Ashley Furniture Industries, Inc. v. Breaking Free Services, LLC
Claim Number: FA1203001437115
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Breaking Free Services, LLC (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnituredelaware.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2012; the National Arbitration Forum received payment on March 30, 2012.
On March 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituredelaware.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2012 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@ashleyfurnituredelaware.com. Also on April 6, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 23, 2012.
On April 26, 2012, Complainant made an Additional Submission which was received in a timely manner according to Supplemental Rule #7.
On April 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trade mark rights in the word ASHLEY and alleges that the disputed domain name is confusingly similar to that trade mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent makes no reply to Complainant’s claim to trade marks rights but broadly denies the claim that it has acted in bad faith. Respondent alleges that it is in negotiation with Complainant to become an authorized reseller of Complainant’s goods and contends that it registered the domain name in good faith, assuming that such an agreement would be reached.
Respondent indicates its willingness to transfer the domain name to Complainant if it is reimbursed the cost of registration of the domain name.
C. Additional Submissions
Complainant made Additional Submissions which were taken into account by the Panel in reaching its decision and which are referred to as required in the discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the owner of the US Federally registered trade mark ASHLEY[1] which it uses in its business as a retailer of furniture and has done so since 1946.
2. The disputed domain name was registered on November 16, 2011.
3. The disputed domain name resolves to a website that displays links to other websites, some of which offer goods sold in competition with Complainant’s goods.
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trade mark.
5. Pre-Complaint letters of demand from Complainant failed to elicit any reaction from Respondent.
6. Complainant’s Additional Submissions do not indicate any willingness to suspend these administrative proceedings or accept Respondent’s offer of transfer of the disputed domain name.
A. Preliminary issue : Consent-to-Transfer
This is not a consent-to-transfer case. Respondent’s offer to transfer the disputed domain name to Complainant is conditional and Complainant has not shown any inclination to further negotiate with Respondent following the filing of the Complaint. The Panel moves to application of the Policy.
B. Primary issues
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
(1) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy[2] and in this case Complainant provides evidence of its United States Patent and Trademark Office trade mark registration. The Panel is accordingly satisfied that Complainant has trade mark rights.
The Panel is also satisfied that the disputed domain name, <ashleyfurnituredelaware.com>, is confusingly similar to Complainant’s ASHLEY trade mark. The disputed domain name takes the trade mark and adds the non-distinctive gTLD, “.com”[3], plus the geographic term “Delaware” and a word describing Complainant’s goods, “furniture”, none being matter which distinguishes the domain name from the trade mark in any significant way so as to avoid confusion[4].
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[5].
The publicly available WHOIS information identifies Respondent as “Breaking Free Services, LLC” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trade mark rights. There is no evidence that Complainant has authorized Respondent to use the trade mark and pre-Complaint letters of demand indicate that Respondent lacks any authorisation.
Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant claims that the domain name resolves to a website that carries links to the websites of third party competitors of Complainant and that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
For its part, Respondent alleges that it registered the domain name in anticipation of an agreement to become an authorized reseller of Complainant’s goods. Respondent claims to have rights and legitimate interests in the disputed domain name because it is engaged in negotiations with Complainant to resell its goods and that registration the disputed domain name was the “logical ‘next step’ in the process”.
The Panel observes that nowhere does Complainant expressly deny that Respondent is in negotiations to become a reseller of Complainant’s goods but, on the other hand, the Response is perfunctory and makes no effort to prove either the existence or state of maturity of those alleged negotiations. Little weight can be given to bald assertions. Moreover, Complainant is quite right in its Additional Submissions to quote from the earlier decision under this Policy in Gabrielle Boller Bruni v. Frick Enters., FA 465282 (Nat. Arb. Forum May 27, 2005), where the panel wrote:
“… even if Respondent was an authorized seller, this would not be enough to give him rights to the trademark in issue or to register the disputed domain name. See The Stanley Works & Stanley Logistics, Inc. v. Camp Creek Co., Inc., D2000-0113 (WIPO Apr. 14, 2000) (“Moreover, even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks. This Panel finds Respondent does not have sufficient rights or interests in the trademarks to allow Respondent to register them as domain names.”).”
The Panel endorses that reasoning and finds that Respondent has no rights or legitimate interests in the disputed domain name and therefore Complainant has satisfied the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Complainant submits evidence of screenshots of the web page corresponding with the disputed domain name. The Panel notes hyperlinks to various commercial websites offering goods that are similar to Complainant’s goods. The Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this website associated with the disputed domain name. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel remarks that very little can be said of Respondent’s offer to transfer the disputed domain name to Complainant if Complainant compensates Respondent for its registration costs. The offer is not evidence of Respondent’s good faith since it was only made after the Complaint was filed. There was no such offer of any kind in response to the earlier letters of demand.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnituredelaware.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 1, 2012
[1] Reg. No. 1,600,879 registered at USPTO on June 12, 1990
[2] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[3] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Forward Assoc., Inc., v. Enterps. Unlimited, FA 95491 (Nat. Arb. Forum Oct. 3, 2000) (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
[4] Were it necessary to analyse this same issue from a perspective even more favourable to Complainant, it is here noted that Complainant is also the owner of USPTO Trade Mark Registration No. 2,894,665 for ASHLEY FURNITURE.
[5] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
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