludes that Respondent’s actions indicate bad faith registration and use according to 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 <ashleydealers.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: December 21, 2010
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