Ashley Furniture Industries, Inc. v. Tonia Crespo
Claim Number: FA1104001385846
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Tonia Crespo (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturez.us>, registered with NAME.COM.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2011; the Forum received a hard copy of the Complaint on April 27, 2011.
On April 27, 2011, NAME.COM confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturez.us> domain name is registered with NAME.COM and that Respondent is the current registrant of the name. NAME.COM has verified that Respondent is bound by the NAME.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 29, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <ashleyfurniturez.us> domain name is confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturez.us> domain name.
3. Respondent registered and used the <ashleyfurniturez.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., manufactures and sells furniture under its ASHLEY mark. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879 issued June 12, 1990).
Respondent, Tonia Crespo, registered the <ashleyfurniturez.us> domain name on November 2, 2009. The disputed domain name resolves to a website that sells furniture and related products that compete with Complainant’s 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant provided evidence of its registration of the ASHLEY mark with the USPTO (e.g., Reg. No. 1,600,879 issued June 12, 1990). The Panel finds that such evidence establishes rights in the mark and satisfies the requirements outlined in Policy ¶ 4(a)(i). See 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.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)). The Panel concludes, pursuant to Policy ¶ 4(a)(i), that Complainant has established rights in its ASHLEY mark based on its registration of the mark with the USPTO.
Complainant alleges that Respondent’s <ashleyfurniturez.us> domain name is confusingly similar to Complainant’s ASHLEY mark. Respondent has incorporated Complainant’s mark in its entirety and simply added the descriptive term “furniture” and the letter “z” to Complainant’s mark. Complainant alleges that the addition of a descriptive term and single letter are actions that do not result in a unique domain name. Additionally, Complainant also alleges the addition of the country-code top-level domain (“ccTLD”) “.us” does not significantly distinguish Respondent’s domain name from Complainant’s ASHLEY mark. The Panel finds accordingly. See American 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 UDRP ¶ 4(a)(i)); see also America Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel concludes that Respondent’s <ashleyfurniturez.us> domain name is confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights and legitimate interests in the <ashleyfurniturez.us> domain name. A complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and, because Respondent failed to respond to these proceedings, the Panel may assume that it does not have rights or legitimate interests in the <ashleyfurniturez.us> domain name. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <ashleyfurniturez.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges Respondent is not commonly known by the <ashleyfurniturez.us> domain name. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS information lists the registrant of the disputed domain name as “Tonia Crespo” which Complainant alleges is not similar to the disputed domain name. Further, Complainant alleges that it has not authorized or licensed Respondent to use its ASHLEY mark. Thus, the Panel finds that Respondent is not commonly known by the <ashleyfurniturez.us> domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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 UDRP ¶ 4(c)(ii) does not apply).
Complainant alleges that the disputed domain name directs Internet users to a website that sells products of Complainant’s competitors. The Panel finds that using a disputed domain name to operate a website that sells products in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant alleges that the disputed domain name resolves to a website that sells the products of Complainant’s competitors in the furniture business. Internet users looking for Complainant’s products may be redirected to Respondent’s website and purchase products from Complainant’s competitors as a result of Respondent’s use of the disputed domain name. The Panel finds that such use disrupts Complainant’s business and finds this to be evidence of bad faith registration and use of the disputed domain name 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Complainant alleges that Respondent receives commercial benefit from the website resolving from the disputed domain name. Complainant contends that the competing products being sold on Respondent’s website generate revenue for Respondent. Therefore, the Panel finds that Respondent receives commercial benefit from the <ashleyfurniturez.us> domain name and finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturez.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 1, 2011
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