Ashley Furniture Industries, Inc. v. Whois Privacy Services
Claim Number: FA1205001444169
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Whois Privacy Service (“Respondent”), Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleydirrect.com>, and <ashleyshomecenter.com>, registered with PREMIUM REGISTRATIONS SWEDEN AB.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 16, 2012.
On May 21, 2012, PREMIUM REGISTRATIONS SWEDEN AB confirmed by e-mail to the National Arbitration Forum that the <ashleydirrect.com> and <ashleyshomecenter.com> domain names are registered with PREMIUM REGISTRATIONS SWEDEN AB and that Respondent is the current registrant of the names. PREMIUM REGISTRATIONS SWEDEN AB has verified that Respondent is bound by the PREMIUM REGISTRATIONS SWEDEN AB 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 May 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@ashleydirrect.com and postmaster@ashleyshomecenter.com. Also on May 21, 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 June 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990) and ASHLEY HOMESTORES mark (e.g., Reg. No. 2,231,864 registered March 16, 1999).
2. The <ashleydirrect.com> and <ashleyshomecenter.com> domain names are confusingly similar to Complainant’s ASHLEY and ASHLEY HOMESTORES marks.
3. Respondent has no rights or legitimate interest in the <ashleydirrect.com> and <ashleyshomecenter.com> domain names.
4. Respondent had knowledge of Complainant’s mark.
5. Complainant has not licensed or otherwise authorized the Respondent to use its registered trademarks, or anything confusingly similar to Complainant’s trademarks, in the domain name.
6. Respondent’s resolving websites are “parked” websites, which contain only links to other websites.
7. Respondent presumably receives compensation for allowing its disputed domain names to be used as a “parked” website.
8. Respondent had constructive knowledge of Complainant’s rights in the ASHLEY and ASHLEY HOMESTORES marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture, Inc, owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990) and ASHLEY HOMESTORES mark (e.g., Reg. No. 2,231,864 registered March 16, 1999).
Respondent, Whois Privacy Services, registered the <ashleydirrect.com> domain name on November 18, 2011 and the <ashleyshomecenter.com> domain name on October 14, 2011. Respondent’s resolving websites are “parked” websites, which contain only links to other websites.
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.”).
Complainant correctly alleges that it has rights in the <ashleydirrect.com> and <ashleyshomecenter.com> domain names pursuant to Policy ¶ 4(a)(i). Evidence of a trademark registration with the USPTO for a mark is sufficient to establish a complainant’s rights in a mark pursuant to Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel finds that Complainant has established rights in its ASHLEY and ASHLEY HOMESTORES marks pursuant to Policy¶ 4(a)(i), regardless of where Respondent resides or operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that Respondent’s <ashleydirrect.com> domain name is confusingly similar to Complainant’s ASHLEY mark. Complainant argues that the <ashleydirrect.com> domain name contains Complainant’s mark in its entirety with the addition of the non-distinctive, presumably intentionally misspelled term “dirrect.” The <ashleydirrect.com> domain name also contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term and a gTLD fail to adequately distinguish the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also 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)). Therefore, the Panel finds that the <ashleydirrect.com> domain name is confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <ashleyshomecenter.com> domain name is confusingly similar to Complainant’s ASHLEY HOMESTORES mark. The disputed domain name does not contain the “STORES” portion of Complainant’s ASHLEY HOMESTORES mark and that the disputed domain name combines the rest of Complainant’s mark with the generic term “center.” The <ashleyshomecenter.com> domain name contains the generic top-level domain (“gTLD”) “.com” and does not feature the space found in Complainant’s mark. Previous panels have determined that variances, such as adding top-level domains, adding a term to a complainant’s mark, removing a portion of a complainant’s mark, and removing a space in a complainant’s mark, are insufficient in distinguishing a disputed domain name from a complainant’s registered 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.”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that the <ashleyshomecenter.com> domain name is confusingly similar to Complainant’s ASHLEY HOMESTORES mark pursuant to Policy ¶ 4(a)(i).
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).
Complainant asserts that Respondent lacks rights and legitimate interest in the <ashleydirrect.com> and <ashleyshomecenter.com> domain names. Previous panels have held that, when there is no connection between Respondent’s WHOIS information and Complainant’s marks, a respondent is not commonly known by the disputed domain name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Complainant contends it has not authorized Respondent to use the ASHLEY or ASHLEY HOMESTORES marks in any way. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of its <ashleydirrect.com> and <ashleyshomecenter.com> domain names. Respondent is using its resolving websites as “parked” websites. These websites only contain links to other websites, including those offering products manufactured or distributed by competitors of Complainant. Respondent presumably receives compensation for allowing the hyperlinks to be “parked” on the <ashleydirrect.com> and <ashleyshomecenter.com> resolving sites. Previous panels have found that registering a parked site at a confusingly similar domain name 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products). Based on Respondent’s use of the <ashleydirrect.com> and <ashleyshomecenter.com> domain names to facilitate a “parked” website, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.
Complainant contends that Respondent registered the disputed domain names to host “parked” websites, from which Respondent is presumably receiving compensation. While Complainant does not specifically allege that Respondent’s registration and use of the disputed domain names are disrupting Complainant’s business, previous panels have found that using a confusingly similar domain name to attract Internet users to a site displaying competing links disrupts a complainant’s business and constitutes bad faith registration pursuant to Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Based on this precedent and the evidence in the record, the Panel finds that Respondent registered and uses the <ashleydirrect.com> and <ashleyshomecenter.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that its trademark registrations for the ASHLEY and ASHLEY HOMESTORES marks existed well before the registration of the disputed domain names. Complainant argues that Respondent had constructive knowledge of Complainant's rights in the marks when Respondent registered the disputed domain names. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's marks, Respondent had actual knowledge of the marks and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleydirrect.com> and <ashleyshomecenter.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 27, 2012
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