national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Private Registration / WhoisGuardService.com

Claim Number: FA1206001448492

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin.  Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyfurniturestores.com>, registered with Nanjing Imperiosus Technology Co. Ltd.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 14, 2012. The Complaint was received in both Chinese and English.

 

On June 20, 2012, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturestores.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name.  Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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On June 22, 2012, Complainant requested that the case be withdrawn without prejudice pursuant to Forum Supplemental Rule 12(a)(i).

 

On June 25, 2012, the National Arbitration granted Forum Complainant’s request and dismissed the case without prejudice.

 

On June 28, 2012, Complainant recommenced the case pursuant to Forum Supplemental Rule 12(a)(ii) by filing an Amended Complainant, translated into the Chinese language. 

 

On June 28, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 18, 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@ashleyfurniturestores.com.  Also on June 28, 2012, the Chinese language 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 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq. 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <ashleyfurniturestores.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ASHLEY and AASHLEY FURNITURE marks.

 

Respondent does not have any rights or legitimate interests in the domain name at issue.

 

Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has been selling furniture in U.S.A. interstate commerce since 1946 and owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY and related marks:

ASHLEY

Reg. No. 1,600,879 registered June 12, 1990;

AASHLEY FURNITURE INDUSTRIES mark & Design

Reg. No. 1,604,686 registered July 3, 1990;

AASHLEY FURNITURE

Reg. No. 2,894,665 registered October 19, 2004.

The WHOIS information indicates that Respondent’s <ashleyfurniturestores.com> domain name was created February 14, 2012, more than a decade after the Complainant began using its trademark.

Complainant’s use of the ASHLEY mark has been continuous and substantial.

Respondent had constructive knowledge of Complainant’s registration of the ASHLEY mark and has registered the <ashleyfurniturestores.com> with a proxy service making it difficult to decipher if Respondent is commonly known by the disputed domain name, but if Respondent were commonly known by the disputed domain name it is unlikely that Respondent would be employing a proxy service.  The <ashleyfurniturestores.com> domain name is being used to host a “parked” website, which consists only of links to other websites that offer furniture manufactured or distributed by competitors of Complainant and Respondent, presumably, receives compensation for allowing its <ashleyfurniturestores.com> domain name to be used to host a “parked” website.

 

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 owns a trademark registration with the USPTO for its ASHLEY mark (Reg. No. 1,600,879 registered June 12, 1990).  Accordingly, Complainant has sufficiently established rights in the ASHLEY mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark 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)). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See 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); see also 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).

 

Respondent’s <ashleyfurniturestores.com> domain incorporates Complainant’s entire ASHLEY mark with the addition of the descriptive term “stores.” Respondent also adds the descriptive term “furniture” and the generic top-level domain (“gTLD”) “.com.”  These distinctions are insufficient to differentiate a disputed domain name from a 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 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 Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that Respondent’s <ashleyfurniturestores.com>  disputed domain name is confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

 

 

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.”).

 

The  <ashleyfurniturestores.com> domain name is registered through a proxy service and, therefore, it cannot be determined if Respondent is commonly known by the <ashleyfurniturestores.com> domain name. Complainant suggests that if Respondent were commonly known by the <ashleyfurniturestores.com> domain name and had a legitimate interest, it is unlikely that Respondent would be using a proxy service. Complainant does not have any customers with Respondent’s address and, further, Complainant has not licensed or otherwise authorized Respondent to use its ASHLEY mark. There is no further indication that Respondent is commonly known by the disputed domain name.  Accordingly, the Panel concludes that Respondent has no rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the <ashleyfurniturestores.com> domain name to resolve to a “parked” website featuring links to third party websites of competitors of Complainant. Screenshots of the resolving website feature links such as “Paula Deen Furniture,” “Living Room Furniture,” “Lamps Plus- Official Site,” “Ashley Furniture Sale,” “Latest Mr. Brown Furniture,” “Discount Furniture,” “Computer Lab Furniture,” “Homelegance,” “Sears Furniture Sale,” and “Sauder Bedroom Furniture.” Respondent receives compensation for allowing its <ashleyfurniturestores.com> domain name to be used as a “parked” website and such use of the disputed domain name to feature pay-per-click links for competing products of third parties does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use interest under Policy ¶¶ 4(c)(i) and 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s <ashleyfurniturestores.com> website by creating a likelihood of confusion with the Complainant’s registered trademark. Respondent’s intentions are evidenced by a screenshot of Respondent’s resolving website featuring only links to other websites offering furniture products in competition with Complainant’s business. Respondent presumably receives compensation from these links.   The domain name appears to have been registered and is being used in bad faith under Policy 4(b)(iv) because it is attracting consumers and Respondent is financially profiting by creating a likelihood of confusion with Complainant’s mark. 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Complainant’s marks were registered years before Respondent registered the disputed domain name and it is therefore inconceivable that Respondent could have registered the <ashleyfurniturestores.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark.  UDRP case precedent generally declines to find bad faith as a result of constructive knowledge alone. See The 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."). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and this is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ashleyfurniturestores.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  July 28, 2012

 

 

 

 

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