Ashley Furniture Industries, Inc. v. David Spencer
Claim Number: FA1103001380183
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is David Spencer (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturenowonline.com>, registered with Catalog.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2011; the National Arbitration Forum received payment on March 25, 2011.
On March 25, 2011, Catalog.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturenowonline.com> domain name is registered with Catalog.com, Inc. and that Respondent is the current registrant of the name. Catalog.com, Inc. has verified that Respondent is bound by the Catalog.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 March 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@ashleyfurniturenowonline.com. Also on March 25, 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 April 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <ashleyfurniturenowonline.com> domain name is confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturenowonline.com> domain name.
3. Respondent registered and used the <ashleyfurniturenowonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., owns the ASHLEY mark which it uses it connection with its retail sales of furniture goods and services. Complainant holds a trademark registration for its ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879 issued June 12, 1990).
Respondent, David Spencer, registered the <ashleyfurniturenowonline.com> domain name on April 19, 2009. The disputed domain name resolves to a website for Robbins Distributing, which purportedly sells furniture products through links to third-party manufacturers, such as Sedona Mattresses, in direct competition with Complainant’s furniture business.
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 argues that it has established rights in its ASHLEY mark. Previous panels have found that a complainant may establish rights in a mark through federal trademark registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Here, Complainant holds a trademark registration for the ASHLEY mark with the USPTO (Reg. No. 1,600,879 issued June 12, 1990). The Panel concludes that Complainant has established its rights in the ASHLEY mark through registration with a trademark authority according to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <ashleyfurniturenowonline.com> domain name is confusingly similar to its ASHLEY mark. The disputed domain name incorporates the mark in its entirety and only differs from the mark through the addition of the descriptive word “furniture,” which relates to Complainant’s business, the addition of the generic words “now” and “online,” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive or generic words is not enough to remove the domain name from the scope of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the 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)). The Panel also finds that the application of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent lacks rights and legitimate interests in the disputed domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel stated, “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.” Here, Complainant has made a prima facie case. Respondent failed to submit a response to the Complaint which the Panel may interpret as an admission that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to look to the record to decided whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “David Spencer,” which is not similar to the disputed domain name. Furthermore, Complainant asserts that it has not licensed or otherwise authorized Respondent to use its ASHLEY mark within the domain name. Looking at the evidence, the Panel finds that Respondent is not commonly known by the <ashleyfurniturenowonline.com> domain name, pursuant to Policy ¶ 4(c)(ii). 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <ashleyfurniturenowonline.com> domain name resolves to a website for Robins Distributing, which offers furniture products by promoting links to other furniture retailers, all which directly compete with Complainant’s business. Respondent either profits from these sales or profits from the receipt of click-through fees from the third-party links. Either way, the Panel finds that Respondent’s use of a confusingly similar disputed domain name to redirect Internet users to Complainant’s competitors in the furniture industry, is 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the <ashleyfurniturenowonline.com> domain name disrupts its business. Internet users intending to purchase Complainant’s furniture goods and services may find Respondent’s website because of the confusingly similar domain name. Users may then decide to purchase similar goods from one of the competing third-party links on the resolving website. The Panel finds that such use does disrupt Complainant’s furniture sales and constitutes bad faith use and registration under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel infers that Respondent profits from the disputed domain name, most likely through click-through fees from the aforementioned third-party links. Internet users searching for Complainant may find Respondent’s website instead. Due to Respondent’s use of Complainant’s ASHLEY mark and creation of a website which purports to sell furniture goods, users may easily become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name. Respondent tries to commercially gain from this confusion by collecting click-through fees. The Panel concludes that this is further evidence of bad faith use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturenowonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 2, 2011
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