Ashley Furniture Industries, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1211001470078
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Re-spondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashelyfurniturehomestore.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on November 6, 2012; the National Arbitration Forum received payment on November 8, 2012.
On November 11, 2012, INTERNET.BS CORP. confirmed by e-mail to the Nat-ional Arbitration Forum that the <ashelyfurniturehomestore.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current regis-trant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 November 15, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of December 5, 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, adminis-trative, and billing contacts, and to postmaster@ashelyfurniturehomestore.com. Also on November 15, 2012, the Written Notice of the Complaint, notifying Re-spondent 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 December 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 is the owner of the ASHLEY FURNITURE HOMESTORE trade-mark, and it uses that mark in marketing furniture-related goods and services.
Complainant hold a registration for the ASHLEY FURNITURE HOMESTORE service mark, which is on file with the United States Patent & Trademark Office (“USPTO”), as Reg. No. 2,680,466, registered January 28, 2003.
The disputed <ashelyfurniturehomestore.com>domain name was registered on November 8, 2005.
Respondent’s domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE trademark.
Respondent has not been commonly known by the contested domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s ASHLEY FURNITURE HOMESTORE mark.
Respondent has “parked” the <ashelyfurniturehomestore.com> domain name on a website containing only links to other websites.
Respondent has no rights to or legitimate interests in the domain name.
Respondent presumably receives income from the use of its domain name to host a “parked” website.
Internet users seeking Complainant’s domain name may become confused and frustrated when accessing the website resolving from the disputed domain name, and this frustration threatens to tarnish Complainant’s business image.
Respondent knew of Complainant’s rights in the ASHLEY FURNITURE HOME-STORE trademark when it registered the disputed domain name.
Respondent both registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the ASHLEY FURNITURE HOMESTORE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chili). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <ashelyfurniturehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOME-STORE service mark. The domain name contains the entire mark, with one of its terms misspelled by a transposition of letters, together with the deletion of the spaces between the terms of the mark and the inclusion of the generic top-level domain “.com.” These alterations of the mark, made in creating the domain name, are inadequate to avoid a finding of confusing similarity under the stand-ards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of the mark of another and the addition of a gTLD do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Similarly, the transposition of two letters (such as the letters “e” and “l” in this instance) does not distinguish the resulting domain name from the mark from which it was derived so as to escape a finding of confusing similarity. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
Respondent has not been commonly known by the contested domain name <ashelyfurniturehomestore.com>, and that Respondent is not in any way licensed or otherwise authorized to use Complainant’s ASHLEY FURNITURE HOMESTORE service mark. Moreover, the pertinent WHOIS information lists the registrant of the domain name only as “PPA Media Services / Ryan G Foo,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in it under Policy ¶ 4(c)(ii),
where there was no evidence in the record, including the relevant WHOIS in-formation, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent has “parked” the <ashelyfurniturehomestore.com> domain name at a website which only contains links to other websites, and that Re-spondent receives income from the use of its domain name to host the “parked” website. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007):
As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.
See also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a website resolving from a domain name which was confusingly similar to the mark of another was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legit-imate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the con-tested <ashelyfurniturehomestore.com> domain name, which is substantively identical to Complainant’s ASHLEY FURNITURE HOMESTORE service mark, tends to confuse Internet users as to the possibility of Complainant’s association with the domain name. This, taken together with the likelihood that Respondent profits from such confusion, as alleged in the Complaint, demonstrates that Respondent both registered and uses the domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002):
While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.
See also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where the domain name resolved to a website featuring links to third-party websites that offered services similar to those of a UDRP complainant).
We are likewise convinced from the evidence that Respondent knew of Com-plainant and its rights in the ASHLEY FURNITURE HOMESTORE service mark when it registered the contested domain name. This is further proof that Re-spondent registered the domain name in bad faith. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a UDRP respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <ashelyfurniturehomestore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 31, 2012
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