Ashley Furniture Industries, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1208001458943
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyhomefurniturestore.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
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 21, 2012; the National Arbitration Forum received payment on August 23, 2012.
On August 22, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <ashleyhomefurniturestore.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com 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 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@ashleyhomefurniturestore.com. Also on August 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 September 18, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
1. Complainant owns trademark registrations for the ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879 registered June 12, 1990). See Complainant’s Exhibit 2.
2. Complainant uses the ASHLEY mark in connection with furniture products and services.
3. Respondent registered the <ashleyhomefurniturestore.com> domain name on October 1, 2005.
4. Respondent’s <ashleyhomefurniturestore.com> domain name is confusingly similar to Complainant’s ASHLEY mark.
5. Respondent has no rights or legitimate interests in respect of the domain name.
6. Respondent is not authorized or licensed to use Complainant’s ASHLEY mark.
7. The domain name has been registered and is being used in bad faith.
8. Respondent uses the <ashleyhomefurniturestore.com> domain name to resolve to a parked website that contains hyperlinks to websites that sell competing furniture products, such as Pottery Barn. See Complainant’s Exhibit 1.
9. Respondent diverts Internet users from Complainant’s business to the websites of Complainant’s competitors to the competitive disadvantage of Complainant.
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 owns trademark registrations for 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 <ashleyhomefurniturestore.com> domain name on October 1, 2005.
4.Respondent uses the <ashleyhomefurniturestore.com> domain name to resolve to a parked website that contains hyperlinks to websites that sell competing furniture products and by that means diverts Internet users from Complainant’s business to the websites of Complainant’s competitors to the competitive disadvantage of Complainant.
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 submits that it owns trademark registrations for the ASHLEY mark with the USPTO (e.g., Reg. No. 1,600,879 registered June 12, 1990). See Complainant’s Exhibit 2. Complainant claims that it uses the ASHLEY mark in connection with furniture products and services. Based on Complainant’s trademark registrations with the USPTO and its use of the mark in commerce, Complainant contends that it owns rights in the ASHLEY mark. The Panel notes that Respondent does not reside or operate in the United States. The Panel determines that Complainant is not required to prove that it has registered its ASHLEY mark in the country in which that Respondent operates, as long as Complainant can demonstrate rights in the mark in the United States. See 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 holds that Complainant owns rights in the ASHLEY mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ASHLEY mark. Complainant contends that Respondent’s <ashleyhomefurniturestore.com> domain name is confusingly similar to Complainant’s ASHLEY mark. Complainant argues that the disputed domain name contains Complainant’s ASHLEY mark, the re-arranging of terms that describe Complainant by the addition of the descriptive words “home”, “furniture” and “store and the addition of the generic top-level domain (“gTLD”) “.com.” As the Panel finds that the additions of descriptive terms and a gTLD do not adequately distinguish a disputed domain name from a complainant’s mark, the Panel concludes that Respondent’s <ashleyhomefurniturestore.com> domain name is confusingly similar to Complainant’s ASHLEY mark for the purpose of Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
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 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ASHLEY trademark and to use it in its domain name, adding the descriptive words “home”, “furniture” and “store”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name to resolve to a parked website that contains hyperlinks to websites that sell competing furniture products;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant alleges that Respondent is not authorized or licensed to use Complainant’s ASHLEY mark. Complainant argues that Respondent is not a customer of Complainant. In examining the record, the Panel notes that the WHOIS information lists “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant and that Respondent did not respond to this case. In light of this evidence, the Panel determines that Respondent is not commonly known by the <ashleyhomefurniturestore.com> domain name according to Policy ¶ 4(c) (ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); and
(e) Complainant claims that Respondent uses the
<ashleyhomefurniturestore.com> domain name to resolve to a parked
website that contains hyperlinks to websites that sell competing furniture products, such as Pottery Barn. See Complainant’s Exhibit 1. Complainant contends that Respondent receives compensation by allowing the disputed domain name to host a parked website. The Panel finds that Respondent’s provision of competing hyperlinks 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 <ashleyhomefurniturestore.com> domain name. 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).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s <ashleyhomefurniturestore.com> domain name resolves to a parked website that contains competing hyperlinks. See Complainant’s Exhibit 1. Complainant alleges that Respondent is by this means diverting Internet users from Complainant’s business to the websites of Complainant’s competitors to the competitive disadvantage of Complainant. As the Panel determines that Respondent’s registration and use of the <ashleyhomefurniturestore.com> domain name disrupts Complainant’s business, the Panel holds Respondent in breach of Policy ¶ 4(b) (iii) bad faith registration and use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Secondly, under Policy ¶ 4(a) (ii), Complainant avers Respondent must have had constructive knowledge of Complainant's rights in the ASHLEY mark when Respondent registered the disputed domain name. The Panel notes that panels have held that constructive knowledge is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds, however, that Respondent had actual knowledge of Complainant’s rights in the ASHLEY mark. As the Panel makes this finding, the Panel concludes that Respondent registered the <ashleyhomefurniturestore.com> domain name in bad faith according to Policy ¶ 4(a) (iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ASHLEY mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <ashleyhomefurniturestore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 19, 2012
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