Ashley Furniture Industries, Inc. v. 3rd Domain / 3rdDomain
Claim Number: FA1206001448546
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is 3rd Domain / 3rdDomain (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleysalesfurniture.com>, registered with Webfusion Ltd.
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.
Richard Hill 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 July 3, 2012, Webfusion Ltd. confirmed by e-mail to the National Arbitration Forum that the <ashleysalesfurniture.com> domain name is registered with Webfusion Ltd. and that Respondent is the current registrant of the name. Webfusion Ltd. has verified that Respondent is bound by the Webfusion 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 July 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@ashleysalesfurniture.com. Also on July 3, 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 July 24, 2012.
An Additional Submission from the Complainant was received on July 31, 2012. The Additional Submission did not comply with Supplemental Rule 7.
On July 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it is the owner of the registered trademarks ASHLEY, “A ASHLEY FURNITURE”, and “A ASHLEY FURNITURE INDUSTRIES”, used to market various goods and services including in the field of furniture. These marks were registered in 1990, 2004 and 1990, respectively. The mark ASHLEY has been in use to market furniture since at least 1946. The Complainant filed for an international trademark “A ASHLEY FURNITURE INDUSTRIES” in February 2011; that international trademark is valid in the United Kingdom.
According to the Complainant, the disputed domain name is confusingly similar to its marks because it incorporates the mark ASHLEY and the dominant and distinctive portion of the other marks, with the only substantive difference being the addition of the non-distinctive term “sales” as part of the disputed domain name.
The Complainant states that the disputed domain name was registered on 30 April 2011, well after the Complainant’s marks were registered and used.
Further, says the Complainant, on 8 May 2012 the Respondent indicated by e-mail that the registration of the disputed domain name “forms part of a limited company formed in the UK under registration number 07633269 Ashley Sales Furniture Ltd and as such is a key part of the companies’ trading plans”. The Complainant provides as evidence a web site print-out confirming that the Respondent did indeed register a UK company as stated.
The Complainant states (and provides evidence to prove) that the cited company was incorporated on 13 May 2011, just three months after the Complainant registered its international trademark.
According to the Complainant, the Respondent is not commonly known by the disputed domain name, is not a customer of the Complainant, and has not been licensed or otherwise authorized to use the Complainant’s marks.
The Complainant states (and provides evidence to prove) that the website at the disputed domain name is used to offer for sale furniture goods not manufactured or distributed by the Complainant. Presumably the Respondent is seeking to profit by using the Complainant’s marks to host a website offering for sale products not manufactured or distributed by the Complainant. Consumers trying to locate the Complainant’s furniture products or stores may be diverted to the products offered on the Respondent’s website, thinking that the domain name and website are owned by or associated with the Complainant.
According to the Complainant, this is not a legitimate noncommercial or fair use of the domain name without intent for commercial gain. On the contrary, it is bad faith use in the sense of the Policy.
B. Respondent
The Response, sent in the form of an E-Mail from an E-Mail account whose name does not appear to have any relation to the Respondent’s furniture sales company or to the disputed domain name, is reproduced verbatim below:
As I have previously advised the complainant the domain was registered as part of a business plans for my own company Ashley Sales Furniture Ltd.
I had no knowledge of the complainant’s company until contacted by them and fail to see how Ashley Sales Furniture can be construed in any way to be seeking to trade on the complainants name as we are a UK based company selling to consumers within the UK so there would be no benefit to us to attract customers on another continent.
The complainant also states that I should have had constructive if not actual knowledge of their UK registered trademark Ashley Furniture Industries which even if I did does not reflect my companies name Ashley Sales Furniture having no mention of “Industries” and being sanctioned by companies house in the UK by the regulating government body.
As you and the complainant can see from my website I have not made any attempt to trade on the complainant’s company name or to attract customers looking for their products to my own website as I intend to retail products not produced or supplied by the complainant.
C. Additional Submissions
The Complainant’s Additional Submission was not compliant with Supplemental Rule 7. Pursuant to 10, 12, and 15(a) of the Rules, the Panel has decided not to consider the Complainant’s Additional Submission because it is not compliant with the Supplemental Rules and because not considering it does not prejudice the Complainant.
The Complainant owns the registered trademarks ASHLEY and “A ASHLEY FURNITURE”, registered respectively in 1990 and 2004.
The Complainant registered the international mark “A ASHLEY FURNITURE INDUSTRIES” in February 2011. That mark is valid in the UK.
The disputed domain name was registered on April 30, 2011.
The Respondent registered in the UK a company called “Ashley Sales Furniture” on May 13, 2011.
The Complainant did not license or otherwise authorize the Respondent to use its marks.
The Respondent is using the disputed domain name to point to a website offering for sale various furniture products not related to the Complainant’s products.
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.
The Respondent does not contest the Complainant’s allegation that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s marks.
The Panel notes that the disputed domain name removes the letter “A”, the space between terms, and the generic term “Industries” from Complainant’s registered UK mark “A ASHLEY FURNITURE INDUSTRIES”, while adding the generic term “sales”. The Panel holds that the removal of a space and a portion of Complainant’s mark and the addition of a generic term fail to adequately distinguish the disputed domain name from Complainant’s mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Thus the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark in the sense of the Policy.
It is not contested that the Respondent is using the disputed domain name to host a website that purports to sell furniture products that directly compete with the Complainant’s furniture products and that the Respondent intends to profit from the sale of these furniture products. Therefore, the Respondent’s use of the disputed domain name to offer competing furniture products is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
It is not contested that the Respondent incorporated a UK company whose name is identical to the disputed domain name. However, this company was incorporated a mere three months after the Complainant registered its mark in the UK. The Respondent states that it was not aware of the Complainant’s marks when it registered the disputed domain name and that it has not made any attempt to trade on the Complainant’s company name or to attract customers looking for their products to its own website. The last statement is at best disingenuous, because the web site at the disputed domain name could attract customers looking for the Complainant’s products and thus it could result in trading on the Complainant’s mark.
The Panel notes that the Respondent, a UK-based company, chose to register the disputed domain name in the “.com” domain, rather than the “co.uk” domain, which is of course permissible, but an indication that the Respondent is perhaps not seeking a purely UK client base, contrary to what it states in its Response.
Previous panels have held that long-term prior use of a company name prior to registration of a domain name established rights and legitimate interests in the domain name. See, e.g., Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
But, in the present case, the disputed domain name was registered a few days before the Respondent’s company, and it was registered three months after the Complainant registered its mark in the UK.
The Complainant clearly and specifically alleges that the fact that the Respondent registered its company and its domain name shortly after the Complainant’s filing for an international mark is significant. The Respondent does not reply to this allegation but admits that it is in the furniture business.
In accordance with 14(b) of the Rules and generally accepted legal principles, the Panel is free to draw such inferences as it considers appropriate from the Respondent’s failure to reply to a specific allegation.
Consequently, the Panel finds that the Respondent, who admits being in the furniture business, registered the disputed domain name under “.com” with the intent of profiting from its similarity with the Complainant’s marks. Thus, the Respondent does not have rights or a legitimate interest in the disputed domain name.
The Complainant contends that the Respondent registered and uses the disputed domain name for the purpose of commercially gaining by misleadingly diverting consumers. Internet users may access the resolving website when attempting to find the Complainant online. These Internet users would likely think that the Respondent’s competing furniture products are owned by, associated with, or endorsed by the Complainant. The Respondent admits that it intends to profit from the sale of the furniture. Thus, the Panel finds that the Respondent is attempting to create Internet user confusion in order to commercially gain, and that the Respondent registered and uses the disputed domain name domain name in bad faith under Policy ¶ 4(b)(iv). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion; see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleysalesfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 2, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page