Ashley Furniture Industries, Inc. v. ashleyfurnitures c/o ashleyfurnitures
Claim Number: FA1102001374111
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is ashleyfurnitures c/o ashleyfurnitures (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitures.org>, registered with Melbourne IT, Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2011; the National Arbitration Forum received payment on February 22, 2011.
On February 22, 2011, Melbourne IT, Ltd confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitures.org> domain name is registered with Melbourne IT, Ltd and that Respondent is the current registrant of the name. Melbourne IT, Ltd has verified that Respondent is bound by the Melbourne IT, Ltd 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@ashleyfurnitures.org. Also on February 23, 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 March 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 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:
1. Respondent’s <ashleyfurnitures.org> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurnitures.org> domain name.
3. Respondent registered and used the <ashleyfurnitures.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant markets and sells furniture products and related services under it’s A ASHLEY FURNITURE mark. Complainant has registered its A ASHLEY FURNITURE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,894,665 issued October 19, 2004).
Respondent registered the <ashleyfurnitures.org> domain name on July 18, 2010. The disputed domain name resolves to a website featuring what appear to be hyperlinks to third-party furniture providers, however, the hyperlinks do not actually resolve to anything.
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.
Complainant holds multiple trademark registrations with the USPTO for its A ASHLEY FURNITURE mark (e.g., Reg. No. 2,894,665 issued October 19, 2004). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), two previous panels held that a trademark registration with the USPTO was sufficient to establish rights in a mark. In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels further determined that in order to establish its Policy ¶ 4(a)(i) rights, a complainant is not required to register a mark within the country respondent resides in. Therefore, the Panel concludes that Complainant has established rights in its A ASHLEY FURNITURE mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO, even though Respondent operates or resides in Thailand.
Respondent’s <ashleyfurnitures.org> domain name contains Complainant’s A ASHLEY FURNITURE mark, but Respondent removes the letter “a” and the space from Complainant’s mark. Respondent also adds the letter “s” and the generic top-level domain (“gTLD”) “.org.” In Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) and Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006), the panels determined that the removal of a letter failed to differentiate a disputed domain name from a complainant’s mark. In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) and T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007), the two panels made a similar decision in regards to the addition of the letter “s,” holding that the disputed domain names were confusingly similar to the complainants’ marks. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel found that the removal of a space and the addition of a gTLD both failed to sufficiently distinguish the disputed domain name because spaces and gTLDs are impermissible in a domain name. Based on this precedent, the Panel concludes Respondent’s <ashleyfurnitures.org> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests the <ashleyfurnitures.org> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allowed the panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <ashleyfurnitures.org> domain name. Complainant states that it has not licensed or otherwise authorized Respondent to use the A ASHLEY FURNITURE mark. Respondent’s WHOIS information identifies the domain name registrant as “ashleyfurnitures c/o ashleyfurnitures,” which does appear to be similar to the disputed domain name. However, in Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) and AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panels concluded that the respondents were not commonly known by the disputed domain name even though the WHOIS information appeared to support a finding that the respondents are commonly known by the respective domain names because there existed no further evidence of such a fact and the complainants had presented evidence that the respondents were not authorized to use the marks. Consequently, the Panel finds that Respondent is not commonly known by the <ashleyfurnitures.org> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s <ashleyfurnitures.org> domain name resolves to a website that appears to contain hyperlinks to websites offering furniture products. However, none of the hyperlinks are active. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panels determined that failure to make an active use of a disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent’s failure to make an active use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
In Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) and Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000), the panels found that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). This Panel finds accordingly.
Respondent’s <ashleyfurnitures.org> domain name resolves to a website that appears to be a parked website offering hyperlinks to third-party websites that would offer furniture products, but the hyperlinks are inactive. Respondent’s disputed domain name thus resolves to an inactive website that fails to provide any content aside from the inactive hyperlinks. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), the panels held that failure to make an active use is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitures.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 25, 2011
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