Ashley Furniture Industries, Inc. v. Veerathai / Veerathai Wangudom
Claim Number: FA1205001446119
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Veerathai / Veerathai Wangudom (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitureshop.com>, registered with Name.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2012; the National Arbitration Forum received payment on May 30, 2012.
On May 30, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureshop.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@ashleyfurnitureshop.com. Also on May 30, 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 June 16, 2012.
On June 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurnitureshop.com> domain name is confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfurnitureshop.com> domain name.
3. Respondent registered or used the <ashleyfurnitureshop.com> domain name in bad faith.
B. Respondent submitted a blank response model form from the Forum’s website.
1. Complainant registered the ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879 registered June 12, 1990);
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 claims to have registered the ASHLEY mark with the USPTO (e.g., Reg. No. 1,600,879 registered June 12, 1990). Complainant also claims to have registered the A ASHLEY FURNITURE mark with the USPTO (e.g., Reg. No. 2,894,665 registered October 19, 2004). Complainant submits trademark certificates issued by the USPTO, which the Panel notes lists Complainant as the owner of the duly registered marks. Based upon this registration, the Panel finds that Complainant established its rights in the ASHLEY and A ASHLEY FURNITURE marks under 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); 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).
Complainant asserts that Respondent’s <ashleyfurnitureshop.com> domain name is confusingly similar to Complainant’s ASHLEY and A ASHLEY FURNITURE marks. The Panel notes that the disputed domain name includes the entire ASHLEY mark, while adding the descriptive term “furniture” and the descriptive term “shop.” The Panel also notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes made by Respondent fail to differentiate the disputed domain name from Complainant’s ASHLEY mark, and the Panel concludes that Respondent’s <ashleyfurnitureshop.com> domain name is confusingly similar to Complainant’s ASHLEY mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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)).
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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that Respondent failed to submit any evidence to contradict Complainant’s assertion. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “Veerathai / Veerathai Wangudom.” Based upon the evidence on record, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainant states that Respondent’s disputed domain name resolves to a parked website offering links to Complainant’s competitors in the furniture industry. Complainant also states that Respondent is profiting by receiving compensation for allowing its disputed domain name to be parked and providing links to third party websites. However, the Panel notes that the screenshot provided by Complainant of the resolving website is the search results returned when Complainant or its representative performed a Bing search for the <ashleyfurnitureshop.com> domain name. See Complainant’s Exhibit 2. The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant alleges that Respondent initially failed to make an active use of the disputed domain name. Complainant submits a printout from the resolving website, which the Panel notes is inactive. See Complainant’s Exhibit 1. Therefore, the Panel finds that Respondent’s failure to initially make an active use of the disputed domain name also demonstrates a lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 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).”).
Complainant argues that Respondent’s disputed domain name resolves to a parked website offering links to Complainant’s competitors in the furniture industry. Complainant also states that Respondent is profiting by receiving compensation for allowing its disputed domain name to be parked and providing links to third party websites. The Panel notes that Complainant submits a Bing search of the term “ashleyfurnitureshop.com” and the results thereto to support its claim. See Complainant’s Exhibit 2. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and the Panel concludes that the resolving website offers links to competing third-party businesses. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant alleges that Respondent initially failed to make an active use of the disputed domain name. Complainant submits a printout from the resolving website, which the Panel notes is inactive. See Complainant’s Exhibit 1. Thus, the Panel finds that Respondent’s previous inactive use of the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureshop.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 3, 2012
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