national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Suthan Surinruk

Claim Number: FA1107001400900

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is Suthan Surinruk (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyfurnituresale.us>, registered with GODADDY.COM, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 28, 2011; the Forum received a hard copy of the Complaint on July 29, 2011.

 

On July 30, 2011, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituresale.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name.  GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On August 2, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On August 24, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY trademark (including Reg. No. 1,600,879, registered June 12, 1990), which Complainant uses in connection with its furniture sales.

 

Respondent registered the <ashleyfurnituresale.us> domain name on January 23, 2011. 

 

The disputed domain name resolves to a website selling Complainant’s furniture products and the furniture products of Complainant’s competitors.

 

Respondent’s <ashleyfurnituresale.us> domain name is confusingly similar to Complainant’s ASHLEY mark.

 

Respondent is not commonly known by the contested domain name.

 

Complainant has not licensed or otherwise authorized Respondent to use its ASHLEY trademark in a domain name.

 

Respondent does not have any rights to or legitimate interests in the domain name <ashleyfurnituresale.us>.

 

Respondent registered and uses the <ashleyfurnituresale.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1) the domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights; and

(2) the Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) the same domain name was registered or is being used by Respondent in bad faith.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 a UDRP 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii.  the Respondent has no rights or legitimate interests in respect of the domain name; and

iii.  the domain name has been registered or 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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in its ASHLEY trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.   See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 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.”

 

It is of no consequence that Complainant has demonstrated rights in its mark by registering it in a country other than that of Respondent’s residence or base of operations.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).

Respondent’s <ashleyfurnituresale.us> domain name contains Complainant’s entire ASHLEY mark, and merely adds the descriptive terms “furniture” and “sale,” which describe aspects of Complainant’s business, plus the country-code top-level domain (“ccTLD”) “.us.”  These alterations of the mark in forming the disputed domain name fail to distinguish the domain name from the mark under the standards of Policy ¶ 4(a)(i).  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where the disputed domain name <kohlerbaths.com> contained a complainant’s mark in its entirety, merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the mark of a complainant combined with a generic term); further see 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.

 

Consequently, the Panel finds that Respondent’s <ashleyfurnituresale.us> domain name is confusingly similar to Complainant’s ASHLEY trademark pursuant to Policy ¶ 4(a)(i).

 

 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights to or legitimate interests in the <ashleyfurnituresale.us> domain name.  Once Complainant has made out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have such rights or legitimate interests.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].

 

Complainant has made out a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore allows us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that, because a respondent failed to submit a response to a UDRP complaint:

 

Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.

 

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 observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the contested domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its ASHLEY trademark in a domain name.  Moreover, the WHOIS information for the <ashleyfurnituresale.us> domain name identifies the registrant only as “Suthan Surinruk,” which does not resemble the domain name.  On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii).  See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name, and so had no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii) based on the evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name and so had no rights to or legitimate interests in its contested domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).

 

We next note that Complainant asserts, without objection from Respondent, that Respondent’s <ashleyfurnituresale.us> domain name resolves to a website that sells both Complainant’s furniture and the furniture of Complainant’s competitors.  In the circumstances here presented, we may presume that Respondent benefits commercially from this use of the domain.  And we conclude that this use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(iii).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that a 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 a 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);  see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that a respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration or Use in Bad Faith

 

Respondent’s <ashleyfurnituresale.us> domain name resolves to a website that sells Complainant’s furniture and the furniture of Complainant’s competitors.  This disrupts Complainant’s business and thus stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring a disputed domain name to a complainant from a respondent who was not authorized to sell that complainant’s goods); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002):

 

Unauthorized use of Complainant’s … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).

 

Respondent’s use of the <ashleyfurnituresale.us> domain name as alleged in the Complaint presumably works to Respondent’s commercial benefit from the sale of furniture at the resolving website.  This benefit is facilitated by the confusion created among Internet users as to the possibility of Complainant’s affiliation with the disputed domain name and resolving website owing to Respondent’s employment of a domain name confusingly similar to Complainant’s mark.  Respondent’s behavior evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrates that respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell watches where that respondent was not authorized to sell a complainant’s goods).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <ashleyfurnituresale.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  September 1, 2011

 

 

 

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