Ashley Furniture Industries, Inc. v. Rick Cole
Claim Number: FA1102001374110
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Rick Cole (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniture.net>, registered with 1 & 1 Internet AG.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2011; the National Arbitration Forum received payment on February 22, 2011.
On February 24, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniture.net> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 February 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of 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@ashleyfurniture.net. Also on February 24, 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.
A timely Response was received and determined to be complete on March 16, 2011 and on April 5, 2011, after an extension being granted to the Respondent.
Complainant submitted an Additional Submission on April 8, 2011.
On April 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts Respondent’s <ashleyfurniture.net> domain name is confusingly similar to its ASHLEY, A ASHLEY FURNITURE INDUSTRIES and A ASHLEY FURNITURE marks. Complainant further contends that Respondent has no rights or legitimate interests in the domain name. Finally, Complainant contends that Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent replied to Complainant’s contentions in two separate emails. Respondent informed the arbitration center that it would not be participating in arbitration with the National Arbitration Forum and requested an alternative venue to decide on the case.
Respondent also contended that he registered the domain name to provide information about the Ashley Furniture Company in Aiken, SC. Respondent further contends that he offered the disputed domain name for sale in 2002 and that the domain name has been listed for sale over the last 10 years. Respondent claims that he has rented the domain name since 2002 and that the domain name can be sold for the price of $700,000.00 or rented for a monthly rate of $5,000.00. Respondent also offers to transfer the domain name if Complainant donates numerous furniture items from its product line to the HeavenQuest Ministries Drug and Rehabilitation Center.
C. Additional Submissions
Complainant
In its additional submission, Complainant reiterates its argument that the disputed domain name is confusingly similar to its ASHLEY, A ASHLEY FURNITURE INDUSTRIES and A ASHLEY FURNITURE marks. Complainant further asserts that Respondent did not refute Complainant’s arguments that Respondent has no rights or legitimate interest in the domain name. Complainant further argued that whereas retailers only have a limited right to use the Complainant’s trademark under the “fair use” doctrine, they do not have the right to register Complainant’s trademark as a domain name and the Respondent cannot obtain such a right merely by leasing a website to those retailers.
Finally, Complainant argues that Respondent has made contradictory statements in relation to its intent with the domain name, but that the bad faith registration and use of the domain name can be clearly derived from i) the fact that Respondent contacted Complainant in 2002 to inquire about its interest in purchasing the domain name and ii) the offer to sell the domain name to Complainant at a price substantially higher that the typical cost to acquire a domain name.
1. Complainant operates under the name Ashley Furniture Industries, Inc. and is the holder of the following trademark registrations:
- U.S. Reg. No. 1,600,879 – ASHLEY, registered on June 12, 1990 in class 20 for furniture;
- U.S. Reg. No. 2,894,665 – A ASHLEY FURNITURE, registered on October 19, 2004 in class 35 for retail stores services in the field of furniture; and
- U.S. Reg. No. 1,604,686 – A ASHLEY FURNITURE INDUSTRIES, registered on July 3, 1990 in class 20 for furniture.
2. Complainant first used its trademarks in 1946 (ASHLEY), 2001 (A ASHLEY FURNITURE), and 1984 (A ASHLEY FURNITURE INDUSTRIES) respectively.
3. Respondent, Rick M. Cole, registered the domain name <ashleyfurniture.net> on November 11, 2000.
4. Respondent uses the disputed domain name to rent it to third parties.
5. Respondent offered the disputed domain name for sale to Complainant for $700,000.00 or for the donation of numerous furniture items to the HeavenQuest Ministries Drug and Rehabilitation Center.
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.
When registering a domain name, the domain name holder is required to submit a dispute about the elements of Paragraph 4(a) of the Policy to a mandatory administrative proceeding that may be conducted before the National Arbitration Forum. Therefore, Respondent cannot demand that the National Arbitration Forum does not handle such dispute.
Complainant shows to have rights in inter alia the ASHLEY mark by virtue of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879 issued June 12, 1990). According to the Panel, this USPTO trademark registration provides sufficient evidence to prove Complainant’s rights in the ASHLEY mark for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant contends in its Complaint and Additional Submission that Respondent’s <ashleyfurniture.net> domain name is confusingly similar to Complainant’s ASHLEY mark because the disputed domain name begins with Complainant’s mark and adds only the descriptive term “furniture” and the generic top-level domain (“gTLD”) “.com.” The descriptive term “furniture” relates to Complainant’s business and Complainant’s ASHLEY mark was registered in class 20 for furniture. The Panel finds that the addition of a descriptive term to Complainant’s mark does nothing to dispel confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also concludes that the presence of the gTLD does not differentiate the disputed domain name from Complainant’s mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel may therefore determine that Respondent’s <ashleyfurniture.net> domain name is confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent, such that Respondent must come forward with concrete evidence of its 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant established that Respondent has not been authorized or licensed to use any of Complainant’s marks. Further, the Panel finds that Respondent is not commonly known by the disputed 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <ashleyfurniture.net> domain name resolves to a website appearing to offer furniture for sale. The website prominently displays Complainant’s ASHLEY FURNITURE INDUSTRIES registered trademark, along with a statement at the top of the page that states, “Welcome to AshleyFurniture.net,” and the words “Ashley Furniture” displayed in all capital letters. Complainant argues that clicking on the link entitled “Click Here for Warehouse Pricing” on the resolving website merely leads to a parked website that lists real estate for sale. According to the Panel, it is likely that Respondent receives compensation for this link to a “click through” site.
In its Additional Submission, Complainant argues that Respondent’s Response seems to contend that “Complainant’s decision to promote some of its retail customers on the Complainant’s website mythically transforms into some amorphous authorization for the Respondent to use the Complainant’s trademark as its domain name . . . [and] any right the Complainant’s customers have to the use of the Complainant’s trademark under the ‘fair use’ doctrine magically transforms into authorization for the Respondent to register and use the Complainant’s trademark as a domain name.” Complainant counters this argument in its Additional Submission by asserting that there is no authority for either of Respondent’s positions and contending that Respondent cannot obtain a right to register Complainant’s mark as a domain name simply by leasing a website to retailers with a limited right to “fair use” of Complainant’s mark.
Accordingly, the Panel finds that redirecting consumers to an unaffiliated website under Complainant’s mark and using the resolving website in connection with pay-per-click links do not comport with the requirements of Policy ¶ 4(c)(i) for a bona fide offering of goods or services or Policy ¶ 4(c)(iii) for a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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 confusingly similar domain name 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)).
Complainant also argues that Respondent offered to sell the <ashleyfurniture.net> domain name to Complainant for the payoff on Respondent’s commercial property address, a price amounting to $700,000. Complainant asserts that Respondent made this offer in response to a letter from Complainant requesting transfer of the disputed domain name. Complainant contends that some weeks later, Respondent made another attempt to sell the disputed domain name to Complainant, stating that Respondent had received an offer for $695,000 and would sell the <ashleyfurniture.net> domain name to that prospect unless it received a higher offer from Complainant before a specified deadline. The Panel also notes that in its Response, Respondent again offered to transfer the disputed domain name in exchange for a donation by Complainant of a substantial number of furniture pieces to Respondent’s Drug and Rehabilitation Center. The Panel finds that these offers to sell the disputed domain name to Complainant for amounts well in excess of Respondent’s out-of-pocket costs, or in exchange for goods with substantial value above Respondent’s out-of-pocket costs, indicate a lack of rights and legitimate interests on the part of Respondent according to Policy ¶ 4(a)(ii). See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant).
Complainant alleges in its Complaint and Additional Submission that Respondent has made repeated offers to sell the <ashleyfurniture.net> domain name to Complainant. Complainant asserts that Respondent first replied to Complainant’s initial correspondence with an offer to sell the disputed domain name in exchange for the payoff of Respondent’s commercial property address, $700,000. Complainant further argues that Respondent again offered Complainant the opportunity to out-bid another alleged buyer who had purportedly offered $695,000 for the disputed domain name. Finally, the Panel notes that Respondent, in its Response, again offered to transfer the disputed domain name in exchange for numerous pieces of furniture from Complainant’s product lines to be donated by Complainant. The Panel finds that these attempts to sell the <ashleyfurniture.net> domain name in exchange for valuable consideration or money far exceeding Respondent’s out-of-pocket costs indicate Respondent’s bad faith registration and use according to Policy ¶ 4(b)(i). See Lyon v. Casserly, FA 193891 (Nat. Arb. Forum Oct. 29, 2003) (finding that the domain name was acquired primarily for the purpose of transferring the domain name to the complainant for valuable consideration in excess of the respondent's out-of-pocket costs because the respondent made various requests for concert tickets, backstage passes, press passes and a website development contract); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
As mentioned by Complainant in its Complaint and Additional Submission, Respondent’s <ashleyfurniture.net> domain name resolves to a website prominently displaying Complainant’s ASHLEY FURNITURE INDUSTRIES mark, the name “Ashley Furniture” in all capital letters, and a welcome banner stating, “Welcome to AshleyFurniture.net.” According to the Panel, the use and prominent display of Complainant’s mark and name show that Respondent attempts to create a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Complainant asserts that this likelihood of confusion is intended for commercial gain. Complainant asserts that calls to the telephone number displayed on the website reach only a recorded message stating that the person at that number is unavailable. Complainant also asserts that emails sent to the email address displayed received no responses and the link entitled “Click Here for Warehouse Pricing” leads only to a parked website advertising real estate for sale. Complainant alleges that Respondent presumably receives compensation for using the disputed domain name’s resolving website to redirect to that parked links page through the pay-per-click link displayed on the resolving website. According to the Panel, these activities reveal Respondent’s intent to attract Internet users by creating confusion for commercial gain and thus serve as evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Finally, Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the ASHLEY mark prior to the registration of the disputed domain names. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the fact that Respondent offered the domain name for sale subsequent to the registration of the domain name and used one of Complainant’s figurative trademarks on the website linked to the disputed domain name, shows that Respondent had actual knowledge of Complainant’s mark. Accordingly, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniture.net> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: April 26, 2011
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