Ashley Furniture Industries, Inc. v. Wanzhongmedia / Zhong Wan
Claim Number: FA1206001448562
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturehomstore.com>, registered with EURODNS S.A.
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.
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, EURODNS S.A. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturehomstore.com> domain name is registered with EURODNS S.A. and that Respondent is the current registrant of the names. EURODNS S.A. has verified that Respondent is bound by the EURODNS S.A. 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@ashleyfurniturehomstore.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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Policy ¶ 4(a)(i)
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY (Reg. No. 1,600,879 registered June 12, 1990) and ASHLEY FURNITURE HOMESTORE marks (Reg. No. 2,680,466 registered January 28, 2003).
2. The <ashleyfurniturehomstore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark because it contains a misspelling of the term “homestore” and the generic top-level domain (“gTLD”) “.com.”
· Policy ¶ 4(a)(ii)
1. Respondent is not a customer of Complainant and Complainant did not license or authorize Respondent to use Complainant’s marks.
2. The <ashleyfurniturehomstore.com> domain name currently resolves to a parked website that hosts hyperlinks resolving to the websites of Complainant’s competitors.
3. The disputed domain name formerly resolved to a website that sold competing furniture products.
· Policy ¶ 4(a)(iii)
1. Respondent’s registration and use of the <ashleyfurniturehomstore.com> domain name creates a competitive disadvantage for Complainant because Respondent diverts Complainant’s customers to Complainant’s competitors.
2. Respondent had actual and constructive knowledge of Complainant’s rights in the ASHLEY and ASHLEY FURNITURE HOMESTORE marks.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 argues that it owns trademark registrations with the USPTO for its ASHLEY (Reg. No. 1,600,879 registered June 12, 1990) and ASHLEY FURNITURE HOMESTORE marks (Reg. No. 2,680,466 registered January 28, 2003). Complainant provides evidence of its trademark registrations. The Panel finds that Complainant owns rights in the ASHLEY and ASHLEY FURNITURE HOMESTORE marks for the purposes of Policy ¶ 4(a)(i), regardless of Respondent’s location. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to 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).
Complainant alleges that the <ashleyfurniturehomstore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark. Complainant claims that the disputed domain name contains a misspelling of the term “homestore” and the gTLD “.com.” The disputed domain name does not contain the spaces found in Complainant’s ASHLEY FURNITURE HOMESTORE mark. These alterations fail to adequately distinguish the disputed domain name from Complainant’s mark, and the Panel holds that Respondent’s <ashleyfurniturehomstore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); 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.”).
Complainant has proven this element.
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 known by any of the terms in the <ashleyfurniturehomstore.com> domain name. Complainant contends that Respondent is not a customer of Complainant and that Complainant did not license or authorize Respondent to use Complainant’s marks. The WHOIS information identifies “Wanzhongmedia / Zhong Wan” as the registrant of the disputed domain name. Respondent did not respond to this case and did not contradict any of Complainant’s claims. Consequently, the Panel concludes that Respondent is not commonly known by the <ashleyfurniturehomstore.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that the <ashleyfurniturehomstore.com> domain name currently resolves to a parked website that hosts hyperlinks resolving to the websites of Complainant’s competitors. Complainant claims that the disputed domain name formerly resolved to a website that sold competing furniture products. Complainant contends that both uses divert Complainant’s customers from Complainant’s business to competing business and that Respondent profits from both uses. The Panel finds that Respondent is making 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 <ashleyfurniturehomstore.com> domain name. See ; see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant has proven this element.
Complainant contends that Respondent’s registration and use of the <ashleyfurniturehomstore.com> domain name creates a competitive disadvantage for Complainant because Respondent diverts Complainant’s customers to Complainant’s competitors. Complainant alleges that Respondent formerly used the <ashleyfurniturehomstore.com> domain name to sell competing furniture products and currently uses the disputed domain name to host competing hyperlinks. The Panel determines that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business, and the Panel finds that Respondent registered and uses the <ashleyfurniturehomstore.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also 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).”).
Complainant asserts that its trademark registrations for the ASHLEY and ASHLEY FURNITURE HOMESTORE marks existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. The Panel finds that, due to the fame of Complainant's marks, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); 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)."
Complainant has proven this element.
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 <ashleyfurniturehomstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2012
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