Ashley Furniture Industries, Inc. v. Above.com Domain Privacy
Claim Number: FA1211001473008
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfuriturestore.com> and <ashlyfurniturehomestore.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., 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 28, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <ashleyfuriturestore.com> and <ashlyfurniturehomestore.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@ashleyfuriturestore.com and postmaster@ashlyfurniturehomestore.com. Also on November 29, 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 31, 2012 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ASHLEY, ASHLEYHOMESTORES, and ASHLEYFURNITUREHOMESTORE marks.
2. Respondent’s <ashleyfuriturestore.com> and <ashlyfurniturehomestore.com> domain names are confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain names.
4. Respondent registered and used the domain names 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 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 bases its claim of rights upon ownership of trademarks related to the ASHLEY mark. See, e.g., ASHLEY (Reg. No. 1,600,879 registered on June 12, 1990); ASHLEY HOMESTORES (Reg. No. 2,231,864 registered on March 16, 1999); and ASHLEY FURNITURE HOMESTORE (Reg. No. 2,680, 466 registered on January 28, 2003). The Panel finds that these registrations are sufficient to prove that Complainant has rights in the marks. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel also finds that it is irrelevant that Respondent is not located in the same country as the trademark registration entity. 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). For these reasons, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
The Panel notes that both the <ashleyfuriturestore.com> and <ashlyfurniturehomestore.com> disputed domains bare the most likeness to Complainant’s ASHLEY FURNITURE HOMESTORE mark. Complainant contends that the <ashleyfuriturestore.com> domain name is confusingly similar to Complainant’s marks. Complainant believes that this disputed domain incorporates the distinctive portions of Complainant’s marks. The Panel notes, as above, this domain bears similarity to the ASHLEY FURNITURE HOMESTORE mark. Complainant contends that the domain name merely omits an ‘n’ in the “furniture” phrase within the disputed domain name. In regards to the <ashlyfurniturehomestore.com>, Complainant believes this domain name is also confusingly similar to Complainant’s marks because it contains the distinctive portions of the ASHLEY FURNITURE HOMESTORE mark. To start, the Panel finds that any deletion of spacing between the words of a mark, along with the addition of the generic top-level domain (“gTLD”) “.com” can be considered irrelevant in determining whether or not the domain names are confusing similar to Complainant’s marks. 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)). The Panel finds that the <ashleyfuriturestore.com> domain name fails to differentiate itself from Complainant’s marks in that it merely deletes the letter “n” from the term “furniture” and deletes “home” from “homestore.” See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel finds that the <ashlyfurniturehomestore.com> likewise fails to overcome confusing similarity with the mark because the disputed domain name merely removes the “e” in the term “ashley.” See id. For these reasons, the Panel concludes that both the <ashleyfuriturestore.com> and <ashlyfurniturehomestore.com> disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Rights and 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 contends that to the best of its knowledge, Respondent is not commonly known by either of the disputed domain names. Complainant claims to have no knowledge of ever licensing or otherwise authorizing Respondent’s use of its registered trademarks. The Panel notes that the WHOIS information lists “Above.com Domain Privacy” as the registrant of both domain names. The Panel finds that the lack of evidence linking Respondent with either the <ashleyfuriturestore.com> or <ashlyfurniturehomestore.com> disputed domains illustrates that Respondent is not in fact commonly known by either of the domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next asserts that both disputed domain names resolve to parked websites containing only links to other websites, including links to Complainant’s competitors. Complainant believes that Respondent is receiving compensation for the use of its domain names to host the parked websites. Complainant claims that this will frustrate Internet users who mistakenly believe these domain names are affiliated with Complainant, and will therefore tarnish the image of Complainant in the minds of the user. The Panel notes that both of the disputed domain names resolve to websites that contain minimal design and content, and are dominated by lists of hyperlinks to both competing and seemingly unrelated third-party website. See Complainant’s Exhibit 2. Previous panels have held that using a disputed domain to solicit third-party and competing hyperlinks is not a legitimate noncommercial or fair use, nor is it a bona fide offering of goods and services. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel also finds that regardless of whether or not the domain was parked, Respondent is still held accountable for the content of the websites that resolve from the disputed domain names. 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.”). For these reasons, the Panel finds that Respondent’s use of the disputed domain names constituted neither a bona fide offering of goods under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant alleges that Respondent is misleadingly diverting consumers from Complainant’s website to its own for its own commercial gain. Complainant again asserts the fact that the domain names resolve to parked websites. Complainant argues that consumers seeking Complainant’s products will access the domain names believing they are associated or sponsored by Complainant. Previous panels have found that it is bad faith use and registration to intentionally confuse Internet users into visiting respondent’s website on the pretense of some affiliation between respondent and complainant, especially when respondent confuses users for its own commercial gain. 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).”). As above, it is irrelevant as to whether or not the domain name’s resolving website is parked, as Respondent is considered to be ultimately responsible for the content on its domain. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”). For these reasons, the Panel agrees that Respondent is confusing internet users in a bad faith use and registration of the domain names for Respondent’s own commercial gain under Policy ¶ 4(b)(iv).
Complainant finally contends that Respondent had constructive knowledge of the Complainant’s registered trademarks, if not actual knowledge. The Panel notes that while Complaint does not specifically make the point, there is an obvious similarity between the registered marks and the seemingly misspelled versions of Complainant’s marks that Respondent used in its domain names. The Panel here 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 agrees, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name based upon the similarities between the marks and the domain names, and finds that 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfuriturestore.com> and <ashlyfurniturehomestore.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 14, 2013
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