Ashley Furniture Industries, Inc. v. Above.com Domain Privacy
Claim Number: FA1206001448506
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfuniter.com>, <ashleyfurniturehomrstore.com>, <ashleyfurntiturehomestore.com>, <ashleyfurnturestore.com>, and <ashleycompany.com>, registered with ABOVE.COM PTY LTD.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 14, 2012.
On June 14, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <<ashleyfuniter.com>, <ashleyfurniturehomrstore.com>, <ashleyfurntiturehomestore.com>, <ashleyfurnturestore.com>, and <ashleycompany.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY 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 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@ashleyfuniter.com, postmaster@ashleyfurniturehomrstore.com, postmaster@ashleyfurntiturehomestore.com, postmaster@ashleyfurnturestore.com, and postmaster@ashleycompany.com. Also on June 14, 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 11, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <ashleyfuniter.com>, <ashleyfurniturehomrstore.com>, <ashleyfurntiturehomestore.com>, <ashleyfurnturestore.com>, and <ashleycompany.com> domain names, the domain names at issue, are confusingly similar to Complainant’s ASHLEY mark.
Respondent does not have any rights or legitimate interests in the domain names at issue.
Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the registration issued by the United States Patent and Trademark Office (“USPTO”) for the ASHLEY mark (e.g., Reg. No. 1,600.879 registered June 12, 1990) and has used that mark in connection with the sale of furniture since 1946. The disputed domain names were registered on different dates with March 13, 2011 being the earliest. Complainant has not licensed or otherwise authorized Respondent to use its registered mark. The disputed domain names all resolve to websites offering links to Complainant’s competitors in the furniture industry. Respondent had constructive knowledge, if not actual knowledge, of Complainant’s rights in the ASHLEY mark. Respondent failed to file a Response in this matter.
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 registered the ASHLEY mark with the USPTO (e.g., Reg. No. 1,600.879 registered June 12, 1990) and has used it in commerce to sell furniture since 1946. Accordingly, Complainant has established its rights in ASHLEY mark under 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 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).
Respondent’s <ashleyfuniter.com>, <ashleyfurniturehomrstore.com>, <ashleyfurntiturehomestore.com>, <ashleyfurnturestore.com>, and <ashleycompany.com> domain names are confusingly similar to Complainant’s ASHLEY mark. The disputed domain names all include the ASHLEY mark in its entirety along with the generic top-level domain (“gTLD”) “.com.” The disputed domain names separately include the descriptive terms “furniture,” “homestore,” “store,” and “company.” Respondent failed to sufficiently differentiate the disputed domain names from Complainant’s ASHLEY mark, and the Panel concludes that the domain names are confusingly similar to the mark for the purposes of 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 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).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not authorized or otherwise licensed to use Complainant’s ASHLEY mark. The WHOIS information for the disputed domain names identifies the registrant as “Above.com Domain Privacy.” Respondent is not commonly known by the disputed domain names 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 is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to websites offering links to third-party businesses, some of which compete with Complainant, including JC Penney, Pottery Barn, and Office Max. Accordingly, the Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain names to mislead consumers and gain commercially off of the disputed domain names. The disputed domain names resolve to websites offering link to third parties, many of which are its competitors in the furniture industry, like Pottery Barn and JC Penney. Respondent is attempting to mislead or confuse Internet users into visiting its websites and then gaining commercially. The Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent had constructive, if not actual, knowledge of Complainant’s rights in the ASHLEY mark. Complainant’s trademark registration for the ASHLEY mark, along with multiple other alleged marks, predate Respondent’s registration of the disputed domain names by multiple years. Although some panels have declined to find bad faith as a result of constructive knowledge, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ASHLEY mark when Respondent registered the disputed domain names and did so in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfuniter.com>, <ashleyfurniturehomrstore.com>, <ashleyfurntiturehomestore.com>, <ashleyfurnturestore.com>, and <ashleycompany.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 18, 2012
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