Ashley Furniture Industries, Inc. v. Ashley Furniture / L Gappa
Claim Number: FA1101001366187
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Ashley Furniture / L Gappa (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleefurniture.com>, registered with ENOM, 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 January 5, 2011; the National Arbitration Forum received payment on January 6, 2011.
On January 5, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ashleefurniture.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 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@ashleefurniture.com. Also on January 11, 2011, 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 February 2, 2011, 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 uses the ASHLEY FURNITURE service mark in connection with the marketing of retail furniture store services.
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY FURNITURE mark (Reg. No. 2,894,665, issued October 19, 2004).
Complainant has not authorized Respondent to use its ASHLEY FURNITURE service mark in a domain name.
Respondent registered the <ashleefurniture.com> domain name on November 13, 2005.
The disputed domain name resolves to a website that provides hyperlinks to third-party websites, including websites of Complainant’s commercial competitors as well as websites that are unrelated to Complainant.
Respondent’s <ashleefurniture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark.
Respondent does not have any rights to or legitimate interests in the domain name <ashleefurniture.com>.
Respondent registered and uses the disputed <ashleefurniture.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 rights in the ASHLEY FURNITURE service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See, for example, Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO. See also
Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a Complainant’s national trademark registration established its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <ashleefurniture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark. In forming the contested domain name, Respondent merely replaces the letter “y” in complainant’s mark with the letter “e” and attaches the generic top-level domain (“gTLD”) “.com”. These slight alterations do not avoid a finding of confusing similarity with the competing mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i” from the mark in forming the contested domain); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the domain name merely replaced the letter “i” in the mark with the letter “e”); further see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Thus the Panel determines that Respondent’s <ashleefurniture.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE service mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights to and legitimate interests in the <ashleefurniture.com> domain name. The burden then shifts to Respondent to prove that it has such rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
We may view Respondent’s failure to submit a Response as evidence that Respondent lacks any such rights or legitimate interests. 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.
Nonetheless, we will examine the record before us, 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 rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny that Complainant has not authorized Respondent to use its ASHLEY FURNITURE service mark in a domain name. Moreover, the pertinent WHOIS information lists the registrant of the <ashleefurniture.com> domain name as “Ashley Furniture / L Gappa”, which is not the same as the subject domain name. On this record, we must conclude that Respondent is not commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not commonly known by the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in the relevant WHOIS contact information, there was no other evidence in the record to suggest that that respondent was actually commonly known by that domain name there in issue).
We also observe that Complainant alleges, without objection from Respondent, that Respondent’s <ashleefurniture.com> domain name resolves to a directory website that provides hyperlinks to third-party websites, including websites of Complainant’s commercial competitors and websites that are unrelated to Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits from its use of the disputed domain name in the manner alleged through the receipt of pay-per-click fees. Therefore, Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a domain name that was confusingly similar to a competing mark 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(ii).
The <ashleefurniture.com> domain name redirects Internet users seeking Complainant’s products to a website that provides hyperlinks to the websites of Complainant’s commercial competitors. Respondent’s domain name thus disrupts Complainant’s business, which evidences registration and use of the domain in bad faith under 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 commercial links to the websites of a complainant’s business competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a commercial search engine with links to a complainant’s commercial competitors).
By creating a likelihood of confusion with Complainant’s mark as to the possibility of Complainant’s association with the contested domain as a source, sponsor or endorser of Respondent’s website, Respondent has attempted to attract to its resolving website, for commercial gain, Internet users seeking Complainant and its products. Respondent’s behavior provides evidence of registration and use of the contested domain in bad faith pursuant to Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to a complainant, thus to generate click-through revenue, suggested bad faith registration and use of the domain under Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has satisfied the require-ments of Policy ¶ 4(a)(iii).
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 <ashleefurniture.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 8, 2011
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