Ashley Furniture Industries, Inc. v. Cearbhail O'Duimsigh
Claim Number: FA1208001456876
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Cearbhail O'Duimsigh (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfurnituresale.net> and <ashleyfurniturereviews.net>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2012; the National Arbitration Forum received payment on August 8, 2012.
On August 8, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituresale.net> and <ashleyfurniturereviews.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@ashleyfurnituresale.net and postmaster@ashleyfurniturereviews.net. Also on August 8, 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 September 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant registered the ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879 registered June 12, 1990).
2. Respondent’s <ashleyfurnituresale.net> and <ashleyfurniturereviews.net> domain names are confusingly similar to Complainant’s ASHLEY mark.
3. Respondent has no rights or legitimate interests in respect of the disputed domain names.
4. Respondent is not known by the disputed domain names.
5. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
6. The disputed domain names have been registered and are being used in bad faith.
7. The disputed domain names resolve to a website offering links to Complainant’s competitors, like Pottery Barn.
8. Respondent uses the disputed domain names for commercial purposes to divert Internet users to its own website by creating a likelihood of confusion with Complainant’s ASHLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the furniture industry.
2. Complainant registered the ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879 registered June 12, 1990).
3. Respondent registered the <ashleyfurnituresale.net> and <ashleyfurniturereviews.net> domain names on April 2, 2011. The disputed domain names resolve to a parked website featuring links to third-party websites which promote products that directly compete with Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to have established its rights in the ASHLEY mark when Complainant registered the mark with the USPTO (e.g., Reg. No. 1,600,879 registered June 12, 1990). Complainant submits a trademark certificate issued by the USPTO, which the Panel notes demonstrates that the ASHLEY mark is registered and also lists Complainant as the owner of the registration. See Complainant’s Exhibit 2. Therefore, the Panel concludes that Complainant established its rights in the ASHLEY mark under Policy ¶ 4(a) (i) even if Complainant did not submit evidence of any registrations for the mark issued by Respondent’s country of residence. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ASHLEY mark. Complainant claims that Respondent’s <ashleyfurnituresale.net> and <ashleyfurniturereviews.net> domain names are confusingly similar to Complainant’s ASHLEY mark. The Panel notes that the disputed domain names include the entire mark, while adding the descriptive terms “furnituresale” and “furniturereviews” respectively and, in each case, the generic top-level domain (“gTLD”) “.net.” The Panel concludes that Respondent failed to differentiate the disputed domain names from Complainant’s ASHLEY mark sufficiently, for it is well known that Complainant is in the furniture industry and that the sale and review of products are common features of that industry. The Panel accordingly finds that Complainant’s mark and Respondent’s disputed domain names are confusingly similar under Policy ¶ 4(a) (i). See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s well known ASHLEY trademark and to use it in its domain names, adding the the descriptive terms “ furnituresale” and “ furniturereviews” respectively and, as it is well known that Complainant is in the furniture industry and that the sale and review of products are common features of that industry, this enhances the confusing similarity between the domain names and the trademark;
(b) Respondent has then decided to use the domain names to resolve to a parked website featuring links to third-party websites which promote products that directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that Respondent is not known by the disputed domain names. The Panel notes that the WHOIS information identifies the registrant of the disputed domain names as “Cearbhail O'Duimsigh.” The Panel further notes that Respondent failed to offer any evidence that it is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the <ashleyfurnituresale.net> and <ashleyfurniturereviews.net> domain names under Policy ¶ 4(c) (ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
(e) Complainant also asserts 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. Complainant states that Respondent resolves the disputed domain names to a website offering links to Complainant’s competitors, like Pottery Barn. Complainant provides a printout from the resolving website, which the Panel notes depicts a website offering links to furniture companies, as well as information about Complainant’s products. See Complainant’s Exhibit 1. Thus, the Panel concludes that Respondent is not making a bona fide offering of goods or services Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c) (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business.”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent uses the disputed domain names for commercial purposes to divert Internet users to its own website by creating a likelihood of confusion with Complainant’s ASHLEY mark. Complainant states that Respondent resolves the disputed domain names to a website offering links to Complainant’s competitors, like Pottery Barn. As the Panel finds that Respondent is attempting to confuse Internet users into patronizing Respondent’s website and then gaining commercially from the confusion, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Secondly, in addition and having regard to the totality of the evidence, including the structure of the domain names using the ASHLEY mark and the clear attempt by Respondent to give the impression that they are official domain names of Complainant and that they will lead to official websites of Complainant, the Panel finds that, in view of Respondent’s registration of the disputed domain names and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnituresale.net> and <ashleyfurniturereviews.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 5, 2012
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