Ashley Furniture Industries, Inc. v. Laksh Internet Solutions Private Limited
Claim Number: FA1211001473309
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Laksh Internet Solutions Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashlyfurnitur.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
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 <ashlyfurnitur.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@ashlyfurnitur.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 Paul M. DeCicco 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 contends as follows:
Complainant has established rights in both the ASHLEY mark (Reg. No. 1,864,076 registered on June 12, 1990) and the A ASHLEY FURNITURE & Design service mark (Reg. No. 2,894,665 registered on October 19, 2004). Complainant also has registered the marks in India with the Government of India Trade Marks Registry (“ITMR”) (Reg. No. 821,772 registered on October 5, 1998).
Respondent’s <ashlyfurnitur.com> domain name is confusingly similar to Complainant’s marks with the only substantive difference being the omission of the letter “e” in “ashley” and “furniture.”
Respondent lacks rights and legitimate interests in the <ashlyfurnitur.com> domain name. Respondent is not commonly known by the domain name. Respondent is not a customer of Complainant, nor is Respondent otherwise licensed or authorized to use Complainant’s registered trademarks.
Respondent’s domain name resolves to a parked website containing only links to other websites, including websites that offer products that compete with those sold by Complainant. Respondent presumably is receiving compensation for the use of its domain name to host a parked website. Consumers trying to locate Complainant’s products may become frustrated upon reaching the website and believe that the disputed domain name are owned by or associated with Complainant. This false belief of an association between Respondent and Complainant could tarnish the image of Complainant and its marks in the minds of consumers.
Respondent has registered and is using the <ashlyfurnitur.com> domain name in bad faith. Respondent is presumably profiting from the registration of a domain name that is confusingly similar to Complainant’s marks. Respondent had constructive, if not actual, knowledge of Complainant’s marks. Complainant has owned rights to the ASHLEY and derivative marks even in Respondent’s home country since 1998.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO and ITMR for its ASHLEY mark.
Complainant’s trademark rights in ASHLEY predate Respondent’s registration of at-issue domain name.
The WHOIS information for the at-issue domain name identifies “Laksh Internet Solutions Private Limited” as the registrant.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain name addresses a parking page containing links to Complainant’s competitors and other third parties.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns USPTO as well as ITMR registrations for the ASHLEY mark. Therefore, the Panel finds that Complainant has rights in the ASHLEY mark pursuant to Policy ¶ 4(a)(i). 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); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <ashlyfurnitur.com> domain name is confusingly similar to Complainant’s ASHLEY mark. The only difference being the omission of the letter “e” in “Ashley,” the addition of “furnitur,” and the appending of the top level domain name, “.com,” to the resulting string. The deletion of the letter “e” from the mark, and adding the generic term “furnitur,” which is a misspelled variant of the descriptive word “furniture,” does not differentiate the domain name from Complainant’s mark for the purpose of Policy ¶4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Furthermore, it is well settled that the top level domain name, here “.com,” is irrelevant to the Panel’s analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain names identifies the domain name’s registrant as “Laksh Internet Solutions Private Limited” and the submissions before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the at-issue domain name notwithstanding the WHOIS information. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Furthermore, the at-issue domain name addresses a parked website which displays links to other websites. Some of the links are to entities that compete with Complainant. Using the at-issue domain names to host a parked website that displays competitive links does not, and cannot, demonstrate Respondent’s rights or interests in respect of the domain name pursuant to either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and, since there is no evidence to the contrary, conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b)(iv) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
Respondent registered and uses the at-issue domain name so that it may commercially gain by misleadingly directing consumers seeking Complainant to Respondent’s website. As mentioned above, the at-issue domain name addresses a parked webpage displaying links to competing third parties. It is highly likely that in this manner Respondent is profiting, or intends to profit, from the registration and use of the at-issue domain name. It is also reasonable to presume that Internet users reaching Respondent’s <ashlyfurnitur.com> website may be confused into believing that the website is owned by, sponsored by, or associated with Complainant when in fact it is not. The Panel also notes that using the domain name in this manner is likely to impermissibly tarnish Complainant’s reputation and goodwill. Therefore, based on the foregoing, the Panel concludes that Respondent registered and is using the at-issue domain names in bad faith pursuant to Policy ¶ 4(b)(iv) and otherwise. 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).
Finally, Respondent had actual knowledge of Complainant’s rights in the ASHLEY mark at the time it registered the at-issue domain name. Respondent’s prior knowledge of Complainant’s mark is evident by Respondent’s inclusion of the entire ASHLEY mark (less the ‘e’) in the at-issue domain name while not having any authority to use such mark in connection with a domain name or otherwise. Moreover, the fact that the domain name is used to address a website that trades on Complainant’s ASHLEY mark likewise shows that Respondent was well aware of Complainant’s ASHLEY mark prior to registering the at-issue domain name. Registering and using a domain name with knowledge of a complainant’s rights therein indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See 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); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashlyfurnitur.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 6, 2013
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