Ashley Furniture Industries, Inc. v. amir shirazi
Claim Number: FA1505001621012
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is amir shirazi (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnituredirectbuy.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2015; the Forum received payment on May 26, 2015.
On May 26, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ashleyfurnituredirectbuy.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 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2015 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@ashleyfurnituredirectbuy.com. Also on May 29, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the ASHLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879, registered June 12, 1990). Complainant uses the ASHLEY mark in connection with its furniture and related goods and services. The <ashleyfurnituredirectbuy.com> domain name is confusingly similar to the ASHLEY mark. The domain name incorporates Complainant’s mark in its entirety, adds the words “furniture,” “direct,” and “buy,” and inserts the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by <ashleyfurnituredirectbuy.com>. Further, Complainant has never licensed or otherwise authorized Respondent to use the ASHLEY trademark. Respondent’s lack of rights or legitimate interests in the <ashleyfurnituredirectbuy.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. In fact, Respondent uses the<ashleyfurnituredirectbuy.com> domain name to feature competing hyperlinks that connect users to other furniture products.
Respondent has engaged in bad faith registration and use of the <ashleyfurnituredirectbuy.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet users and consumers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Lastly, Respondent registered and used the disputed domain name with actual and/or constructive knowledge of the ASHLEY mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 (e.g., Reg. No. 1,600,879, registered June 12, 1990), the ASHLEY FURNITURE mark (registration #2,894,665 registered October 19, 2004) and ASHLEY FURNITURE INDUSTRIES mark (registration #1,604,686, registered July 3, 1990) through their registration with the USPTO. Complainant uses the ASHLEY marks in connection with its furniture and related goods and services. Registration of a mark with the USPTO (or other governmental authority) sufficiently establishes a complainant’s rights in a mark. See 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.”). Complainant’s valid registration of the ASHLEY marks with the USPTO sufficiently demonstrates Complainant’s rights in the marks for purposes of Policy ¶4(a)(i).
Complainant claims the <ashleyfurnituredirectbuy.com> domain name is confusingly similar to the ASHLEY marks (in particular, the ASHLEY FURNITURE mark). The domain name incorporates Complainant’s mark in its entirety, adds the words “direct,” and “buy,” and inserts the gTLD “.com” to the domain name. The addition of generic words and a gTLD to a complainant’s registered mark does not adequately distinguish the mark from the domain name. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Respondent’s <ashleyfurnituredirectbuy.com> domain name is confusingly similar to the ASHLEY FURNITURE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). The burden shifts to Respondent to show it has 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 Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS record for <ashleyfurnituredirectbuy.com> does not reflect Respondent is commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “amir shirazi” as the registrant of record. This bears no obvious relationship to the disputed domain name. Complainant has never licensed or otherwise authorized Respondent to use the ASHLEY trademarks. Since Respondent has failed to supply any evidence to the contrary, the Panel must conclude in light of this record that Respondent has no rights to the disputed domain name according to Policy ¶4(c)(ii). 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 that it is commonly known by the domain name).
Complainant claims Respondent’s lack of rights or legitimate interests in the <ashleyfurnituredirectbuy.com> domain name is clear because Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <ashleyfurnituredirectbuy.com> domain name to feature competing hyperlinks that connect users to other furniture products. Some of the hyperlinks reached through Respondent’s resolving website include “La-Z-Boy Official Site,” “70% off Furniture & Decor,” and “Pergolas at Sears.” Using hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) or Policy ¶4(c)(iii), respectively. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)). Respondent has failed to demonstrate a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Finally, Respondent has registered the disputed domain name using a WHOIS privacy service. This means Respondent has not publicly associated itself with the disputed domain name. This means Respondent has not acquired ay rights to use the domain name simply because it registered the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Respondent’s resolving website contains links to competing websites. These links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Past panels have found such disruption evidence of bad faith registration and use under Policy ¶4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)). This Panel is convinced Respondent’s disruptive behavior is adequate evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent’s use of the disputed domain name likely confuses or frustrates consumers who are looking for Complainant’s products or stores, presumably for Respondent’s financial gain. Using a disputed domain name to feature competing hyperlinks on the resolving website demonstrates bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding 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). Respondent has engaged in bad faith under Policy ¶4(b)(iv).
Finally, Respondent registered the domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith. Respondent has done nothing to rebut this presumption. This ground alone suffices to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ashleyfurnituredirectbuy.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 6, 2015
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