Ashley Furniture Industries, Inc. v. Global Access
Claim Number: FA1212001474175
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Global Access (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleysfurniture.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2012; the National Arbitration Forum received payment on December 6, 2012.
On December 4, 2012, FABULOUS.COM PTY LTD confirmed by e-mail to the National Arbitration Forum that the <ashleysfurniture.com> domain name is registered with FABULOUS.COM PTY LTD and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD has verified that Respondent is bound by the FABULOUS.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 December 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 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@ashleysfurniture.com. Also on December 12, 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 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
[a.] UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The domain name at issue is confusingly similar to the Complainant's registered trademarks because it incorporates the Complainant's registered trademarks ASHLEY®, which is registered for furniture, and the dominant and distinctive portions of the trademarks A ASHLEY FURNITURE® and A ASHLEY FURNITURE INDUSTRIES®, with the only substantive difference being the addition of the letter "s" between "ashley" and "furniture" in the domain name. As indicated above, the latter two marks are registered for furniture-related services and furniture, respectively.
[b.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The Respondent should be considered as having no right or legitimate interest in respect of the domain name that is the subject of this complaint. As indicated above, the Complainant is the owner of the trademarks ASHLEY®, A ASHLEY FURNITURE®, and A ASHLEY FURNITURE INDUSTRIES®. These marks were registered in the United States Patent and Trademark Office on June 12, 1990, June 13, 2003, and July 3, 1990, respectively. In addition, the marks have been in use on furniture in interstate commerce since at least as early as 1946 in the case of ASHLEY® and since at least as early as January, 1984, with regard to A ASHLEY FURNITURE INDUSTRIES® and at least as early as September 1, 2001, with regard to A ASHLEY FURNITURE®. Such use has been continuous and substantial, and, as a result, the Complainant's rights in the registered trademarks are considered incontestable.
A WHOIS search of the subject domain name shows that it was not created until November 9, 2005, more than fifteen (15) years decades after the Complainant registered two (2) of its trademarks, more than two (2) years after the Complainant registered its third trademark, and well after the Complainant began using its trademarks. At the time the domain name was registered, the Respondent had constructive knowledge of the Complainant's registered trademarks by virtue of the registrations in the United States Patent and Trademark Office, if not actual knowledge. In previous domain name disputes before the National Arbitration Forum, the Panel has concluded that registration of a domain name confusingly similar to another's mark despite actual or constructive knowledge of the mark holders rights is tantamount to bad faith registration and use pursuant to Policy P 4(a)(iii). See Gabrielle Boller Bruni v. Frick Enterprises, FA0504000465282 (Nat. Arb. Forum May 27, 2005), citing Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Inti v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ([T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainants trademarks, actually or constructively.).
To the best of the Complainant's knowledge, the Respondent is not a customer of the Complainant, although this fact is difficult to verify because the domain name is registered through a proxy service. Nevertheless, the Complainant has not licensed or otherwise authorized the Respondent to use its registered trademarks, or anything confusingly similar to the Complainant's trademarks, in the domain name. The fact that the Respondent has registered the domain name through a proxy service provides further support for the position that the Respondent does not have a legitimate interest in the domain name.
The website located at the ashleysfurniture.com domain name, a screen print capture of which is enclosed, is a "parked" website, offering only links to other websites, including websites offering products manufactured or distributed by competitors of the Complainant, such as Tommy Bahama Furniture. Presumably, the Respondent receives compensation for allowing its domain name to be used to host a "parked" website. As a result, consumers trying to locate the Complainant's furniture products or stores are diverted to a website offering the Complainant's competitors' products, thinking that the domain name and website are owned by or associated with the Complainant.
Therefore, the Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.
[c.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
As noted above, the website located at the ashleysfumiture.com domain name, is used to offer products from the Complainant's competitors. Consumers trying to locate the Complainant's furniture products or stores may be diverted to competitors' products or stores, thinking that they are owned by, associated with, or endorsed by the Complainant.
To the best of the Complainant's knowledge, the Respondent is not a customer of the Complainant and is not known by the terms used in the domain name. The Respondent is using a domain name confusingly similar to the Complainant's registered trademarks to attract viewers looking for the Complainant's products or stores. Presumably, the Respondent receives compensation for allowing its domain name to be used to host a "parked" website. The fact that the domain name is registered through a proxy service provides further support for the position that the Respondent does not have a legitimate interest in the domain name. The Respondent should not be allowed to use the Complainant's registered trademarks to divert people looking for the Complainant or it products or stores. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, and may misleadingly divert consumers who are looking for the Complainant's furniture products or furniture stores.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order transferring or canceling a domain name:
(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 is retail store selling and servicing furniture. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the ASHLEY mark (Reg. No. 1,600,879, registered June 12, 1990) for the A ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004) and for the A ASHLEY FURNITURE INDUSTRIES mark (Reg. No. 1,604,686, registered July 3, 1990). Although Respondent appears to reside in the Isle of Man, Policy ¶4(a)(i) and UDRP precedent only requires Complainant establish its rights in the marks in some jurisdiction (not necessarily Respondent’s jurisdiction). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds Complainant’s registration of the ASHLEY, A ASHLEY FURNITURE, and A ASHLEY FURNITURE INDUSTRIES marks with the USPTO is sufficient to establish its rights in the marks pursuant to Policy ¶4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant argues Respondent’s <ashleysfurniture.com> domain name is confusingly similar to Complainant’s marks because it incorporates the ASHLEY mark and distinctive portions of the A ASHLEY FURNITURE and A ASHLEY FURNITURE INDUSTRIES marks, with the only substantive difference being the addition of the letter “s” between “ashley” and “furniture.” The Panel finds the addition of the letter “s” does not adequately distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶4(a)(i)). Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The addition of a gTLD does not eliminate confusing similarity between Respondent’s domain name and Complainant’s mark under Policy ¶4(a)(i) because every domain name requires a TLD (either a gTLD or a ccTLD). See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). To hold otherwise would eviscerate the UDRP. The Panel finds the term “furniture” added to the ASHLEY mark is descriptive of Complainant’s business and does not distinguish the domain name from the mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). Accordingly, the Panel finds Respondent’s <ashleysfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY, A ASHLEY FURNITURE, and A ASHLEY FURNITURE INDUSTRIES mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 argues Respondent is not one of Complainant’s customers. Complainant claims Complainant has not licensed or otherwise authorized Respondent to use its registered trademarks. The WHOIS information identifies “Global Access” as the domain name’s registrant. Respondent fails to provide evidence showing Respondent is known by the disputed domain name. The Panel therefore concludes Respondent is not commonly known by the disputed domain name 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 claims Respondent’s disputed domain name resolves to a “parked” website, offering only links to other websites, including websites offering products manufactured or distributed by Complainant’s competitors. Respondent’s disputed domain name connects to a website providing hyperlinks that directly compete with Complainant’s business, such as “Tommy Bahama Furniture,” “Living Room Furniture,” “Sofas Overstock.com,” and others based upon the screenshots provided. The Panel finds Respondent’s use of the disputed domain name to provide links to Complainant’s competitors is 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). 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s disputed domain name is being used to offer Complainant’s competitors products. The disputed domain name resolves to a website wherein Internet users are redirected to websites such as <overstock.com> and <nextag.com>, which appear to be soliciting customer for products which complete with Complainant’s products. Previous panels have held that so long as the respondent is viewed as a competitor, any attempts by the respondent to disrupt a complainant’s business via a disputed domain name constitute bad faith use and registration. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)). Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii).
Complainant next argues Respondent’s disputed domain name is used to attract viewers looking for Complainant’s products or stores, for which Respondent presumably receives compensation for hosting a “parked” website (even if Respondent only gets free hosting). The content of the disputed domain’s resolving website is dominated by hyperlinks to competing products. Respondent is ultimately responsible for the content of its resolving websites whether the domain name is parked or not. 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.”). Previous panels have found using a confusingly similar domain name to capitalize on Internet users mistaken association of the domain name with an unaffiliated complainant constitutes bad faith under Policy ¶4(b)(iv). 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). This Panel agrees and finds Respondent has attempted to profit off of Internet user’s mistakes in seeking commercial profits in violation of Policy ¶4(b)(iv).
Complainant further claims Respondent registered the domain name through a proxy service. This Panel has repeatedly held using a proxy service in a commercial context raises the presumption of bad faith registration and use of the domain name. Respondent has done nothing to rebut that presumption. Therefore, the requisite bad faith registration and use are found on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ashleysfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 14, 2013
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