Ashley Furniture Industries, Inc. v. Wanzhongmedia / Zhong Wan
Claim Number: FA1211001471619
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturhomestore.com>, registered with Eurodns S.A.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 20, 2012, Eerodns S.A confirmed by e-mail to the National Arbitration Forum that the <ashleyfurniturhomestore.com> domain name is registered with Eerodns S.A and that Respondent is the current registrant of the name. Eerodns S.A has verified that Respondent is bound by the Eerodns S.A 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 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@ashleyfurniturhomestore.com. Also on November 26, 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 December 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., is the owner of the ASHLEY FURNITURE HOMESTORE mark (Reg. No. 2,680,466 registered Jan. 28, 2003) registered with the United States Patent and Trademark Office (“USPTO”) for use in connection with retail services for furniture.
Respondent, Wanzhongmedia / Zhong Wan, registered the <ashleyfurniturhomestore.com> domain name on March 12, 2009. The <ashleyfurniturhomestore.com> domain name resolves to a parked website containing only links to other websites, including those offering products from Complainant’s competitors.
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 owns the registration for the ASHLEY FURNITURE HOMESTORE mark (Reg. No. 2,680,466 registered Jan. 28, 2003) with the USPTO. Panels have found that registration of a mark is clear evidence that the registrant has rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Panels have gone further to note that these rights satisfy Policy ¶ 4(a)(i) regardless of whether the respondent resides outside of the country in which the mark is registered. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the ASHLEY FURNITURE HOMESTORE mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <ashleyfurniturhomestore.com> domain name is confusingly similar to the ASHLEY FURNITURE HOMESTORE mark. Complainant notes that Respondent merely deletes spaces and one letter from the mark and adds the gTLD “.com.” Respondent’s deletion of one letter fails to distinguish the disputed domain name from the mark within it. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The deletion of spaces and addition of a gTLD is irrelevant to a determination of confusing similarity. 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <ashleyfurniturhomestore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark pursuant to Policy ¶ 4(a)(i).
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).
Complainant contends that Respondent does not have rights or legitimate interests in the <ashleyfurniturhomestore.com> domain name. Complainant notes that Respondent is not a customer of Complainant’s, and Complainant has not licensed or otherwise authorized Respondent to use the mark. The Panel notes that the WHOIS record for the <ashleyfurniturhomestore.com> domain name lists “Wanzhongmedia / Zhong Wan” as the domain name registrant. Panels have found that the WHOIS record is strong evidence of whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, the Panel finds that Respondent is not commonly known by the <ashleyfurniturhomestore.com> domain name and thus does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s lack of rights and legitimate interests is demonstrated also by Respondent’s use of the <ashleyfurniturhomestore.com> domain name. Complainant alleges that the <ashleyfurniturhomestore.com> domain name resolves to a parked website containing only links to other websites, including those offering products from Complainant’s competitors. Therefore, the Panel finds that Respondent’s use of the <ashleyfurniturhomestore.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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 confusingly similar domain name was not 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 registered and uses the <ashleyfurniturhomestore.com> domain name in bad faith. Complainant asserts that Respondent is attempting to misleadingly divert consumers for commercial gain. According to Complainant, consumers trying to locate Complainant may be diverted to Respondent’s domain name and then to the links appearing on the resolving website. Panels have found that the display of competitive links on a disputed domain name causes confusion that, when taken advantage of for commercial gain by the respondent, demonstrates bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent registered and uses the <ashleyfurniturhomestore.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent registered and began using the <ashleyfurniturhomestore.com> domain name with constructive knowledge of Complainant’s rights in the ASHLEY FURNITURE HOMESTORE mark. Complainant points out that Respondent registered the disputed domain name on March 12, 2009, more than five years after Complainant registered its mark in 2003. Constructive knowledge is generally insufficient for a showing of bad faith, However, Complainant has shown bad faith under Policy ¶ 4(a)(iii) as Respondent had actual knowledge of Complainant’s rights in the ASHLEY FURNITURE HOMESTORE mark prior to the registration and use of the <ashleyfurniturhomestore.com> domain name. 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
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 <ashleyfurniturhomestore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 10, 2013
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