national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. TheoMedia / Greg Theo

Claim Number: FA1212001475534

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Re-spondent is TheoMedia / Greg Theo (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyrfurniture.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 11, 2012; the National Arbitration Forum received payment on December 13, 2012.

 

On December 13, 2012, ENOM, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <ashleyrfurniture.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 17, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 7, 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, administra-tive, and billing contacts, and to postmaster@ashleyrfurniture.com.  Also on De-cember 17, 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 16, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Not-ices, 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’s ASHLEY mark has been used in commerce since 1946 in con-nection with the manufacture and marketing of furniture.

 

Complainant is the owner of the ASHLEY mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,600,879, registered June 12, 1990).

 

Respondent registered the disputed <ashleyrfurniture.com> domain name on or about July 6, 2012.

 

Respondent’s <ashleyrfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY mark.

 

Respondent has not been commonly known by the disputed domain name.

 

Complainant has not licensed or otherwise authorized Respondent to use its ASHLEY trademark.

Respondent’s website resolving from the <ashleyrfurniture.com> domain name is inactive and inaccessible.

 

That website displays the message: “Internet Explorer cannot display the webpage.”

 

Prospective customers of Complainant who are diverted to Respondent’s website when trying to locate Complainant’s website may be led to take their business to other manufacturers.

 

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

 

Respondent has no rights to or legitimate interests in the <ashleyrfurniture.com> domain name.

 

Respondent both registered and uses the disputed domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

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 can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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

 

Complainant has rights in its ASHLEY trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [Complainant’s] mark is registered with the USPTO, Com-plainant has met the requirements of Policy ¶ 4(a)(i).

 

Turning to the central question arising under Policy ¶ 4(a)(i), from a review of the record, we conclude that the <ashleyrfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY trademark.  The domain name contains Com-plainant’s entire ASHLEY mark, with the addition of the generic term “furniture,” which describes Complainant’s business, plus the letter “r” between “ashley” and “furniture,” and the generic top-level domain “gTLD” “.com.”  These alterations of the mark, made in creating the domain name, do not save the do-main name from the realm of confusing similarity under the standards of the Policy.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in forming a domain name is insufficient to distinguish that domain name from the mark from which it was derived);  see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to a UDRP complainant’s AMAZON.COM mark);  further see Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described a complainant’s prod-ucts, to the mark of another in forming a domain name was insufficient to disting-uish a respondent’s <duracellbatteries.com> domain name from that complain-ant’s DURACELL trademark).  

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the allega-tions of the Complaint filed in this proceeding, we are free to conclude that Re-spondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been commonly known by the <ashleyrfurniture.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its ASHLEY trademark.  Moreover, the pertinent WHOIS in-formation identifies the registrant of the domain name only as “TheoMedia / Greg Theo,” which does not resemble the domain name.  On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the domain name <lilpunk.com>, and so failed to show that it had rights to or legitimate in-terests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that that respondent was commonly known by that domain name, and where a complainant asserted that it had not authorized that respondent’s use of its mark in a domain name).

 

We next observe that Complainant contends that Respondent uses the contested <ashleyrfurniture.com> domain name to resolve to an inactive website, and that that website displays the message: “Internet Explorer cannot display the web-page,” so that prospective customers of Complainant are diverted to Respond-ent’s website when trying to locate Complainant’s website, thus leading them to take their business to other manufacturers.  This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy  ¶ 4(c)(iii).”  See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):

 

Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide of-fering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).

 

The Panel therefore finds that Complainant has satisfied the requirements of Pol-icy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We are persuaded from the evidence that Respondent is making an inactive use of the <ashleyrfurniture.com> domain name, as alleged in the Complaint, and that, in the circumstances here presented, such use demonstrates that the do-main name was registered and is being used in bad faith. See, for example, DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a contested domain name satisfied the requirements of ¶ 4(a)(iii) of the Policy for demonstrating bad faith in the registration and use of the domain name).

 

We are likewise convinced from the record that Respondent knew of Complain-ant and its rights in the ASHLEY trademark when it registered the domain name.  This stands as proof of bad faith registration of the domain name.  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith reg-istration of a domain name where a respondent was "well-aware” of a UDRP complainant's YAHOO! mark at the time of the domain name’s registration).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <ashleyrfurniture.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  January 28, 2013

 

 

 

 

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