Ashley Furniture Industries, Inc. v. Kevin Lewis
Claim Number: FA1302001486548
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Kevin Lewis (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net>, registered with GoDaddy.com LLC.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2013; the National Arbitration Forum received payment on February 25, 2013.
On March 1, 2013, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names are registered with GoDaddy.com LLC and that Respondent is the current registrant of the names. GoDaddy.com LLC has verified that Respondent is bound by the GoDaddy.com LLC 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 March 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@ashleyfurnituregallery.info, postmaster@ashleyfurnituregallery.net. Also on March 5, 2013, 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.
A timely Response was received and determined to be complete on March 25, 2013.
A timely Additional Submission was received on March 28, 2013 in accordance with The Forum’s Supplemental Rule #7.
On April 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant claims that it owns the ASHLEY trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879 registered June 12, 1990). According to the Complainant these marks have been in use for furniture in interstate commerce since at least as early as 1946 and have been in association withComplainant since 1984 and 2001 with respect to other trademarks.
2. Complainant contends that Respondent’s <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names are confusingly similar to Complainant’s ASHLEY trademark.
3. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names.
a. The disputed domain names were not created until August 25, 2012 according to the WHOIS information.
b. Complainant has not licensed or authorized Respondent to use any of its registered trademarks.
c. Respondent is not commonly known by any of the terms in the disputed domain names, and is listed as “Kevin Lewis.”
d. Complainant contends that Respondent’s <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names resolve to parked websites featuring links to third party websites, some of which compete with Complainant.
e. Complainant further contends that Respondent presumably receives compensation from its use of the disputed domain names.
4. Complainant contends that Respondent registered and is using the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> disputed domain names in bad faith.
a. Respondent’s use of the disputed domain names compete with and disrupt Complainants business by diverting consumers away from Complainant’s legitimate website and business.
b. Respondent is using confusingly similar domain names to attract Internet users looking for Complainant’s legitimate business and diverting them to third party sites that compete with Complainant.
B. Respondent
1. With regard to Complainant’s contentions on Identical and/or Confusingly Similar, Respondent has stated that it is unlikely that a normal person would confuse Complainant’s business with Respondent’s <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> disputed domain names.
2. With regard to Complainant’s contentions on rights or legitimate interests in the disputed domain name, the Respondent has stated that it has a legitimate interests in the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names.
a. Respondent’s parent’s own a company which has dealt with Complainant’s products for many years.
b. Respondent owns many domain names associated with the furniture business.
c. Respondent wants to build a large site promoting American made furniture.
d. Respondent has put a reasonable amount of time and money into its domain names.
e. The ads featured on Respondent’s resolving pages are Godadd.com ads which Respondent has no control over.
3. With regard to Complainant’s contentions on bad faith registration and use, the Respondent has stated that it is impossible to say the disputed domain names are being used in bad faith.
a. Respondent registered the domain names in good faith.
b. Complainant has not proven its case.
C. Additional Submissions
Complainant in its additional submissions has contended the following:-
1. The standard for domain disputes is likelihood of confusion or confusingly similar, not identity.
2. Respondent intentionally registered these domain names with the intent to mislead and deceive consumers into believing that Complainant was associated with Respondent’s domain names and resolving websites.
3. Even if Respondent was an authorized seller of Complainant’s products, it does not give him the right to the ASHLEY trademark.
4. Respondent is attempting to trade off the good will of Complainant’s business as well as other U.S. furniture stores, and thus Respondent is intending to profit from its use.
5. Respondent indicates that it will use the domain names in the future.
6. Respondent’s claim that Complainant should have registered the disputed domain names, implies that they are confusingly similar to Complainant’s registered mark.
7. Respondent cites no authority requiring Complainant to register limitless varieties of its trademark.
8. Complainant sent two letters to Respondent previous to filing this complaint.
9. Respondent ignored the letters and did not respond to Complainant at all.
10. Respondent also did not contact Complainant to request authorization to use the ASHLEY mark.
· The Panel observes that the Complainant is the owner of the ASHLEY trademark registered with the USPTO Reg. No. 1,600,879 dated June 12, 1990. The Panel finds that Complainant is the owner of the service mark AASHLEY FURNITURE Reg. No. 2,894,665 and AASHLEY FURNITURE INDUSTRIES trademark Reg. No. 1,604,686, with the USPTO. The mark Ashley is in use since 1946. Other trademarks are in use since 1984 and 2001 respectively. It also emerges as an admitted position on record that the registration of the disputed domain names by the respondent is only in 2012.
· The contention raised by the respondent that his parents were authorized to sell Ashley products, even if it is assumed to be correct, does not in any manner give any right to the respondent to claim any ownership on the word Ashley and/or Ashley Furniture. On the contrary, such a claim by the respondent, indeed proves / establishes not only constructive but actual knowledge of Ashley Furniture belonging to the Complainant.
· The Panel also observes that the Respondent has registered the disputed domain names <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> on August 25, 2012. The Panel observes that the Respondent has not furnished any evidence of any kind for showing any permission or authorization by the Complainant in its favour for using the mark(s) of the Complainant for any of its activities.
· Panel finds that the Respondent has no rights or legitimate interests in relation to the domain name. The disputed domain names deserve to be transferred to the Complainant. The Respondent is not entitled to continue to use these domain names. The Complaint deserves to be allowed and the Panel decides accordingly.
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.
· The Panel finds that Complainant has established rights in the ASHLEY trademark having registered it with the USPTO Reg. No. 1,600,879 dated June 12, 1990. The Panel has also found that Complainant is the owner of the service mark AASHLEY FURNITURE Reg. No. 2,894,665 and AASHLEY FURNITURE INDUSTRIES trademark Reg. No. 1,604,686, with the USPTO. The Panel in this regard relies upon the decision of this forum in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) holding that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel, thus, finds that Complainant has rights in the ASHLEY mark under Policy ¶ 4(a)(i).
· Complainant asserts that Respondent’s <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names are confusingly similar to Complainant’s ASHLEY trademark because the disputed domain names contain Complainant’s entire mark and add the the descriptive term “gallery” and that the “ashley” and “furniture” terms are already registered for services related to Complainant’s business. The Panel notes that Respondent has added the generic top-level domain (gTLD) “.info” or “.net” to Complainant’s mark and holds these variations are insufficient to differentiate a disputed domain name from a given trademark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”) see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
· The Panel further finds that the contention of the Respondent that the Complainant ought to have had registered the disputed domain names also supports the contention of the Complainant that there exists confusing similarity between the domain name registered by the Complainant and the disputed domain names registered by the Respondent.
· In the light of the above, the Panel does not find any substance in the contention of the Respondent that there is no possibility of confusion by the disputed domain names in that neither the <ashleyfurnituregallery.info> nor <ashleyfurnituregallery.net> are identical to Complainant’s registered marks. The further contention of the Respondent that the term “gallery” does not refer to furniture, is also without any merit.
· The Panel is reminded 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. In this regard following decisions of this Forum are cited :
(i) 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;
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) holding that “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 the Complainant has discharged this burden. The Panel agrees with the Complainant’s contention that Respondent is not commonly known by the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names. The Panel, in this regard, relies on an earlier decision of this forum in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
· The Panel agrees with the contentions raised on behalf of the Complainant regarding absence of any right or legitimate interest of the Respondent in the disputed domain names. Respondent is not one of Complainant’s customers. It is listed as “Kevin Lewis” in the WHOIS information for the disputed domain names. Complainant has not licensed or authorized Respondent to use any of its registered trademarks in any way. Complainant is using its ASHLEY trademark continuously since as early as 1946. Respondent has never been a customer of Complainant and Respondent’s parent’s business is a former customer. Even if Respondent was an authorized seller, it still would have no rights to use Complainants’ the ASHLEY mark.
· Complainant has also contended that Respondent has no rights or legitimate interests in the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent’s disputed domain names resolve to parked websites offering links to third parties including those that compete with Complainant.
· The Panel finds no merit in Respondent’s claims that it has legitimate interests in the disputed domain names because its family owns an authorized dealer of Complainant’s products and that it has built its life around furniture sales, and has previously sold, owned and manufactured furniture and furniture businesses. The Panel also rejects Respondent’s contention that it is collecting domain names to include in its business of promoting American made furniture and that Complainant should have registered additional domain names in order to protect itself from trademark infringement. Respondent’s contention that it is not getting compensated for the content of the websites resolving from the disputed domain name is also rejected as, admittedly, Respondent’s is not making any bona fide offering of goods or services or a legitimate noncommercial or fair use and its disputed domain names merely resolve to parked websites offering links to third parties.
· The Panel finds that the Respondent does not have any right or legitimate interests in the disputed Domain name.
· Complainant contends that Respondent has registered and is using the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). Complainant also claims that Complainant is using a confusinly similar domain name direct Internet users to websites featuring third party competing links which will divert Internet users away from Complainant’s business for the purpose of disrupting Complainant’s business. In this regard, the Panel refers to and relies upon decision in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) The Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
· Complainant asserts that Respondent has registered and is using the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant claims that Respondent is using the confusingly similar disputed domain names to attract Internet users to its websites, for commercial gain, thereby creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent is presumably receiving compensation for hosting parked pages featuring third party websites. Previous panels have found bad faith registration and use under Policy ¶ 4(b)(iv) when a respondent registers a confusingly similar domain name containing a complainant’s mark in order to attract consumers to a website offering links to competing third party websites in order to profit from those links. 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). The Panel may therefore find that Respondent registered the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
· The Panel observes that the Complainant has contended that, due to its list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the ASHLEY mark when Respondent registered the disputed domain name. Complainant further argues that Respondent’s use of the disputed domain names indicate that it intended to trade off the good will associated with complainant’s ASHLEY mark and therefore had actual knowledge of Complainant’s rights. However, in the facts and circumstances of the present case, the Panel finds that the Respondent was actually aware that the Ashley marks belonged to the Complainant. This position clearly emerges from the contention of the Respondent that the parents of the Respondent were authorized to sell Ashley products and therefore, the respondent would have legitimate interest in the Ashley marks of the Complainant. The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")."
· The Panel agrees with Complainant’s contentions that Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnituregallery.info> and <ashleyfurnituregallery.net> domain names be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: 20.04.2013
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