Ashley Furniture Industries, Inc. v. Trenton Foxhall
Claim Number: FA1210001465250
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Trenton Foxhall (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitureaccess.us>, registered with Fast Domain Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; a hard copy of the Complaint was received on October 3, 2012.
On October 3, 2012, Fast Domain Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureaccess.us> domain name is registered with Fast Domain Inc. and that Respondent is the current registrant of the names. Fast Domain Inc. has verified that Respondent is bound by the Fast Domain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 5, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 25, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 makes the following assertions:
1. Respondent’s <ashleyfurnitureaccess.us> domain name, the domain name at issue, is confusingly similar to Complainant’s ASHLEY marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the following marks: ASHLEY (Reg. No. 1,600,879 registered June 12, 1990), A ASHELY FURNITURE & Design (Reg. No. 2,894,665 registered Oct. 19, 2004), and A ASHLEY FURNITURE INDUSTRIES & Design (Reg. No. 1,604,686 registered July 3, 1990). Respondent’s <ashleyfurnitureaccess.us> domain name is confusingly similar to Complainant’s ASHLEY marks where the domain name only adds the generic term “access.” Respondent does not own any trademarks encompassing the disputed domain name, is not commonly known by the disputed domain name and has not been licensed or authorized to use Complainant’s marks.
Respondent is using the disputed domain name to display links to other websites, including some that offer furniture products manufactured by Complainant’s competitors. Respondent presumably collects compensation for allowing its domain name to host a “parked” website.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dipsute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns several trademark registrations with the USPTO for the following marks: ASHLEY (Reg. No. 1,600,879 registered June 12, 1990), A ASHELY FURNITURE & Design (Reg. No. 2,894,665 registered Oct. 19, 2004), and A ASHLEY FURNITURE INDUSTRIES & Design (Reg. No. 1,604,686 registered July 3, 1990). Such trademark registrations are sufficient for Complainant to have established its rights in the marks above under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)).
Further, Respondent’s <ashleyfurnitureaccess.us> domain name is confusingly similar to Complainant’s ASHLEY marks where the domain name only adds the generic term “access.” The disputed domain name contains Complainant’s ASHLEY mark entirely while adding the descriptive term “furniture” and the generic term “access,” as well as the country-code top-level domain (“ccTLD”) “.us.” Respondent’s disputed domain name is not distinct from Complainant’s mark and is therefore confusingly similar to the mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent does not own any trademarks encompassing the disputed domain name. Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Further, Respondent is not commonly known by the disputed domain name and has not been licensed or authorized to use Complainant’s marks. The WHOIS information identifies the registrant of the <ashleyfurnitureaccess.us> domain name as “Trenton Foxhall,” which the Panel finds to be dissimilar from the disputed domain name. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is using the disputed domain name to display links to other websites, including some that offer furniture products manufactured by Complainant’s competitors. Respondent presumably collects compensation for allowing its domain name to host a “parked” website. The Panel finds that Respondent is not using the <ashleyfurnitureaccess.us> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). 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”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name as a “parked website” that contains links to other websites, some of which offer competing furniture products, and Respondent is presumably commercially benefitting from its use of the disputed domain name. The Panel finds that Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The Panel also concludes that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureaccess.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Panelist
Dated: November 9, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page