Ashley Furniture Industries, Inc. v. Private Registrations / Aktien Gesellschaft / Domain Admin
Claim Number: FA1211001473001
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfuniturehomestore.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 30, 2012, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <ashleyfuniturehomestore.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 December 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@ashleyfuniturehomestore.com. Also on December 5, 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant is the owner of the ASHLEY trademark, which it registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879 registered June 12, 1990). See Exhibit 3. Complainant offers retail store services in the furniture industry using its ASHLEY mark. Complainant also owns the ASHLEY FURNITURE HOMESTORE mark through its USPTO registration (Reg. No. 2,680,466 registered January 28, 2003). See Exhibit 7.
Respondent registered the <ashleyfuniturehomestore.com> domain name on August 2, 2007, seventeen years after Complainant registered its ASHLEY mark and four years after Complainant registered its ASHLEY FURNITURE HOMESTORE mark. Respondent uses the domain name to host a parked website containing nothing other than links to other websites, including those that offer products made by Complainant’s competitors in the furniture industry. The <ashleyfuniturehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY marks. Respondent is neither commonly known by the <ashleyfuniturehomestore.com> domain name, nor does Respondent use the domain to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered and uses the <ashleyfuniturehomestore.com> domain name in bad faith because the resolving website misleads and diverts Complainant’s potential customers by referring them to competing websites, from which Respondent receives compensation.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Ashley Furniture Industries, Inc. who lists its address as Arcadia, WI, USA. Complainant is the owner of the US registered trademark ASHLEY, the US registered trademark ASHLEY FURNITURE HOMESTORE, as well as other similar and related trademarks in the ASHLEY family of marks for furniture goods and services. Complainant has been using the ASHLEY mark for several decades.
Respondent is Private Registrations/Aktien Gesellschaft/Domain Admin who lists its address as Kingstown, Not Applicable, O, VC. There is also a more detailed street address given that refers to a location in the West Indies. The disputed domain name was registered on August 2, 2007 and the Respondent’s registrar’s contact address is listed as Beaverton, OR, USA.
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 asserts rights to its marks through its USPTO trademark registrations, including the ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990) and the ASHLEY FURNITURE HOMESTORE mark (Reg. No. 2,680,466 registered January 28, 2003). The Panel concludes that Complainant’s USPTO trademark registration demonstrates Complainant’s rights in both the ASHLEY and ASHLEY FURNITURE HOMESTORE marks under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that the <ashleyfuniturehomestore.com> domain name is confusingly similar to its ASHLEY marks despite the omission of the letter “r” in the word “furniture.” The Panel notes that the domain name also does not include any of the spaces found in the ASHLEY FURNITURE HOMESTORE mark, and attaches the generic top-level domain (“gTLD”) “.com.” The Panel finds that despite the omissions of spaces in the mark and a letter “r”, and the inclusion of a gTLD, the <ashleyfuniturehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also 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)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant alleges that Respondent does not have rights or legitimate interests in the <ashleyfuniturehomestore.com> domain name, as it is not commonly known by the domain name. The Panel notes that the WHOIS information discloses the registrant to be “Private Registrations / Aktien Gesellschaft / Domain Admin,” and therefore concludes that the WHOIS information does not correspond with the domain name. The Panel finds that Respondent is not commonly known by the <ashleyfuniturehomestore.com> domain name, and therefore Respondent fails to demonstrate rights or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <ashleyfuniturehomestore.com> domain name is used to host a parked website that contains nothing more than links to websites that offer products manufactured by competitors of Complainant in the furniture industry and that Complainant earns compensation in exchange for hosting a parked website. The Panel finds that Respondent’s use of the <ashleyfuniturehomestore.com> domain name to display competing hyperlinks at a parked website in exchange for compensation does not meet the definition of 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). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007),(no bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name when the respondent used the resolving website to post links to competing commercial websites.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a Response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent demonstrates bad faith registration and use by receiving compensation for allowing the <ashleyfuniturehomestore.com> domain name to be accessed by a parked website that displays hyperlinks to websites owned by businesses in competition with Complainant. Complainant alleges that consumers attempting to access Complainant’s furniture products may be hindered from doing so due to confusion between the disputed domain name and Complainant’s own website. The Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by its choice of a confusingly similar domain name to attract Internet users to its resolving website, which displays hyperlinks to competing furniture businesses in order to generate a profit. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), (the respondent’s use of the disputed domain name was evidence of bad faith as a result of the links provided at the resolving website, which were sponsored by the complainant’s competitors and the respondent commercially benefited from the domain name by receiving compensation in the form of click-through-fees.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfuniturehomestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 11, 2013
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