national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. N/A / Sergey Makarov

Claim Number: FA1203001437125

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is N/A / Sergey Makarov (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyfurnitureinc.com>, registered with TopSystem LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

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 April 6, 2012, TopSystem LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureinc.com> domain name is registered with TopSystem LLC and that Respondent is the current registrant of the name.  TopSystem LLC has verified that Respondent is bound by the TopSystem 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@ashleyfurnitureinc.com.  Also on April 16, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

          Complainant made the following contentions:

    1. Complainant has done business in the furniture retail industry under the ASHLEY FURNITURE mark since 1946.
    2. Complainant owns rights in the ASHLEY FURNITURE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,894,665 registered October 19, 2004). See Exhibit 5.
    3. Respondent registered the <ashleyfurnitureinc.com> domain name on February 26, 2011.
    4. The disputed domain name previously resolved to a web page that displayed hyperlinks to other websites whose businesses were in competition with Complainant’s.
    5. Respondent’s domain name currently resolves to a web page that displays only an empty screen.
    6. Respondent’s domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark.
    7. Respondent does not have license or rights to use Complainant’s registered trademark.
    8. Respondent received compensation for the advertised content on its website.
    9. Respondent had constructive knowledge of Complainant’s rights in the ASHLEY FURNITURE mark at the time Respondent registered the domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

 

1.Complainant is a United States company that has done business in the furniture retail industry under the ASHLEY FURNITURE mark since 1946.

2.Complainant owns rights in the ASHLEY FURNITURE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,894,665 registered October 19, 2004). See Exhibit 5.

3.Respondent registered the <ashleyfurnitureinc.com> domain name on February 26, 2011.

4.The disputed domain name previously resolved to a web page that displayed hyperlinks to other websites whose businesses were in competition with Complainant’s. The domain name currently resolves to a web page that displays only an empty screen.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The first question is whether Complainant has rights in a trademark or a service mark. Complainant submits evidence to demonstrate its rights in its ASHLEY FURNITURE mark through its registration with the USPTO (Reg. No. 2,894,665 registered October 19, 2004). The Panel finds that Complainant established rights in its ASHLEY FURNITURE mark according to Policy ¶ 4(a) (i), even though Respondent is located outside the U.S. See 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 Policy ¶ 4(a) (i)); see also Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The second question is whether the disputed domain name is identical or confusingly similar to the ASHLEY FURNITURE mark. Complainant alleges that the <ashleyfurnitureinc.com> domain name is confusingly similar to its ASHLEY FURNITURE mark, pointing out that the addition of the generic term “inc” is the only change made to the mark. The Panel also notes that the domain name removes the spaces between the words of the mark and includes the generic top-level domain (“gTLD”) “.com.” The panel in Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001), held that adding the generic term “inc” does not change the domain name’s confusing similarity from the mark. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel determined that removing spaces between words in a mark, as well as adding a gTLD does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). The Panel finds that Respondent’s domain name is not sufficiently changed from the mark and is thus confusingly similar to Complainant’s mark under Policy ¶ 4(a) (i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s ASHLEY FURNITURE mark trademark and to use it in its domain name , adding the word “inc”, a word meaning incorporated and naturally associated with any company and leaving the internet user with the impression that the domain name is associated with Complainant as a company, thus enhancing the confusing similarity between the domain name and the trademark;

(b)  Respondent has then decided, first, to use the domain name to lead to websites that offer goods in competition with those provided by Complainant and to do so clearly for monetary reward;

(c)  Respondent has engaged in these activities without the consent or approval of Complainant;

(d)  Complainant alleges that Respondent lacks rights or interests in the <ashleyfurnitureinc.com> domain name and claims that the WHOIS information does not support a finding that Respondent is commonly known by the disputed domain name. Complainant claims that Respondent’s use of a proxy service to register the domain name demonstrates a likelihood that Respondent is not commonly known by the domain name. Previous panels have held that where the WHOIS information does not indicate that the respondent is commonly known by the disputed domain name, the respondent lacks rights and interests in the domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel determined that there was nothing in the respondent’s WHOIS information that showed that it was commonly known by the domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the WHOIS information and other evidence on record demonstrated that the respondent was not commonly known by the disputed domain name. The Panel finds that, because the WHOIS information does not support a finding that Respondent is commonly known by the disputed domain name, Respondent has no rights or legitimate interests in the name under Policy ¶ 4(c) (ii).

 

(e)Complainant also states in its Policy ¶ 4(a)(iii) argument that Respondent’s previous use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant submits evidence showing screenshots of Respondent’s website and claims that the displayed hyperlinks lead to websites whose businesses were in direct competition with Complainant’s business. Complainant argues that Respondent makes a profit by displaying the hyperlinks and the Panel is of the opinion that this is probably so. See Exhibit 2. The Panel finds that use of a website to post links to competing websites is neither a bona fide offering of goods or services or a Policy ¶ 4(c) (i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c) (iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c) (iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

(f) Complainant also states that Respondent’s disputed domain name currently leads only to a blank screen. The Panel finds that a domain name that resolves to a blank page may constitute a failure to make active use of the domain name, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TMP Int’l, Inc. v. Baker Enters., FA a 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii).”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

 

Registration and Use in Bad Faith

 

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

 

First, Complainant claims that Respondent’s previous use of the domain name to post hyperlinks to competing websites at a confusingly similar domain name creates a likelihood of consumers confusing the domain name with Complainant’s business and attracts Internet users in order to make a financial gain. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), stated that using a domain name to host a website displaying links to various commercial websites, some of which compete with the complainant’s business, in order to collect fees is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel held that the respondent took part in bad faith registration and use by registering a confusingly similar domain name offer links to third-party websites whose services were similar to the complainant’s. The Panel concludes that because Respondent received referral fees for hosting competing company’s hyperlinks in order to attract and confuse customers, Respondent registered and used the <ashleyfurnitureinc.com> domain name in bad faith under Policy ¶ 4(b)(iv).

 

Secondly, Complainant states that Respondent currently links the disputed domain name to a website showing a blank screen. The Panel holds that a blank page constitutes a failure to make active use of the domain name, which demonstrates bad faith registration and use pursuant to Policy ¶ 4(a) (iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to make an active use] of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”).

Thirdly, Complainant alleges in its Policy ¶ 4(a) (ii) argument that Respondent registered the disputed domain name over twenty years after Complainant began using the mark, and, as a result, Respondent had constructive and actual knowledge of Complainant’s rights in the ASHLEY FURNITURE mark. Constructive knowledge is generally not regarded as sufficient to demonstrate bad faith registration and use under Policy ¶ 4(a) (iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). However, the Panel concludes that because Complainant has used its ASHLEY FURNITURE mark for over twenty years and registered the mark well before Respondent registered the disputed domain name, Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a) (iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).  

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ASHLEY FURNITURE mark, adding to it the word “inc” and thereby referring directly to Complainant as a company and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ashleyfurnitureinc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  May 10, 2012

 

 

 

 

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