Ashley Furniture Industries, Inc. v. www.photocamara.com
Claim Number: FA1205001445068
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is www.photocamara.com (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturecarlyle.com>, registered with GoDaddy.com, LLC.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2012; the National Arbitration Forum received payment on May 22, 2012.
On May 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturecarlyle.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 May 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@ashleyfurniturecarlyle.com. Also on May 23, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurniturecarlyle.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurniturecarlyle.com> domain name.
3. Respondent registered and used the <ashleyfurniturecarlyle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., has rights in the ASHLEY FURNITURE mark that it uses in connection with retail furniture goods and services. Complainant owns a trademark registration for the ASHLEY FURNITURE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,894,665 registered October 19, 2004).
Respondent, www.photocamara.com, registered the <ashleyfurniturecarlyle.com> domain name on November 23, 2011. The <ashleyfurniturecarlyle.com> domain name resolves to a website that offers for sale products produced by Complainant and Complainant’s competitors.
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 contends that it has rights in the ASHLEY FURNITURE mark. The mark is used in connection with retail furniture goods and services. Complainant is the owner of a trademark registration with the USPTO for the ASHLEY FURNITURE mark (Reg. No. 2,894,665 registered October 19, 2004). Panels have previously held that the registration of a mark with a federal trademark authority is clear evidence of rights in that mark regardless of the location of the parties. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has rights in the ASHLEY FURNITURE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ashleyfurniturecarlyle.com> domain name is confusingly similar to the ASHLEY FURNITURE mark. The Panel finds that Respondent’s addition of the generic term “carlyle” fails to create a distinction between the <ashleyfurniturecarlyle.com> domain name and the ASHLEY FURNITURE mark. See 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)). The Panel also finds that Respondent’s deletion of the spaces between the words in Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.com” are irrelevant to a Policy ¶ 4(a)(i) analysis. See 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)). Therefore, the Panel finds that Respondent’s <ashleyfurniturecarlyle.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Where a complainant has made a prima facie case in support of the allegations it makes, the respondent has the burden of disproving these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the Respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant supports this assertion with evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent, and thus the Panel may infer that Respondent does not have rights or legitimate interests in the <ashleyfurniturecarlyle.com> domain name. However, the Panel will review the record for information which suggests otherwise under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <ashleyfurniturecarlyle.com> domain name. Complainant contends that the WHOIS record for the disputed domain name lists “www.photocamara.com” as the domain name registrant, and the Panel finds that this is not reflective of the <ashleyfurniturecarlyle.com> domain name in any way. Complainant further argues that Respondent has not been licensed or otherwise authorized by Complainant to use the ASHLEY FURNITURE mark. The Panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), held that, based on the WHOIS record and the complainant’s lack of authorization regarding the respondent’s use of the disputed domain name, the respondent was not commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <ashleyfurniturecarlyle.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the <ashleyfurniturecarlyle.com> domain name does not demonstrate Respondent’s rights or legitimate interests in the disputed domain name. Complainant provides evidence that the <ashleyfurniturecarlyle.com> domain name resolves to a website that offers Complainant’s and Complainant’s competitors’ products for sale. The Panel finds that Respondent’s use of the <ashleyfurniturecarlyle.com> domain name to sell Complainant’s products and the products of Complainant’s competitors 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(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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the <ashleyfurniturecarlyle.com> domain name in bad faith. Complainant contends that Respondent is using the ASHLEY FURNITURE mark in the disputed domain name to create initial confusion that the <ashleyfurniturecarlyle.com> domain name is affiliated with Complainant. Complainant further contends that Respondent is offering goods of Complainant’s and Complainant’s competitors in order to create a false association with Complainant. Complainant argues, and the Panel infers, that Respondent commercially benefits from the sale of the furniture at the resolving website. As the Panel determines that Respondent is attempting to create Internet user confusion and is attempting to commercially benefit from that confusion, the Panel holds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturecarlyle.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret), Panelist
Dated: June 27, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page