national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v Privacy Ltd. Disclosed Agent for YOLAPT

Claim Number: FA1207001452775

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyshomestores.com>, registered with Fabulous.Com Pty Ltd.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

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 11, 2012, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <ashleyshomestores.com> domain name is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.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 July 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@ashleyshomestores.com.  Also on July 17, 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 8, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant is the owner of the ASHLEY HOMESTORES mark which it uses in connection with retail furniture goods and services.

2.    Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the ASHLEY HOMESTORE mark (Reg. No. 2,231,864 registered March 16, 1999).

3.    The <ashleyshomestores.com> domain name is confusingly similar to the ASHLEY HOMESTORES mark.

4.    Respondent has not been licensed or authorized to use the <ashleyshomestores.com> domain name or the ASHLEY HOMESTORES mark.

5.    The <ashleyshomestores.com> domain name resolves to a website where Respondent displays a variety of links, some of which are to Complainant’s competitors’ websites.

6.    Respondent attempts to create an association between the <ashleyshomestores.com> domain name and Complainant.

7.    Respondent registered the <ashleyshomestores.com> domain name with constructive and actual knowledge of Complainant’s rights in the ASHLEY HOMESTORES mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

            For the reasons set forth below, the Panel finds Complainant is entitled to the

            relief requested.

 

 

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 contends that it is the owner of the ASHLEY HOMESTORES mark, used in connection with retail furniture goods and services. Complainant provides the Panel with evidence of its ownership of United States Patent and Trademark Office (“USPTO”) registration for the ASHLEY HOMESTORES mark (Reg. No. 2,231,864 registered March 16, 1999). Panels have found that the registration of a mark is evidence of rights in that mark, regardless of the location of the parties. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the ASHLEY HOMESTORES mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that the <ashleyshomestores.com> domain name is confusingly similar to the ASHLEY HOMESTORES mark. Panels have found that the addition of a single letter to a mark in a domain name does not 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). Panels have also held that the deletion of spaces and addition of a generic top-level domain (“gTLD”) fails to distinguish the disputed domain name from the mark at issue. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <ashleyshomestores.com> domain name is confusingly similar to Complainant’s ASHLEY HOMESTORES mark under Policy ¶ 4(a)(i).

 

Complaint has proven this element.

 

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.”).

 

Complainant contends that Respondent does not have rights or legitimate interests in the <ashleyshomestores.com> domain name. Complainant argues that Respondent is not a customer of Complainant and has not been licensed or otherwise authorized to use the ASHLEY HOMESTORES mark. The WHOIS record for the <ashleyshomestores.com> domain name lists “Privacy Ltd. Disclosed Agent for YOLAPT” as the domain name registrant. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel held that the information on the record, including the WHOIS listing, were illustrative of whether the respondent was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the <ashleyshomestores.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant next alleges that the <ashleyshomestores.com> domain name is being used in a way which does not give Respondent rights or legitimate interests. Complainant asserts that the <ashleyshomestores.com> domain name resolves to a website which displays only links to third-party websites, some of which are competing with Complainant in the furniture industry. Panels have found that the use of a disputed domain name to display links to competing websites and others does not fall within the protective bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds Respondent’s use of the <ashleyshomestores.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <ashleyshomestores.com> domain name in bad faith. Complainant asserts that the disputed domain name resolves to a website displaying links to competing websites and that consumers trying to locate Complainant’s products may be diverted to these websites. Complainant asserts that this is to the competitive disadvantage of Complainant despite it being Complainant’s mark which is used to accomplish this feat. Complainant asserts that Internet users will falsely believe that the disputed domain name is owned by or at least associated with Complainant. The Panel infers Respondent is benefitting commercially from the display of these links and/or for the diversion of Internet users through the links. Therefore, the Panel finds Respondent, in bad faith, took advantage of Internet users’ mistakes by creating a likelihood of confusion pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Complainant also contends that in light of the federal trademark registrations for the ASHLEY HOMESTORES mark and Complainant’s extensive use of the mark, it is inconceivable that Respondent could have registered the <ashleyshomestores.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and thus 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).

 

Complainant has proven this element.

 

DECISION

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 <ashleyshomestores.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  August 21, 2012

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page