national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Hatrak, Michael

Claim Number: FA1306001507401

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is Hatrak, Michael (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyfurnitureplusmattresses.com>, registered with NETWORK SOLUTIONS, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2013; the National Arbitration Forum received payment on July 1, 2013.

 

On June 28, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <ashleyfurnitureplusmattresses.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name.  NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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@ashleyfurnitureplusmattresses.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 23, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s domain name, <ashleyfurnitureplusmattresses.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.

 

FINDINGS

Complainant, Ashley Furniture Industries, Inc., is the owner of the ASHLEY trademarks, which are registered for goods and services including furniture.

Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY mark (Reg. No. 1,600,879, registered June 12, 1990); for the     A  ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004); and for the A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686, registered July 3, 1990). The domain name at issue is confusingly similar to Complainant’s registered trademarks, with the only substantive difference being the addition of the descriptive term “mattresses” and the non-distinctive term “plus” as part of the domain name.

 

Respondent is not commonly known by the domain name. The website located at the <ashleyfurnitureplusmattresses.com> domain name is inaccessible. At the time the domain name was registered, Respondent had constructive or actual knowledge of Complainant’s registered trademarks by virtue of the registrations in the USPTO, if not actual knowledge.  Respondent’s <ashleyfurnitureplusmattresses.com> domain name was not created until March 27, 2013.

 

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 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.”).

 

Identical and/or Confusingly Similar

Complainant is the owner of the ASHLEY trademarks, which are registered for goods and services including furniture. Complainant is also the owner of a trademark registration with the USPTO for the ASHLEY mark (Reg. No. 1,600,879, registered June 12, 1990); for the A ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004); and for the A ASHLEY FURNITURE INDUSTRIES (Reg. No. 1,604,686, registered July 3, 1990).  Respondent appears to reside within the United States. Therefore, Complainant’s registration of the ASHLEY, A ASHLEY FURNITURE, and A ASHLEY FURNITURE INDUSTRIES marks with the USPTO sufficiently demonstrates 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).”).

 

Respondent’s <ashleyfurnitureplusmattresses.com> domain name is confusingly similar to Complainant’s ASHLEY mark, with the only substantive difference being the addition of the descriptive term “mattresses” and the non-distinctive term “plus” as part of the domain name.  Respondent’s inclusion of descriptive or generic terms does not distinguish Respondent’s domain name from Complainant’s ASHLEY  mark under Policy ¶ 4(a)(i). 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)).  Respondent eliminates the space in Complainant’s ASHLEY  mark and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. Respondent’s omission of a space and inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. 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)). Accordingly, Respondent’s <ashleyfurnitureplusmattresses.com> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

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 is not commonly known by the domain name at issue.  Rather, Respondent is known as “Michael Hatrak.” Respondent is not a customer of Complainant and Complainant has not licensed or otherwise authorized Respondent to use its registered trademarks in the domain name. The WHOIS information lists “Hatrak, Michael” as the registrant. Therefore, Respondent is not commonly known by the <ashleyfurnitureplusmattresses.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).

 

The website located at the <ashleyfurnitureplusmattresses.com> domain name is inaccessible. Respondent’s disputed domain name resolves to an inactive webpage stating “Internet Explorer cannot display the webpage.”  It appears that Respondent has failed to make an active use of the  <ashleyfurnitureplusmattresses.com> domain name.  Accordingly, the Panel determines that Respondent is not using the disputed domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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 <bloomberg.ro> 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 offering 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 finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

The website located at the <ashleyfurnitureplusmattresses.com> domain name is inaccessible. Respondent’s disputed domain name resolves to an inactive website stating “Internet Explorer cannot display the webpage.” Consumers trying to locate Complainant’s furniture products or stores may be diverted to this website, thinking that the domain name and website are owned by or associated with Complainant, and become frustrated at finding an inaccessible website.  These consumers may then decide to search for their furniture products elsewhere. In Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) even though respondent had 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”. Thus, Respondent’s non-use of the disputed domain name attracts Internet users away from Complainant’s website, evidencing bad faith use and registration under 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 in the USPTO, if not actual knowledge.  Respondent created the domain name nearly two decades after Complainant registered two of its trademarks, more than five years after Complainant registered its third trademark, well after Complainant began using its trademarks, and after Complainant had contacted a company with which Respondent is associated about another domain name that included Complainant’s trademarks. Complainant also points to an e-mail sent by Respondent in which Respondent makes it clear that it knew of Complainant’s rights, yet thought he had some constitutional right to infringe on Complainant’s trademarks.  While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the circumstances of this case, 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. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ashleyfurnitureplusmattresses.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  July 27, 2013

 

 

 

 

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