Ashley Furniture Industries, Inc. v. ABC
Claim Number: FA1205001446099
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is ABC (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyvietnam.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2012; the National Arbitration Forum received payment on May 30, 2012.
On May 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyvietnam.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 May 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@ashleyvietnam.com. Also on May 31, 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 June 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant makes the following contentions:
a) Complainant contends that it has rights in the ASHLEY mark, which it uses in connection with furniture goods and services;
b) Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990);
c) Respondent registered the <ashleyvietnam.com> domain name on December 13, 2011;
d) The <ashleyvietnam.com> domain name is confusingly similar to the ASHLEY mark;
e) Respondent is not commonly known by the <ashleyvietnam.com> domain name;
f) The <ashleyvietnam.com> domain name resolves to a website displaying links to various websites;
g) Respondent misleadingly diverts Internet users who are looking for Complainant to the disputed domain name and presumably profits from the display of links on the <ashleyvietnam.com> domain name;
h) Respondent had actual and/or constructive knowledge of Complainant and its rights in the ASHLEY mark prior to Respondent’s registration of the <ashleyvietnam.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ASHLEY mark.
2. Respondent’s <ashleyvietnam.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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 contends that it has rights in the ASHLEY mark. The mark, Complainant contends, is used in connection with goods and services related to furniture. The Panel is provided with evidence of Complainant’s trademark registrations for the ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990) with the USPTO. The panels in Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006), held that the registration of a mark is clear evidence of rights in the mark. Previously, panels have held that these trademark registrations satisfy the required showing of Policy ¶ 4(a)(i) regardless of whether Respondent operates or lives within the country where the trademark is registered. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Therefore, the Panel finds that Complainant demonstrated rights in the <ashleyvietnam.com> domain name under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <ashleyvietnam.com> domain name is confusingly similar to the ASHLEY mark. Complainant states that Respondent’s only substantive change to the ASHLEY mark in the disputed domain name is the addition of the geographic term “vietnam.” The Panel finds that the addition of a geographic term is not a change that makes the <ashleyvietnam.com> domain name distinct from the ASHLEY mark. See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” fails to differentiate the <ashleyvietnam.com> domain name from the ASHLEY mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <ashleyvietnam.com> domain name is confusingly similar to the ASHLEY mark under Policy ¶ 4(a)(i).
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 claims that Respondent is not commonly known by the disputed domain name. Complainant alleges that Respondent is not a customer of Complainant’s and that Complainant did not license or otherwise authorize Respondent to use the ASHLEY mark. Further, Complainant asserts that the WHOIS record for the <ashleyvietnam.com> domain name lists “ABC” as the domain name registrant. As such, the Panel finds that Respondent is not commonly known by <ashleyvietnam.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent’s use of the <ashleyvietnam.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant alleges that the <ashleyvietnam.com> domain name resolves to a website displaying links to various goods and services. Complainant provides a screenshot of the <ashleyvietnam.com> domain name’s resolving website, and the Panel notes that the links appear to be to goods and services unrelated to Complainant based on headings such as “Immigration Attorney” and “Vietnamese Coffee Filter.” Panels have found that the display of unrelated links on a disputed domain name is not a use that falls within the scope of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent’s use of the <ashleyvietnam.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered and is using the <ashleyvietnam.com> domain name in bad faith. Complainant asserts that Respondent registered and is using the disputed domain name to display links to other websites for various goods and services. The Panel finds that the screenshot Complainant provides demonstrates that these links are listed under headings such as “Don’t Fly to Vietnam” and “Marriage Visas / K1 Visas” and are unrelated to Complainant. Complainant contends that Respondent uses the disputed domain name to divert Internet users seeking Complainant and that Respondent receives compensation from the <ashleyvietnam.com> domain name. Therefore, the Panel finds that Respondent registered and is using the <ashleyvietnam.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is attempting to take commercial advantage of Internet users’ mistakes. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant contends that Respondent had actual and/or constructive knowledge of Complainant’s rights in the ASHLEY mark prior to the registration of the <ashleyvietnam.com> domain name. Complainant asserts that its trademark registrations for the ASHLEY mark give Respondent constructive notice of Complainant’s rights in the mark and that Respondent’s registration of a confusingly similar domain name more than 20 years after the ASHLEY mark was registered through the USPTO is evidence that Respondent was well-aware of the mark. Panels have found that constructive knowledge is not enough for a finding of bad faith, but prior panels have held that, where a respondent has actual knowledge of a complainant and its rights, bad faith is apparent. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); 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). Therefore, the Panel finds that Respondent registered and is using the <ashleyvietnam.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the ASHLEY mark when Respondent registered the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyvietnam.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 9, 2012
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