Ashley Furniture Industries, Inc v. Weekend Furniture Warehouse
Claim Number: FA1210001468069
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Weekend Furniture Warehouse (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyashleydirect.com>, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2012; the National Arbitration Forum received payment on October 22, 2012.
On October 22, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <buyashleydirect.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 October 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@buyashleydirect.com. Also on October 24, 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 November 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 issues 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.
1. Complainant provides furniture and retail furniture store services under the ASHLEY mark.
2. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990).
3. The <buyashleydirect.com> domain name is confusingly similar to Complainant’s ASHLEY mark.
4. Respondent is not commonly known by the disputed domain name.
5. The disputed domain name resolves to a parked page displaying sponsored links to Complainant’s competitors.
6. Respondent commercially benefits from these links through the collection of click-through fees.
7. Respondent had constructive knowledge of Complainant's rights in the mark, if not actual knowledge, at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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 claims rights in the ASHLEY mark pursuant to Policy ¶ 4(a)(i) based on its registrations of the mark with the USPTO (e.g., Reg. No. 1,600,879 registered June 12, 1990). The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Therefore, the Panel finds that Complainant has established rights in the ASHLEY mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.
Complainant urges that Respondent’s <buyashleydirect.com> domain name is confusingly similar to Complainant’s ASHLEY mark within the meaning of Policy ¶ 4(a)(i). Complainant notes that the disputed domain name wholly includes Complainant’s mark, while adding the non-distinctive terms “buy” and “direct.” The Panel notes that the disputed domain also affixes the generic top-level domain (“gTLD”) “.com.” The Panel observes that past panels have found that neither the addition of generic terms nor the affixation of a gTLD is sufficient to create unique, non-infringing domain name 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 Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). In light of these findings, the Panel concludes that Respondent’s <buyashleydirect.com> domain name is confusingly similar to Complainant’s ASHLEY mark within the meaning of Policy ¶ 4(a)(i).
Complainant has proven this element.
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 alleges that Respondent is not commonly known by the <buyashleydirect.com> domain name for the purposes of Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information on file identifies the domain registrant as “Weekend Furniture Warehouse.” Complainant claims that Respondent is not a customer of Complainant’s business, nor has Complainant licensed or otherwise authorized Respondent’s use of Complainant’s ASHLEY mark. The Panel also notes that Respondent has failed to satisfy its burden of producing a response in this matter, leaving the record devoid of any evidence to refute Complainant’s assertion that Respondent is not commonly known by the disputed domain name. In light of the foregoing considerations, the Panel concludes that Respondent is not commonly known by the <buyashleydirect.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant further alleges that Respondent’s use of the disputed domain name does not demonstrate any right or legitimate interest in the domain pursuant to Policy ¶ 4(a)(ii). Complainant claims that the disputed domain name resolves to a parked website containing third-party links, some of which offer furniture products manufactured or distributed by competitors of Complainant. The Panel finds an abundance of UDRP precedent indicating that the resolution of a disputed domain name to a site featuring competing hyperlinks does not satisfy either Policy ¶ 4(c)(i) or Policy ¶ 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 that Respondent’s use of the <buyashleydirect.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and as such does not vest any right or legitimate interest in Respondent pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant reiterates its claim that Respondent is using the disputed domain name to resolve to a parked page featuring links to Complainant’s competitors in the furniture industry, while adding that Respondent presumably receives compensation for hosting such links. Complainant further posits that “consumers trying to locate the Complainant’s furniture products or stores may be diverted to these competitors’ products, thinking that they are owned by, associated with, or endorsed by the Complainant.” The Panel construes these assertions as a Policy ¶ 4(b)(iv) bad faith argument. The Panel finds that Respondent’s registration and use of the confusingly similar domain name was meant to create confusion as to Complainant’s affiliation with the disputed domain name, allowing Respondent to use this confusion for commercial gain. The Panel holds that this type of operation exhibits bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that its trademark registrations for the ASHLEY mark existed well before Respondent’s registration of the <buyashleydirect.com> domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark, if not actual knowledge, on this basis. The Panel finds that while past panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's ASHLEY mark and the fact that Respondent appears to be in the furniture industry itself, Respondent had actual knowledge of the mark and Complainant's rights prior to Respondent’s registration of the disputed domain name. Accordingly, the Panel holds that Respondent registered the <buyashleydirect.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyashleydirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 29, 2012
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