Ashley Furniture Industries, Inc. v. null
Claim Number: FA1307001509360
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is null (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapashleyfurniture.com>, registered with TUCOWS, INC.
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 July 11, 2013; the National Arbitration Forum received payment on July 17, 2013.
On July 12, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <cheapashleyfurniture.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@cheapashleyfurniture.com. Also on July 17, 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 August 12, 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 <cheapashleyfurniture.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 owns the ASHLEY mark through its trademark registrations 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 USPTO registration (Reg. No. 2,894,665, registered October 19, 2004). Complainant owns the A ASHLEY FURNITURE INDUSTRIES mark through its USPTO registration (Reg. No. 1,604,686, registered July 3, 1990). Complainant has continuously and substantially used the ASHLEY mark in connection with furniture retail stores in interstate commerce since at least 1946.
The <cheapashleyfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY-formative marks, as the only substantive difference is the addition of the non-distinctive term “cheap,” and the descriptive term “furniture". The WHOIS record identifies “null” as the registrant of the disputed domain name. Complainant has not licensed or otherwise authorized the Respondent to use the mark in the domain name. The resolving webpage contains links to other websites, including sites advertising products offered or distributed by competitors of the Complainant. Presumably, Respondent receives some compensation for allowing its domain name to be used to host a parked website. The disputed domain name resolves to a page that offers products from competitors of Complainant. The resulting disruption of Complainant’s business is evidence of bad faith. Respondent uses the confusingly similar domain name in an effort to confuse users as to Complainant’s association or endorsement of the resolving site. As Respondent presumably benefits commercially from the confusion via click-through fees, the domain name was registered and used in bad faith. Respondent registered the domain name in bad faith because Respondent had constructive knowledge of Complainant’s rights in the mark, if not actual knowledge. The domain name at issue was apparently registered on January 23, 2013.
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 trademark registrations with the USPTO (Reg. No. 1,600,879, registered June 12, 1990). Complainant also owns the A ASHLEY FURNITURE mark (Reg. No. 2,894,665, registered October 19, 2004), and the A ASHLEY FURNITURE INDUSTRIES mark (Reg. No. 1,604,686, registered July 3, 1990) through its USPTO registrations. USPTO registrations are sufficient to establish a complainant’s rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining 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)). Therefore, Complainant’s USPTO trademark registrations establish its rights in the ASHLEY marks.
The <cheapashleyfurniture.com> domain name is confusingly similar to Complainant’s ASHLEY-formative marks, as the only substantive difference is the addition of the non-distinctive term “cheap,” and the descriptive term “furniture.”. The disputed domain name also differs from Complainant’s ASHLEY mark in that it includes the generic top-level domain (“gTLD”) “.com.” The addition of generic or descriptive words to a complainant’s mark is insufficient to differentiate the resulting domain name from the incorporated mark. 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)). Further, gTLDs, such as “.com,” are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Respondent’s alterations to Complainant’s mark are insufficient to differentiate the disputed domain from the mark, and therefore the <cheapashleyfurniture.com> domain name is confusingly similar to the ASHLEY mark pursuant to 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.”).
Respondent is not commonly known by the disputed domain name. The WHOIS record identifies “null” as the registrant of the disputed domain name. Further, Complainant has not licensed or otherwise authorized the Respondent to use the mark in the domain name. The Panel notes that Complainant did not submit a Response to refute Complainant’s contentions. Accordingly, the Panel finds that Respondent is not commonly known by the disputed 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).
Respondent does not make a legitimate noncommercial or fair use of the domain name. The resolving webpage contains links to other websites, including sites advertising products offered or distributed by Complainant’s competitors, such as Macy’s. The Panel presumes that Respondent receives some compensation for allowing its domain name to be used to host a parked website. Domain names resolving to a webpage offering links to the complainant’s competitors do not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Therefore, Respondent’s use of the domain name is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The disputed domain name resolves to a page that offers products from competitors of Complainant. The disputed domain name resolves to a webpage that provides links to various third-parties, some of which compete for Complainant’s business, such as Macy’s. Previous panels have found evidence of bad faith disruption where a respondent uses the resolving page to provide links to competitors of Complainant. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel, accordingly, finds evidence of Respondent’s bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Respondent uses the confusingly similar domain name in an effort to confuse Internet users as to Complainant’s association or endorsement of the resolving site. The Panel presumes that Respondent receives click-through fees, and therefore finds that the confusingly similar domain name was registered and used in bad faith. Previous panels have found evidence of bad faith registration and use where the respondent uses the disputed domain name to offer links to third-party websites, from which respondent likely profits. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”). Therefore, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered the domain name in bad faith because Respondent had constructive knowledge of Complainant’s rights in the mark, if not actual knowledge. Pevious panels have not regarded constructive notice to be sufficient for a finding of bad faith; this Panel determines that Respondent had actual knowledge of Complainant's mark and therefore finds 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 <cheapashleyfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 14, 2013
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