national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Casey Kirkland

Claim Number: FA1211001471574

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is Casey Kirkland (“Respondent”), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2012; the National Arbitration Forum received payment on November 19, 2012.

 

On November 27, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> 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 November 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2013 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@ashleymattress.com, postmaster@ashleymattressstore.com, postmaster@ashleysleepcenter.com.  Also on November 28, 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 February 5, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant:

1.    Complainant owns a trademark registration for the ASHLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879 registered June 12, 1990).

2.    Respondent registered the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names on April 17, 2012.

3.    Each disputed domain name is confusingly similar to Complainant’s ASHLEY mark.

4.    Respondent is not commonly known by the disputed domain names.

5.    Complainant has not licensed or otherwise authorized Respondent’s use of Complainant’s trademarks, or anything confusingly similar thereto, in any domain name.

6.    The disputed domain names resolve to parked websites which contain only links to other websites, including websites that compete with Complainant’s business.

a.    Respondent receives compensation for hosting these sites.

7.    Respondent had knowledge of Complainant and its rights in the ASHLEY mark at the time Respondent registered the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the ASHLEY mark through its registration of the mark with the USPTO. The Complainant has presented the Panel with evidence of its trademark registration for the ASHLEY mark with the USPTO (Reg. No. 1,600,879 registered June 12, 1990). The Panel finds that Complainant’s registration with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

Complainant also contends that each of the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names is confusingly similar to Complainant’s ASHLEY mark under Policy ¶ 4(a)(i). Each disputed domain incorporates Complainant’s mark, while adding one or more terms which are descriptive of Complainant’s business. The disputed domains attach the terms “mattress,” “store,” and/or “sleep center” to Complainant’s mark. The Panel finds that each of these terms is descriptive of Complainant’s business, which includes the operation of retail stores which sell mattresses. The Panel finds that the addition of these descriptive terms does not distinguish the disputed domains from Complainant’s mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel further finds that Respondent’s affixation of the generic top-level domain (“gTLD”) “.com” to each disputed domain does not remove any such domain from the realm of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that each of the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names is confusingly similar to Complainant’s ASHLEY mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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.”).

 

Complainant asserts that Respondent is not commonly known by the <ashleymattress.com>, <ashleymattressstore.com>, or <ashleysleepcenter.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant also asserts that it has not licensed or otherwise authorized Respondent’s use of Complainant’s trademarks, or anything confusingly similar thereto, in any domain name. Complainant notes that the WHOIS information for the disputed domain names identifies the domain name registrant as “Casey Kirkland.” Respondent has failed to satisfy its burden of providing the Panel with a Response in this case, leaving no affirmative evidence in the record to refute Complainant’s claims. In light of this evidence, the Panel concludes that Respondent is not commonly known by the <ashleymattress.com>, <ashleymattressstore.com>, or <ashleysleepcenter.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant further contends that Respondent’s use of the disputed domain names cannot be considered 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). Complainant contends that Respondent uses the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names to resolve to parked websites which contain only links to other websites, including websites that compete with Complainant’s business. Previous panels have refused to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to operate a website containing competing commercial links. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to 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 disputed domain names 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).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s use of the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names to resolve to websites featuring competing third-party links constitutes bad faith. Complainant asserts that Respondent receives compensation for hosting these sites, and has intentionally created a likelihood of confusion with Complainant in order to attract Internet users to its websites. The Panel finds that Respondent has attempted to create confusion with Complainant in order to generate a commercial gain. The Panel holds that Respondent’s registration and use of the disputed domain names for this purpose demonstrates bad faith attraction for commercial gain pursuant to 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.’”).

 

Complainant also alleges that Respondent had knowledge of Complainant and its rights in the ASHLEY mark at the time Respondent registered the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names. Complainant avers that its registration of the ASHLEY mark with the USPTO confers at least constructive knowledge of Complainant’s rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names, and finds that such actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <ashleymattress.com>, <ashleymattressstore.com>, and <ashleysleepcenter.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  February 11, 2013

 

 

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