Ashley Furniture Industries, Inc. v. Entropy Software Programs
Claim Number: FA1305001498198
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin USA. Respondent is Entropy Software Programs (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitureprices.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2013; the National Arbitration Forum received payment on May 6, 2013.
On May 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureprices.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@ashleyfurnitureprices.com. Also on May 7, 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 May 28, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on May 31, 2013.
On June 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
a. Policy ¶ 4(a)(i)
i. Complainant is the owner of the trademarks ASHLEY, ASHLEY FURNITURE & Design, and ASHLEY FURNITURE INDUSTRIES & Design, which are registered for goods and services in the field of furniture.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY mark (Reg. No. 1,600,879, registered June 12, 1990), for the ASHLEY FURNITURE & Design mark (Reg. No. 2,894,665, registered October 19, 2004), and for the ASHLEY FURNITURE INDUSTRIES & Design mark (Reg. No. 1,604,686, registered July 3, 1990).
iii. The domain name at issue is confusingly similar to Complainant’s registered trademarks because it incorporates Complainant’s registered trademark, with the only substantive difference being the addition of the non-distinctive term “prices” as part of the domain name.
b. Policy ¶ 4(a)(ii)
i. Respondent should be considered as having no right or legitimate interest in respect of the domain name.
1. Respondent is not commonly known by the domain name, but as “Entropy Software Programs.”
2. The website located at the <ashleyfurnitureprices.com> domain name resolves to a website offering products offered by both Complainant and competitors of Complainant.
c. Policy ¶ 4(a)(iii)
i. Respondent has registered and is using the disputed domain name in bad faith.
1. The website located at the <ashleyfurnitureprices.com> domain name resolves to a website offering products offered or distributed by Complainant, but also offering products offered by competitors of Complainant, such as “Coaster Home Furnishings” and “Famous Brand Furniture.”
2. Respondent had constructive knowledge of Complainant’s registered trademarks by virtue of Complainant’s registrations with the USPTO, if not actual knowledge.
d. Respondent registered the <ashleyfurnitureprices.com> domain name on March 18, 2009.
B. Respondent
a. Policy ¶ 4(a)(i)
i. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
b. Policy ¶ 4(a)(ii)
i. Respondent is registered to sell ASHLEY furniture products as a dealer. Complainant lists many different website links that take consumer away from the <ashleyfurniture.com> website.
ii. Respondent does not control the ads shown by Google.
iii. Complainant does not own a monopoly on domain names which incorporate its marks. Consumer review and complaint sites are legitimate despite making a nominative use of another’s trademark.
iv. Respondent does not hold itself out as Complainant on its website.
1. Respondent’s website includes a disclaimer on its front page, stating that Respondent has no relationship to <ashleyfurniture.com>.
c. Policy ¶ 4(a)(iii)
i. Respondent did not purchase or have the intent to use the domain for any purpose other than providing a service and selling ASHLEY FURNITURE online, the same means and way as over 2,300 furniture dealers do online.
C. Additional Submissions
Complainant
a. Policy ¶ 4(a)(i)
i. The addition of a non-distinctive term, such as “prices,” is not sufficient to avoid a likelihood of confusion.
b. Policy ¶ 4(a)(ii)
i. Respondent has never been a customer of Complainant. Complainant has not authorized Respondent to register a domain name that includes Complainant’s trademarks. The retailers listed on Complainant’s website either have a license agreement with Complainant or do not include Complainant’s registered trademarks in their domain names. Respondent has no such license agreement with Complainant and has not been authorized to use Complainant’s trademarks in a domain name.
Complainant is Ashley Furniture Industries, Inc. which list its address as Arcadia, WI, USA. Complainant is the owner of the USA registered trademark for ASHLEY. Complainant has secured additional domestic registrations for a number of similar marks constituting the ASHLEY family of marks which are all registered in association with the Complainant’s offering of goods and services in the furniture industry. Complainant has continuously used these marks since at least as early as 1990 when the first ASHLEY mark was registered.
Respondent is Entropy Software Programs which list its address as Miami, FL, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent claims to be an authorized dealer of and for Complainant but provides no evidence in support of that claim, which is disputed by the Complainant. Respondent registered the disputed domain name in 2009. Respondent provides no evidence to indicate any substantive or continuous usage of the disputed domain name since its registration. Respondent requested a finding of reverse domain name hijacking but provided no substantive arguments or evidence in that regard therefore that request is denied.
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.
Complainant argues that it is the owner of the trademarks ASHLEY, ASHLEY FURNITURE & Design, and ASHLEY FURNITURE INDUSTRIES & Design, which are registered for goods and services in the field of furniture. Complainant asserts that it is the owner of trademark registrations with the USPTO for the ASHLEY mark (Reg. No. 1,600,879, registered June 12, 1990), for the ASHLEY FURNITURE & Design mark (Reg. No. 2,894,665, registered October 19, 2004), and for the ASHLEY FURNITURE INDUSTRIES & Design mark (Reg. No. 1,604,686, registered July 3, 1990). See Exhibits 2 – 4. The Panel finds that Complainant’s rights in the ASHLEY, ASHLEY FURNITURE & Design, and ASHLEY FURNITURE INDUSTRIES & Design marks are sufficiently established under Policy ¶ 4(a)(i) through its registrations with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant alleges that the domain name at issue is confusingly similar to Complainant’s ASHLEY FURNITURE & Design trademark because it incorporates Complainant’s registered trademark, with the only substantive difference being the addition of the non-distinctive term “prices” as part of the domain name. The Panel finds that Respondent’s addition of a generic term to the domain name does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel notes that Respondent removes the space between “ASHLEY” and “FURNITURE” in Complainant’s ASHLEY FURNITURE mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s removal of spaces and addition of a gTLD does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <ashleyfurnitureprices.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark pursuant to Policy ¶4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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. 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the domain name, but as “Entropy Software Programs.” Complainant alleges that Respondent is not a customer of Complainant and Complainant has not licensed or otherwise authorized Respondent to use its registered trademarks, or anything confusingly similar to Complainant’s trademarks in a domain name. In its Additional Submission, Complainant argues that the retailers listed on Complainant’s website either have a license agreement with Complainant or do not include Complainant’s registered trademarks in their domain names. Complainant contends that Respondent has no such license agreement with Complainant and has not been authorized to use Complainant’s trademarks in a domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that the website located at the <ashleyfurnitureprices.com> domain name resolves to a website offering products offered by both Complainant and competitors of Complainant. Complainant claims that Respondent’s domain name offers products by competitors of Complainant, such as Coaster Home Furnishings and Famous Brand Furniture. See Complainant’s Exhibit 1. Complainant contends that customers trying to locate Complainant’s furniture products or stores may be diverted to these products offered by or distributed by competitors of Complainant, thinking that the domain name and website are owned by or associated with Complainant. Complainant argues that Respondent presumably receives some benefit or compensation for hosting a website that offers these competitors’ products. The Panel finds that Respondent’s use of the disputed domain name to provide hyperlinks of Complainant’s competitors is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Respondent argues that its inclusion of a disclaimer on its site at the disputed domain name mitigates consumer confusion such that Respondent’s operation at the otherwise confusingly similar <ashleyfurnitureprices.com> domain name does not preclude Respondent’s rights and legitimate interests in the domain. The Panel notes that the mere inclusion of a disclaimer cannot grant a wrongdoer rights or interests in a disputed domain nor will it necessarily dispel confusion amongst consumers. The Panel finds that Respondent’s disclaimer is not sufficient to overcome the presumption that Respondent lacks rights and legitimate interests in the <ashleyfurnitureprices.com> domain name pursuant to Policy ¶ 4(a)(ii). See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
The Complainant has proven this element.
Complainant contends that the website located at the <ashleyfurnitureprices.com> domain name resolves to a website offering products offered or distributed by Complainant, but also offering products offered by competitors of Complainant, such as “Coaster Home Furnishings” and “Famous Brand Furniture.” See Complainant’s Exhibit 1. Complainant alleges that consumers trying to locate Complainant’s furniture products or stores may be diverted to products or stores offered by competitors of Complainant, thinking that it is owned by, associated with, or endorsed by Complainant. The Panel finds that Respondent’s use of the disputed domain name was in bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), (finding bad faith under Policy ¶ 4(b)(iv) where the respondent was using the disputed domain name to divert Internet users to respondent’s website offering competing computer products and services.).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnitureprices.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 19, 2013
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