national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Lsm.Pros

Claim Number: FA1206001447200

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin.  Respondent is Lsm.Pros (“Respondent”), Florida.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com>, registered with GoDaddy.com, 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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2012; the National Arbitration Forum received payment on June 5, 2012.

 

On June 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 June 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@ashleyfurnituredirectory.com and postmaster@ashley-furniture-tampa.com.  Also on June 8, 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 July 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant

1.      Complainant is a furniture company operating in the United States.

2.      Complainant owns multiple trademarks with the United States Patent and Trademark Office (“USPTO”), including the ASHLEY mark (Reg. No. 1,600,879; registered June 12, 1990), the A ASHLEY FURNITURE INDUSTRIES mark (Reg. No. 1,604,686; registered July 3, 1990), and the A ASHLEY FURNITURE mark (Reg. No. 2,894,665; registered October 19, 2004).

3.      Complainant first used the ASHLEY mark in commerce in 1946, the A ASHLEY FURNITURE INDUSTRIES mark in 1984, and the A ASHLEY FURNITURE mark on September 1, 2001.

4.      Complainant uses these marks in connection with the marketing and selling of its furniture products.

5.      Respondent’s disputed domain names, <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com>, are confusingly similar to Complainant’s ASHLEY mark, A ASHLEY FURNITURE INDUSTRIES mark, and A ASHLEY FURNITURE mark.

6.      Respondent registered the <ashleyfurnituredirectory.com> disputed domain name on January 5, 2012 and the <ashley-furniture-tampa.com> disputed domain name on June 10, 2011.

7.      The <ashleyfurnituredirectory.com> disputed domain name resolves to a parked website offering links to other websites for furniture products manufactured or distributed by competitors of the Complainant, such as Crate & Barrel and Macy’s.

8.      The <ashley-furniture-tampa.com> disputed domain name resolves to a webpage that contains a picture stating “Website is Down,” which may confuse customers searching for Complainant’s products.

9.      Respondent does not have rights or legitimate interests in the disputed domain names.

10.    Respondent registered and uses the disputed domain names in bad faith due to disruption, commercial benefit, and inactive holding.

 

B. Respondent

Respondent did not submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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

 

Complainant provides the Panel with a copy of its USPTO trademark registration certificate for its ASHLEY mark (Reg. No. 1,600,879; registered June 12, 1990), the A ASHLEY FURNITURE INDUSTRIES mark (Reg. No. 1,604,686; registered July 3, 1990), and the A ASHLEY FURNITURE mark (Reg. No. 2,894,665; registered October 19, 2004). Complainant’s USPTO trademark registrations are evidence that Complainant holds rights in these marks for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s domain names are confusingly similar to all of its marks identified above. The Panel chooses to analyze confusing similarity by comparing the disputed domain names to Complainant’s ASHLEY mark for simplicity’s sake. Complainant argues that the disputed domain names <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com> incorporate Complainant’s ASHLEY mark in its entirety, adding only the generic term “directory” or the geographic term “tampa,” respectively.  Both the disputed domain names also add the descriptive term “furniture” to marks along with the generic top-level domain (“gTLD”) “.com,” and the <ashley-furniture-tampa.com> domain name inserts hyphens between the words. The Panel agrees with Complainant and finds that the <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com> domain names are confusingly similar to Complainant’s ASHLEY mark under Policy ¶ 4(a)(i) as none of the identified changes substantially differentiate the disputed domain names from the 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)); see also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark); Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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.”).

 

According to Complainant, Respondent is not affiliated, connected, or associated with Complainant and Complainant did not authorize Respondent’s use of the ASHLEY mark. The WHOIS database identifies “GoDaddy.com” as the registrant of the <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com> domain names, which is not similar to the domain names. Respondent did not present any evidence that it is commonly known by the disputed domain names. Consequently, the Panel determines that Respondent is not commonly known by the disputed domain names pursuant to Policy  ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

 

Complainant argues that <ashleyfurnituredirectory.com> disputed domain name resolves to a website that hosts hyperlinks to unrelated, third-party websites. Complainant asserts that Respondent commercially gains from these hyperlinks by receiving click-through fees. Complainant argues that this parked website is evidence that Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. Based on the evidence in the record, the Panel finds that Respondent’s use of the disputed domain name <ashleyfurnituredirectory.com> to host unrelated hyperlinks is neither a Policy  ¶ 4(c)(i) bona fide offering of goods or services nor a  ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Complainant argues that Respondent has made an inactive holding of the <ashley-furniture-tampa.com> domain name. Complainant states that the website states “Website is Down” and claims that this message may deter potential customers who are seeking Complainant’s furniture products. The Panel finds that this inactive holding of the disputed domain name is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and uses the confusingly similar <ashleyfurnituredirectory.com> domain names to capitalize on the goodwill associated with Complainant’s ASHLEY mark. Complainant contends that the <ashleyfurnituredirectory.com> domain name resolves to a parked website offering hyperlinks to other furniture competitors. Complainant also avers that Respondent earns a click-through fee each time an Internet user clicks on one of the unrelated hyperlinks. Complainant argues that Respondent attempts to create confusion as to Complainant’s affiliation with the disputed domain name. The Panel determines that Respondent is attempting to create and profit from Internet user confusion, and the Panel concludes that Respondent registered and uses the disputed domain name in bad faith pursuant to ¶ 4(b)(iv). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

In regards to the <ashley-furniture-tampa.com> domain name, the enumerated Policy ¶ 4(b) factors are not exhaustive. Thus, the Panel determines that the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

Complainant argues that Respondent registered and uses the <ashley-furniture-tampa.com> domain name in bad faith through an inactive holding. Complainant asserts that the domain name reflects, “Website is down,” which would misleadingly divert customers who are searching for Complainant’s furniture products. The Panel finds that Respondent has registered and uses the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Complainant asserts that, due to its extensive trademark registrations that include ASHLEY, A ASHLEY FURNITURE INDUSTRIES, and A ASHLEY FURNITURE marks, Respondent must have had constructive knowledge of Complainant's rights in the ASHLEY mark when Respondent registered the disputed domain names. Complainant further argues that the advertisements for competing furniture products, the same type of products offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, in concluding that Respondent registered the <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com> domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

Complainant has proven this element.

 

DECISION

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 <ashleyfurnituredirectory.com> and <ashley-furniture-tampa.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  July 5, 2012