national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Web Master Internet Services Private Limited

Claim Number: FA1211001473306

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is WEB MASTER INTERNET SERVICES PRIVATE LIMITED (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyfurntiure.com>, registered with Tirupati Domains and Hosting Private Limited.

 

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2012; the National Arbitration Forum received payment on November 30, 2012.

 

On November 30, 2012, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <ashleyfurntiure.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name.  Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@ashleyfurntiure.com.  Also on November 30, 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 The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.    Complainant is a business selling goods and services and retail store services in the field of furniture.

2.    Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY mark (e.g., Reg. No. 1,600,879, registered June 12, 1990) and for the ASHLEY FURNITURE & Design mark (Reg. No. 2,894,665, registered October 19, 2004). Complainant also owns and shows evidence of trademark registrations with the Government of India Trademarks Registry for the ASHLEY mark (e.g., Reg. No. 383,664, registered October 5, 1998) and for the ASHLEY & Logo mark (e.g., Reg. No. 319,592, registered October 5, 1998).

3.    Respondent’s <ashleyfurntiure.com> domain name is confusingly similar to Complainant’s ASHLEY and ASHLEY FURNITURE marks as the only substantive difference is the intentional transposition of the letters “i” and “t” in the word “furniture.”

4.    Respondent has no rights or legitimate interests in the disputed domain name.

                                  i.    Respondent is not commonly known by the disputed domain name. Respondent is not a customer of Complainant and Complainant has not licensed or otherwise authorized Respondent to use its registered trademark.

                                 ii.    Respondent’s disputed domain name connects to a “parked” website containing only links to other websites, including websites offering products manufactured or distributed by competitors of Complainant.

5.    Respondent has registered and is using the disputed domain name in bad faith

                                  i.    Respondent’s disputed domain name links to a “parked” website containing only links to other websites, including links to websites offering products manufactured or distributed by competitors of Complainant, for which Respondent is presumably profiting.

                                 ii.    Respondent, at the time that it registered the disputed domain name, had constructive knowledge of Complainant’s registered trademarks, if not actual knowledge.

 

  B. Respondent

  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1.    Complainant is a United States company engaged in the retail furniture industry and related activities.

 

2.  Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY mark (e.g., Reg. No. 1,600,879, registered June 12, 1990) and for the ASHLEY FURNITURE & Design mark (Reg. No. 2,894,665, registered October 19, 2004). Complainant also owns trademark registrations with the Government of India Trademarks Registry for the ASHLEY mark (e.g., Reg. No. 383,664, registered October 5, 1998) and for the ASHLEY & Logo mark (e.g., Reg. No. 319,592, registered October 5, 1998).

 

3.  Respondent registered the <ashleyfurntiure.com> domain name on November 27, 2005. The domain name connects to a “parked” website containing links to other websites, including websites offering products manufactured or distributed by competitors of Complainant.

 

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

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant, Ashley Furniture Industries, Inc., contends that it is a business selling goods and services and retail store services in the field of furniture. Complainant argues that it owns and shows evidence of trademark registrations with the USPTO for the ASHLEY mark (e.g., Reg. No. 1,600,879, registered June 12, 1990) and for the ASHLEY FURNITURE & Design mark (Reg. No. 2,894,665, registered October 19, 2004). See Complainant’s Exhibits 2 – 4. Complainant also asserts that it owns and shows evidence of trademark registrations with the Government of India Trademarks Registry for the ASHLEY mark (e.g., Reg. No. 383,664, registered October 5, 1998) and for the ASHLEY & Design mark (e.g., Reg. No. 319,592, registered October 5, 1998). See Complainant’s Exhibits 5 and 6. The Panel finds that Complainant’s registration of the ASHLEY and ASHLEY FURNITURE marks with the USPTO and with the Government of India Trademarks Registry sufficiently establishes Complainant’s rights in the marks under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ASHLEY and ASHLEY FURNITURE marks.Complainant contends that Respondent’s <ashleyfurntiure.com> domain name is confusingly similar to Complainant’s ASHLEY and ASHLEY FURNITURE marks as the only substantive difference is the intentional transposition of the letters “i” and “t” in the word “furniture.” The Panel finds that the transposition of two letters does not overcome a claim of confusing similarity under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the 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”). The Panel notes that Respondent removes the space between the first and second words in Complainant’s ASHLEY FURNITURE mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the elimination of spaces and addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel concludes that Respondent’s <ashleyfurntiure.com> domain name is confusingly similar to Complainant’s ASHLEY and ASHLEY FURNITURE marks under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established 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); 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s ASHLEY and ASHLEY FURNITURE trademark and to use them in its <ashleyfurntiure.com>  domain name, making only a minor spelling amendment to the trademark before creating the domain name;

(b)  Respondent registered the domain name on November 27, 2005. The domain name connects to a “parked” website containing links to other websites, including websites offering products manufactured or distributed by competitors of Complainant;

          (c)Respondent has engaged in these activities without the consent or approval

of Complainant;

(d)Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “Web Master Internet Services Private Limited” as the registrant. Complainant contends that Respondent is not a customer of Complainant and Complainant has not licensed or otherwise authorized Respondent to use its registered trademark. The Panel notes that Respondent fails to provide evidence that it is commonly known by the disputed domain. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(i). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);

(e) Complainant contends that Respondent’s disputed domain name connects to a “parked” website containing only links to other websites, including websites offering products manufactured or distributed by competitors of Complainant, such as Macy’s and Target. See Complainant’s Exhibit 1. Complainant argues that Respondent presumably receives compensation for the use of its domain name to host a “parked” website. Complainant further asserts that consumers trying to locate Complainant’s furniture products or stores may become frustrated by accessing the website located at Respondent’s disputed domain name, which may tarnish the image of Complainant and its products and services. The Panel finds that Respondent’s use of the disputed domain name to feature links competing with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant asserts that Respondent’s disputed domain name links to a “parked” website containing only links to other websites, including links to websites offering products manufactured or distributed by competitors of Complainant, for which Respondent is presumably profiting. The Panel notes that Respondent’s disputed domain name connects to a website providing links titled “Ashley Bedrooms,” “Bedroom Furniture,” “Bedroom Furniture,” and others. See Complainant’s Exhibit 1. Complainant argues that consumers trying to locate Complainant’s furniture products or stores may become frustrated by accessing the domain name, thinking that it is owned by, associated with, or endorsed by Complainant. The Panel finds that Respondent’s use of the disputed domain name to offer links to websites that directly compete with Complainant for Respondent’s own commercial benefit constitutes bad faith registration and use of the disputed domain name under 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.’”).

 

Secondly, Complainant contends that Respondent, at the time that it registered the disputed domain name, had constructive knowledge of Complainant’s registered trademarks, if not actual knowledge. Complainant argues that Respondent registered the disputed domain name more than fifteen years after Complainant registered its ASHLEY mark and a year after Complainant registered its ASHLEY FURNITURE mark. See Complainant’s Exhibits 2 and 4. Complainant argues that it has owned registrations for the ASHLEY mark since 1998. See Complainant’s Exhibit 5. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights, based on the fame of Complainant’s marks, and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ASHLEY and ASHLEY FURNITURE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

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

 

Accordingly, it is Ordered that the <ashleyfurntiure.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  January 1, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page