Ashley Furniture Industries, Inc. v. Interior Home Furnishings / Jim Justin
Claim Number: FA1201001426561
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Interior Home Furnishings / Jim Justin (“Respondent”), represented by Walter J. Salens of Salens & Salens, P.C., Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyashleyfurnituremichigan.net>, registered with REGISTER.COM, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2012; the National Arbitration Forum received payment on January 26, 2012.
On January 26, 2012, REGISTER.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <buyashleyfurnituremichigan.net> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@buyashleyfurnituremichigan.net. Also on February 1, 2012, 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 February 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <buyashleyfurnituremichigan.net> domain name is confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the <buyashleyfurnituremichigan.net> domain name.
3. Respondent registered and used the <buyashleyfurnituremichigan.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY mark (Reg. No. 1,600,879 registered June 12, 1990). Complainant uses the ASHLEY mark in connection with the sale of furniture.
Respondent, Interior Home Furnishings / Jim Justin, registered the <buyashleyfurnituremichigan.net> domain name on August 23, 2010. The disputed domain name resolves to a website that contains a furniture catalog of competing furniture products.
A representative of Respondent wrote a letter to the Panel stating that Respondent is an ASHLEY Furniture Store in Bad Axe, Michigan and that Complainant authorized Respondent to use Complainant’s ASHLEY mark. Respondent’s representative claims that the website was closed in February 2011 and is not active. As this correspondence does not comply with the requirements for a Response, Respondent’s representative offers no proof that its assertions are true, and Complainant’s evidence contradicts the allegations, the Panel chooses to ignore this other correspondence and proceed with its findings without considering it.
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."
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.”).
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 claims that it owns rights in its ASHLEY mark and presents the Panel with a copy of its trademark registration with the USPTO (Reg. No. 1,600,879 registered June 12, 1990). A trademark registration with the USPTO sufficiently demonstrates rights in a complainant’s mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Consequently, the Panel holds that Complainant owns rights in its ASHLEY mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <buyashleyfurnituremichigan.net> domain name is confusingly similar to Complainant’s ASHLEY mark. The Panel notes that the disputed domain name contains Complainant’s ASHLEY mark with the generic term “buy,” the descriptive term “furniture,” the geographic term “michigan,” and the generic top-level domain (“gTLD”) “.net.” Such additions to a complainant’s mark fail to remove a disputed domain name from the realm of confusing similarity. 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)); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel concludes that Respondent’s <buyashleyfurnituremichigan.net> domain name is confusingly similar to Complainant’s ASHLEY mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <buyashleyfurnituremichigan.net> domain name. The burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. A respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <buyashleyfurnituremichigan.net> domain name. Complainant argues that Respondent is not licensed or authorized to use Complainant’s ASHLEY mark. Complainant claims that Respondent is not a customer of, or authorized seller for, Complainant. Complainant notes that, even if Respondent was an authorized seller, Complainant’s licensing agreement does not give rights to use Complainant’s mark in a domain name. The WHOIS information lists “Interior Home Furnishings / Jim Justin” as the registrant of the disputed domain name. Respondent did not refute any of these allegations because Respondent did not respond to this case. A respondent is not commonly known by a disputed domain name if the respondent is not associated with the complainant, the WHOIS information does not indicate such a fact, and the respondent fails to present any evidence. 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 of that it is commonly known by the disputed domain name); see also 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <buyashleyfurnituremichigan.net> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <buyashleyfurnituremichigan.net> domain name. Complainant contends that Respondent uses the <buyashleyfurnituremichigan.net> domain name to offer competing furniture products. Complainant’s screen shot of the resolving website shows a welcome screen for “MicroD’s ePreValue online Furniture Catalog.” Complainant asserts that clicking through the catalog reveals competing furniture products. In the absence of a Response, the Panel accepts Complainant’s assertions as true. The use of a disputed domain name for a competing website does not demonstrate rights and legitimate interests, the Panel determines that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <buyashleyfurnituremichigan.net> domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
While Complainant does not expressly argue bad faith registration and use under Policy ¶ 4(b)(iii), a respondent’s competing use of a disputed domain name disrupts a complainant’s business and constitutes bad faith registration and use. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). In this case, the Panel infers that Complainant’s business is disrupted by Respondent’s registration and use of the <buyashleyfurnituremichigan.net> domain name because Internet users are likely diverted from Complainant’s business to Respondent’s competing furniture business. Thus, the Panel concludes that Respondent registered and uses the <buyashleyfurnituremichigan.net> domain name in bad faith under Policy ¶ 4(b)(iii).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyashleyfurnituremichigan.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 1, 2012
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