Ashley Furniture Industries, Inc. v. Rakshita Mercantile Private Limited
Claim Number: FA1212001475512
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Rakshita Mercantile Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleysfurniturehomestore.com>, registered with Web Werks India Pvt. 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 December 11, 2012; the National Arbitration Forum received payment on December 13, 2012.
After numerous requests, the Registrar, Web Werks India Pvt. Ltd. has not confirmed to the National Arbitration that the <ashleysfurniturehomestore.com> domain name is registered with Web Werks India Pvt. Ltd. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On December 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 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@ashleysfurniturehomestore.com. Also on December 27, 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 28, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not a customer of the Complainant. Complainant has not licensed or otherwise authorized the Respondent or anyone to use its registered trademarks.
ii. Respondent’s disputed domain name resolves to a website which contains only links to other websites, including websites offering products from competitors of Complainant.
i. Respondent is using the disputed domain name to divert consumers trying to locate Complainant’s furniture products to competitors’ products, for which Respondent presumably receives compensation.
ii. Respondent had constructive knowledge of Complainant’s trademarks by virtue of the registrations with the USPTO, if not actual knowledge.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ASHLEY, ASHLEY FURNITURE HOMESTORE, and ASHLEY HOME STORE marks.
2. Respondent’s <ashleysfurniturehomestore.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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, Ashley Furniture Industries, Inc., contends that it is a business selling goods and retail store services in the field of furniture. Complainant argues and shows that it owns trademark registrations with the USPTO for the ASHLEY mark (Reg. No. 1,600,879, registered June 12, 1990), for the ASHLEY HOMESTORES mark (Reg. No. 2,231,864, registered March 16, 1999), and for the ASHLEY FURNITURE HOMESTORE mark (Reg. No. 2,680,466, registered January 28, 2003). See Complainant’s Exhibits 2 – 4. The Panel notes that although Respondent appears to reside in India, Policy ¶ 4(a)(i) only requires Complainant to register its mark in some jurisdiction to demonstrate its rights in the mark. 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 concludes that Complainant’s registration of the marks with the USPTO is sufficient to establish Complainant’s rights in the 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, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <ashleysfurniturehomestore.com> domain name is confusingly similar to Complainant’s marks because they incorporate the ASHLEY mark, and the dominant and distinctive portions of the trademarks ASHLEY HOMESTORES and ASHLEY FURNITURE HOMESTORE, with the only substantive difference being the addition of the letter “s” after “ashley” as part of the domain name. The Panel determines that the addition of the letter “s” does not distinguish Respondent’s 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)). The Panel notes that Respondent removes the spaces between “ASHLEY,” “FURNITURE,” and “HOMESTORE” in the disputed domain name and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of spaces and addition of a gTLD does not eliminate confusing similarity between Respondent’s domain name and Complainant’s mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Respondent’s <ashleysfurniturehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY, ASHLEY FURNITURE, and ASHLEY FURNITURE HOMESTORE marks pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent is not a customer of the Complainant. Complainant contends that it has not licensed or otherwise authorized the Respondent or anyone to use its registered trademarks. The Panel notes that the WHOIS information identifies “Rakshita Mercantile Private Limited” as the registrant of the disputed domain name. The Panel also notes that Respondent did not submit any additional evidence showing that it was commonly known by the disputed domain name. Therefore, the Panel determines that 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 asserts that Respondent’s disputed domain name resolves to a website which contains only links to other websites, including websites offering products from competitors of Complainant. Complainant argues that Respondent’s website features links to JC Penney’s and Macy’s. See Complainant’s Exhibit 1. The Panel concludess that Respondent’s use of the disputed domain name to feature links of Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor 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).
Complainant argues that Respondent is using the disputed domain name to divert consumers trying to locate Complainant’s furniture products to competitors’ products, for which Respondent presumably receives compensation. Complainant contends that Respondent’s website features links to Complainant’s competitors, JC Penney’s and Macy’s. See Complainant’s Exhibit 1. The Panel determines that Respondent’s use of the disputed domain name to feature links to Complainant’s competitors is evidence of bad faith use and registration 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.’”).
Complainant asserts that Respondent had constructive knowledge of Complainant’s trademarks by virtue of the registrations with the USPTO, if not actual knowledge. Complainant contends that Respondent registered the disputed domain name more than 15 years after Complainant registered its ASHLEY mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); 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 <ashleysfurniturehomestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 8, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page