Ashley Furniture Industries, Inc. v. millayas
Claim Number: FA1306001506773
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is millayas (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discountashleyfurniture.com> registered with DOMAIN.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2013; the National Arbitration Forum received payment on June 28, 2013.
On June 26, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <discountashleyfurniture.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.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 July 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@discountashleyfurniture.com. Also on July 1, 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 July 25, 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:
Respondent’s domain name, <discountashleyfurniture.com>, the domain name at issue, is confusingly similar to Complainant’s ASHLEY mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the ASHLEY mark through its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,600,879, registered June 12, 1990). Complainant owns the A ASHLEY FURNITURE mark through its registration with the USPTO (Reg. No. 2,894,665, registered October 19, 2004).
Complainant uses the ASHLEY marks in connection with retail store services in the field of furniture and has done so since 1946.
The disputed domain name is confusingly similar to Complainant’s ASHLEY mark. The mark is registered for furniture, and the only substantive difference between the mark and the domain name is the non-distinctive term “discount.”
Respondent has no right or legitimate interest in the disputed domain name. Respondent is not commonly known by the domain name, but as “millaya”, as is listed in the WHOIS record. Further, Complainant has not licensed or otherwise authorized the Respondent to use the mark. Respondent is not making a legitimate noncommercial or fair use of the domain name. Before Complainant wrote to Respondent requesting the transfer of the disputed domain, the dispute domain name resolved to a website that stated “This site is under development”, but also offered links to websites advertising products offered or distributed by Competitors of Complainant, such as Macy’s. After Complainant contacted Respondent’s predecessor to discuss the transfer of the domain name, the resolving website was changed to reference “Kickstrap”, a service related to website design. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain. The resolving webpage was previously used to display links to competitors of Complainant, and now references an unrelated website design service. Respondent’s actual knowledge of Complainant’s rights in the mark is evidence of Respondent’s bad faith. At the very least, Respondent had constructive knowledge of Complainant’s rights. Respondent registered the disputed domain name on September 28, 2012.
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 owns the ASHLEY mark through its registration with the USPTO (Reg. No. 1,600,879, registered June 12, 1990). Complainant owns the A ASHLEY FURNITURE mark through its registration with the USPTO (Reg. No. 2,894,665, registered October 19, 2004). Complainant has established its rights in the ASHLEY and A ASHLEY FURNITURE marks through its USPTO registrations. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <discountashleyfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY mark. Complainant notes that the ASHLEY mark is registered for furniture, which adds to the confusing similarity between the domain name and the mark. Complainant also notes that it owns the A ASHLEY FURNITURE MARK, which, like the disputed domain, incorporates the term “furniture” to the ASHLEY mark. Complainant contends that the only substantive difference between the mark and the domain name is the non-distinctive term “discount.” Previous panels have determined that the inclusion of the generic top-level domain (“gTLD”) “.com” is irrelevant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, previous panels have found confusing similarity where the domain name in dispute contains complainant’s mark combined with a generic or descriptive word. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel finds the terms “discount,” and “furniture” to be generic or descriptive and finds that the <discountashleyfurniture.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Insofar as the domain name merely adds “discount” and removes the word “a” from the A ASHLEY FURNITURE mark, the <discountashleyfurniture.com> domain name is confusingly similar to that mark as well. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); Qwest Comm. Intl., Inc. v. Chase, FA 223006 (Nat. Arb. Forum Feb. 13, 2004) (“Discount” is a generic addition, with no distinctiveness. The term “discount” refers to the trademark. . . in a way indicating a low-price or discount offer for products/services of the said trademark.”).
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.”).
Respondent has no right or legitimate interest in the disputed <discountashleyfurniture.com> domain name. Respondent is not commonly known by the domain name, but as “millaya”, as is listed in the WHOIS record. Further, Complainant has not licensed or otherwise authorized the Respondent to use the mark. Respondent did not submit a Response to refute Complainant’s contentions. As such, 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).
Respondent is not making a legitimate noncommercial or fair use of the <discountashleyfurniture.com> domain name. Complainant asserts that before it wrote to Respondent requesting the transfer of the disputed domain, the dispute domain name resolved to a website that stated: “This site is under development”, but also offered links to websites advertising products offered or distributed by Competitors of Complainant, such as Macy’s. After Complainant contacted Respondent’s predecessor to discuss the transfer of the domain name, the resolving website was changed to reference “Kickstrap”, a service related to website design. A respondent’s use of a confusingly similar domain name to provide links that compete with a complainant does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006), the panel found that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Under the circumstances, and in light of no Response in this proceeding, the Panel believes the previous and current registrant are the same person. Accordingly, the Panel attributes the competing hyperlinks to Respondent and finds that Respondent’s use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The <discountashleyfurniture.com> domain name’s resolving webpage was previously used to display links to competitors of Complainant and now references an unrelated website design service. Previous panels have found evidence of bad faith where a respondent has used the website to promote links to goods or services that compete with Complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds Respondent was responsible for the earlier website that displayed links to Complainant’s competitors, such as Macy’s. Accordingly, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Internet users who enter the <discountashleyfurniture.com> domain name will be diverted from Complainant’s business, regardless of whether the domain name has a substantive use. Previous panels have come to the consensus that an inactive or low-content website that promotes something as unrelated as a hosting service can count as evidence towards Policy ¶ 4(b)(iv) bad faith, especially when the infringing domain name is as such that the respondent need merely put the domain name to any use to create an inference of bad faith. See, e.g., Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel thus finds that the domain name has been registered and used in furtherance of a Policy ¶ 4(b)(iv) bad faith scheme to confuse Internet users as to the source of the content.
Respondent’s bad faith is further demonstrated through Respondent’s constructive, if not actual knowledge of Complainant’s rights in the mark. Respondent had constructive knowledge by virtue of Complainant’s USPTO registrations. Some previous panels have not regarded constructive notice to be sufficient for a finding of bad faith. However, this Panel finds that Respondent had actual knowledge of Complainant's mark and accordingly determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <discountashleyfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2013
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