Hudson's Furniture Showroom, Inc. v. Global Access
Claim Number: FA1311001527994
Complainant is Hudson's Furniture Showroom, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin. Respondent is Global Access (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hudsonfurniture.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 1, 2013; the National Arbitration Forum received payment November 5, 2013.
On November 4, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <hudsonfurniture.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@hudsonfurniture.com. Also on November 8, 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 December 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant is the owner of the HUDSON’S FURNITURE mark, used in interstate commerce since 1981 to identify its chain of 18 retail furniture stores. The mark has been used extensively in newspaper and Internet advertising, and Complainant has expended significant sums of money in advertising using the mark. The use has been continuous and substantial, and has, as a result, solidified Complainant’s trademark rights.
b) The <hudsonfurniture.com> domain name is confusingly similar to Complainant’s HUDSON’S FURNITURE mark. The only differences between the mark are deletion of the the “‘s,” the space, and addition of the required “.com” designation..
c) Respondent has no rights to or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <hudsonfurniture.com> domain name. Complainant has not licensed or otherwise authorized the Respondent to use its trademark or any derivative.
b. The <hudsonfurniture.com> domain name resolves, as evidenced by a screenshot provided by Complainant, to a parked website offering only links to other websites, including websites offering products by competitors of Complainant.
d) Respondent registered and is using the <hudsonfurniture.com> domain name in bad faith.
a. Respondent is attempting to divert Complainant’s consumers. Doing so damages Complainant’s business, reputation, and goodwill.
b. Consumers trying to locate Complainant’s furniture products or store may be diverted to Respondent’s websites and the products offered by Complainant’s competitors, believing them to be owned or associated with Complainant. Presumably, Respondent receives some benefit or compensation for allowing its domain name to be used to host these links.
Respondent did not submit a Response in this proceeding.
The Panel notes that Respondent registered the <hudsonfurniture.com> domain name on September 17, 1997.
Complainant established that it has common law rights to the mark at issue in this proceeding.
Respondent used Complainant’s protected mark in a confusingly similar domain name.
Respondent has no rights to or legitimate interests in the disputed domain name or Complainant’s protected mark.
Respondent registered and uses the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant asserts rights in the HUDSON’S FURNITURE mark but notes that it has not registered this mark. Panels have consistently held that registration of a mark is not always necessary to satisfy Policy ¶ 4(a)(i) where other rights in the mark may be established. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel considers whether or not Complainant has shown common law rights in the mark before determining whether Complainant satisfied the requirements of Policy ¶ 4(a)(i).
Complainant argues that it is the owner of the HUDSON’S FURNITURE mark, has used the mark in interstate commerce since 1981 to identify its chain of 18 retail furniture stores. Complainant states that the mark has been used extensively in newspaper and Internet advertising, and that Complainant expended significant sums of money in advertising using the mark. The Panel notes that other than Complainant’s allegations, no extrinsic evidence shows this advertising or sales revenue in the record. The allegation is not refuted, however. Complainant further contends that the use of its mark has been continuous and substantial, and that it has, as a result, led to secondary recognition of Complainant’s trademark and thereby establishes its common law rights. In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), the panel found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. The Panel believes that Complainant has in fact met its burden, and the Panel finds that Complainant has shown common law rights in the HUDSON’S FURNITURE mark as a result of its having acquired secondary meaning under Policy ¶ 4(a)(i).
Complainant asserts that the <hudsonfurniture.com> domain name is confusingly similar to Complainant’s HUDSON’S FURNITURE mark. Complainant states that the only differences between the two are the omission of the apostrophe and the letter “s” in Complainant’s mark as part of the domain name. The Panel notes that such changes have been deemed insufficient when making a determination of whether a meaningful distinction had been made. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). The Panel notes that the <hudsonfurniture.com> domain name omits the spacing of the HUDSON’S FURNITURE mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel disregards these changes as irrelevant. 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)). Therefore, the Panel finds that Respondent’s <hudsonfurniture.com> domain name is confusingly similar to the Complainant’s HUDSON’S FURNITURE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the <hudsonfurniture.com> domain name. Complainant states that it has not licensed or otherwise authorized Respondent to use its trademark or any derivative. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. The Panel notes that the WHOIS information for the disputed domain name provides only the registrant of record listed as “Global Access.” As such, the Panel finds that Respondent is not commonly known by the <hudsonfurniture.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that the <hudsonfurniture.com> domain name resolves, as evidenced by a screenshot provided by Complainant, to a parked website offering only links to other websites, including websites offering products of competitors of Complainant. The Panel notes that the domain name is being used to promote a commercial links page that promotes related products. See Amended Complaint at Attached Ex. 1. A display of links to a complainant’s competitors is not a use within the protective scope of Policy ¶¶ 4(c)(i) and 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent’s use of the <hudsonfurniture.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services and it is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and is using the <hudsonfurniture.com> domain name in bad faith. Complainant states that Respondent is attempting to divert Complainant’s consumers and that doing so damages Complainant’s business, reputation, and goodwill. The Panel again notes the competitive potentiality of such hyperlinks viewable through the disputed domain name’s website. See Amended Complaint at Attached Ex. 1. In the decision in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel concluded 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 supported findings of bad faith registration and use under Policy ¶ 4(b)(iii). Therefore, this Panel finds that Respondent’s registration and use of the <hudsonfurniture.com> domain name is disruptive to Complainant’s business and thus demonstrates bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that consumers trying to locate Complainant’s furniture products or store may be diverted to Respondent’s websites and the products offered by Complainant’s competitors, believing them to be owned or associated with Complainant. Complainant presumes that Respondent receives some benefit or compensation for allowing its domain name to be used to host these links. The Panel notes that in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Accordingly, the Panel finds that Respondent registered and uses the <hudsonfurniture.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hudsonfurniture.com> domain name TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
December 10, 2013
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