Ashley Furniture Industries, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1207001452756
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com>, registered with Registermatrix.com Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the National Arbitration Forum received payment on July 11, 2012.
On July 15, 2012, Registermatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names are registered with Registermatrix.com Corp. and that Respondent is the current registrant of the names. Registermatrix.com Corp. has verified that Respondent is bound by the Registermatrix.com Corp. 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 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@ashleyfirniturehomestore.com and postmaster@ashleyfurmiturehomestore.com. Also on July 23, 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 August 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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:
1. Respondent’s <ashleyfirniturehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark.
2. Respondent does not have any rights or legitimate interests in the <ashleyfirniturehomestore.com> domain name.
3. Respondent registered or used the <ashleyfirniturehomestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 contends that it has rights in the ASHLEY FURNITURE HOMESTORE mark, which Complainant claims it uses in connection with retail furniture goods and services. Complainant provides the Panel with evidence that Complainant is the owner of a trademark registration for the ASHLEY FURNITURE HOMESTORE mark (Reg. No. 2,680,466 registered January 28, 2003) with the USPTO. Panels have found that, regardless of the location of the parties, the registration of a mark with a trademark authority is sufficient evidence of rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under 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). Therefore, the Panel finds that Complainant has rights in the ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).
Complainant next alleges that Respondent’s <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names are confusingly similar to Complainant’s mark. The Panel finds that Respondent’s deletion of spaces and addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) discussion. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Additionally, the Panel finds that the misspelling of a mark by one letter fails to negate a finding of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Therefore, the Panel finds that Respondent’s <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names are confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).
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 Panel notes that Respondent did not respond to this case and, therefore, did not present any evidence that it is commonly known by the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names. In examining the record, the Panel finds that the WHOIS information for the disputed domain names lists the registrant of the domain names as “PrivacyProtect.org / Domain Admin,” which the Panel determines is not similar to either of the disputed domain names. Complainant, for its part, argues that Respondent is not a customer of Complainant and that Respondent is not authorized or licensed Respondent to use Complainant’s ASHLEY FURNITURE HOMESTORE mark. In light of the lack of a Response, the evidence in the record, and Complainant’s contentions, the Panel concludes that Respondent is not commonly known by the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names pursuant to 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).
Complainant argues that Respondent uses the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names to resolve to “parked” websites that only contain hyperlinks to other websites, including websites that offer competing furniture products, such as Macy’s. Complainant provides screen print captures in support of its argument. See Complainant’s Exhibit 1. Complainant claims that Internet users attempting to locate Complainant may be diverted to Complainant’s customers due to Respondent’s use of the disputed domain names. Complainant avers that Respondent receives compensation for allowing its domain names to host “parked” websites. Therefore, Complainant contends that Respondent’s use is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names. The Panel agrees and the Panel finds accordingly. 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).
Complainant claims that Respondent’s registration and use of the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names diverts potential customers from Complainant’s website to the websites of Complainant’s competitors, which Complainant asserts is to the competitive disadvantage of Complainant. As noted above, Complainant alleges that Respondent’s disputed domain names resolve to websites containing third-party hyperlinks that resolve to the websites of Complainant’s competitors. The Panel finds that Respondent’s registration and use of the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names disrupt Complainant’s business, and the Panel holds that Respondent registered and uses the disputed domain names under Policy ¶ 4(b)(iv). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that in light of the fame and notoriety of Complainant's ASHLEY FURNITURE HOMESTORE mark, it is inconceivable that Respondent could have registered the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names without constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See 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."). The Panel determines that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfirniturehomestore.com> and <ashleyfurmiturehomestore.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 27, 2012
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