Ashley Furniture Industries, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA1305001501151
Complainant is Ashley Furniture, 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 <ashleyfuriturehomestore.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2013; the National Arbitration Forum received payment on May 23, 2013.
On May 22, 2013, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail to the National Arbitration Forum that the <ashleyfuriturehomestore.com> domain name is registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the name. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED has verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@ashleyfuriturehomestore.com. Also on May 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <ashleyfuriturehomestore.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., is the owner of the ASHLEY trademarks, which are registered for goods and services including furniture in connection with their sale in interstate commerce in the Unites States since 1946. 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 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). 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 presumably intentional misspelling of “furniture” as part of the domain name.
Complainant has not licensed or otherwise authorized Respondent or anyone to use its registered trademarks, or anything confusingly similar to Complainant’s trademarks, in the domain name. The website associated with the domain name is used as a “parked” website, containing only links to other websites, including websites offering products from competitors of Complainant, such as “Pottery Barn.” Consumers trying to locate Complainant’s furniture products or stores may be diverted to these competitors’ products, to the competitive disadvantage of Complainant. The website located at the domain name is used as a “parked” website, for which Respondent presumably receives compensation. At the time the domain name was registered, Respondent had constructive knowledge of Complainant’s registered trademarks by virtue of the registrations with the USPTO, if not actual knowledge. The <ashleyfuriturehomestore.com> domain name was not registered until January 17, 2007.
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 is the owner of the ASHLEY trademarks, which are registered for goods and services including furniture and which have been used in interstate commerce in the United States since 1946. Complainant 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 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). The Panel notes that Respondent appears to reside and operate in India. However, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides and operates, so long as it establishes rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, Complainant’s registration of the ASHLEY, ASHLEY HOMESTORES, and ASHLEY FURNITURE HOMESTORE mark with the USPTO proves its rights in the marks pursuant to 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).”).
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 presumably intentional misspelling of “furniture” as part of the domain name. Respondent removes the letter “n” from Complainant’s ASHLEY FURNITURE HOMESTORE mark in its <ashleyfuriturehomestore.com> domain name. Respondent’s omission of a letter in its domain name does not negate confusing similarity pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Further, Respondent removes the spaces in Complainant’s ASHLEY FURNITURE HOMESTORE mark and adds the generic top-level domain (“gTLD”) “.com” to its domain name. Respondent’s removal of spaces and addition of a gTLD to its domain name is inconsequential to a Policy ¶ 4(a)(i) determination. 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).”). Therefore, Respondent’s <ashleyfuriturehomestore.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 has not licensed or otherwise authorized Respondent to use its registered trademarks, or anything confusingly similar to Complainant’s trademarks, in a domain name. The Panel notes that the WHOIS information identifies “RAKSHITA MERCANTILE PRIVATE LIMITED” as the registrant of the <ashleyfuriturehomestore.com> domain name. Previous panels have found that where there is no evidence in the record showing that Respondent is commonly known by the domain name and Complainant has not authorized Respondent to register the domain, Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <ashleyfuriturehomestore.com> domain name under Policy ¶ 4(c)(ii).
The website associated with the domain name is used as a “parked” website, containing only links to other websites, including websites offering products from competitors of Complainant, such as “Pottery Barn.” Respondent’s website also provides links for “DINING ROOM FURNITURE,” “ELEGANT RUSTIC FURNITURE,” “75% OFF BEDROOM FURNITURE,” among others. Consumers trying to locate Complainant’s furniture products or stores may be diverted to websites offering products manufactured or distributed by competitors of Complainant. Respondent presumably receives compensation for allowing its domain name to host a “parked” website. The Panel therefore finds that Respondent is not using the <ashleyfuriturehomestore.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use where it is using the domain to host a “parked” website. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Consumers trying to locate Complainant’s furniture products or stores may be diverted to these competitors’ products, to the competitive disadvantage of Complainant. The associated website is a “parked” website offering only links to other websites, including those offering products from competitors of Complainant. Respondent’s use of the <ashleyfuriturehomestore.com> domain name to provide competing links disrupts Complainant’s business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The website associated with the disputed domain name is used as a “parked” website, for which Respondent presumably receives compensation. Respondent’s website provides competing hyperlinks including “DINING ROOM FURNITURE,” “ELEGANT RUSTIC FURNITURE,” “75% OFF BEDROOM FURNITURE,” and others. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that “respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). Therefore, Respondent’s use of the disputed domain name to conduct a competing hyperlink directory shows bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
At the time the domain name was registered, Respondent had constructive knowledge of Complainant’s registered trademarks by virtue of the registrations with the USPTO, if not actual knowledge. Complainant asserts that the disputed domain name was created more than fifteen years after Complainant registered its ASHLEY mark, more than a decade after Complainant registered one of its trademarks, more than one year after Complainant registered its other trademarks, and well after Complainant began using its trademarks. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to Respondent’s use of the domain name to provide competing hyperlinks, Respondent had actual knowledge of the mark and Complainant's rights. Thus, 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfuriturehomestore.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 29, 2013
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