Ashley Furniture Industries, Inc. v. Elmanda Pratama
Claim Number: FA1205001444190
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Elmanda Pratama (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyhomefurniture.info>, registered with GoDaddy.com LLC (R171-LRMS).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, 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 15, 2012, GoDaddy.com LLC (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <ashleyhomefurniture.info> domain name is registered with GoDaddy.com LLC (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com LLC (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com LLC (R171-LRMS) 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@ashleyhomefurniture.info. Also on May 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 June 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the trademark registrations with the United States Patent and Trademark Office for ASHLEY (Reg. No. 1,600,879 registered June 12, 1990), A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686 registered July 3, 1990), ASHLEY FURNITURE HOMESTORE (Reg. No. 2,680,466 registered January 28, 2003), and ASHLEY FURNITURE HOMESTORE and Design (Reg. No. 2,449,045 registered May 8, 2001).
Respondent’s <ashleyhomefurniture.info> domain name is confusingly similar to Complainant’s marks.
Respondent is not commonly known by the disputed domain name and has not been licensed to use Complainant’s marks.
Respondent had constructive, if not actual knowledge of Complainant’s trademarks at the time the at-issue domain name was registered.
Respondent’s disputed domain name previously resolved to a website that displayed Complainant’s goods for sale as well as the goods of Complainant’s competitors.
Respondent’s disputed domain name currently resolves to a “parked” website that includes links to websites offering products manufactured or distributed by competitors of Complainant.
Respondent’s use of the disputed domain name does not confer rights and legitimate interests in Respondent.
Respondent’s use is evidence of its bad faith registration and use of the <ashleyhomefurniture.info> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its ASHLEY and related trademarks at all times relevant to this proceeding.
Respondent registered the at-issue <ashleyhomefurniture.info> domain name on December 11, 2011.
Respondent knew of Complainant’s ASHLEY trademark at the time it registered the at-issue domain name.
Respondent had, and has, no authority to use Complainant’s trademarks in any manner whatsoever.
Respondent’s domain name previously resolved to a website that displayed Complainant’s goods for sale as well as the goods of Complainant’s competitors.
Respondent’s disputed domain name currently resolves to a “parked” website that includes links to websites offering products manufactured or distributed by competitors of Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
As evidenced by Complainant’s certificates of registration for ASHLEY and related trademarks, Complainant has established it has rights in ASHLEY as well as the related marks under Policy ¶ 4(a)(i) by registering such marks as trademarks with the USPTO. 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); 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 Policy ¶ 4(a)(i)). This conclusion holds even though a Complainant’s trademark may not have been registered in the country where Respondent is located. See 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
While a case may be made showing confusing similarity between the at-issue domain name and each of Complainant’s proffered trademarks, demonstrating confusing similarity between the domain name and any one of Complainant’s marks is sufficient for the purposes of Policy ¶4(a)(i). Thus for simplicity the Panel limits its discussion to the at-issue domain name’s confusingly similarity to Complainant’s ASHLEY mark. To wit, the disputed domain name includes Complainant’s entire ASHLEY trademark merely adding “home furniture,” a term that describes Complainant’s products, and appending the generic top-level domain name “.info” thereto. These modifications to Complainant’s trademark are insufficient to distinguish the <ashleyhomefurniture.info> domain name from the mark. Therefore, the Panel finds Respondent’s domain name to be confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also 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).
Respondent lacks rights and legitimate interests in respect of the <ashleyhomefurniture.info> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence supporting that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent did not submit a response, Complainant’s prima facie case acts conclusively.
Complainant has not granted Respondent permission to use any of its ASHLEY marks in a domain name. Moreover Respondent is not commonly known by the <ashleyhomefurniture.info> domain name. WHOIS information identifies the registrant of the <ashleyhomefurniture.info> domain name as “Elmanda Pratama.” The record therefore does not indicate that Respondent is commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). 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).
Respondent’s domain name previously resolved to a website that displayed Complainant’s goods for sale, as well as the goods of Complainant’s competitors. Such unauthorized use of a confusingly similar domain name does not constitute 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). Furthermore, the at-issue domain name currently resolves to a parked website featuring third-party links to Complainant’s competitors. Likewise, Respondent’s use of the disputed domain name to host third-party links to Complainant’s competitors 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent registered, used, and uses the at-issue domain name in bad faith.
Respondent’s prior use of the at-issue domain name to market and sell Complainant’s goods without authorization shows bad faith registration and use under the Policy. See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
Furthermore, Respondent’s domain name currently references a website featuring third-party links to Complainant’s competitors, such as Crate & Barrel, Macy’s, and J.C. Penney. Respondent is likely paid for allowing such links to be displayed. Through such use, Respondent is apparently attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s ASHLEY mark. Such circumstances demonstrate that Respondent registered and is using the <ashleyhomefurniture.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent's unauthorized commercial offering of Complainant's furniture on its website shows that Respondent had actual knowledge of Complainant's ASHLEY mark and its rights therein prior to registering the at-issue domain name. Likewise, the fame and notoriety of the ASHLEY mark also leads to the conclusion that Respondent must have been well aware of Complainant’s mark before registering the domain name. Respondent’s registration of a domain name containing Complainant’s registered trademark, with actual knowledge of such trademark, evidences bad faith under the Policy. See 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); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyhomefurniture.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 10, 2012
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