Ashley Furniture Industries, Inc. v. Grand Asset Corporation Ltd. c/o chen hui min
Claim Number: FA1505001621691
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Grand Asset Corporation Ltd. c/o chen hui min (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashley-homestores.com> ('the Domain Name'), registered with GuangDong NaiSiNiKe Information Technology Co Ltd.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2015; the Forum received payment on June 1, 2015. The Complaint was submitted in both Chinese and English.
On May 31, 2015, GuangDong NaiSiNiKe Information Technology Co Ltd. confirmed by e-mail to the Forum that the <ashley-homestores.com> domain name is registered with GuangDong NaiSiNiKe Information Technology Co Ltd. and that Respondent is the current registrant of the name. GuangDong NaiSiNiKe Information Technology Co Ltd. has verified that Respondent is bound by the GuangDong NaiSiNiKe Information Technology Co Ltd. 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 June 4, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 24, 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@ashley-homestores.com. Also on June 4, 2015, the Chinese language 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 30 June 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the trade marks ASHLEY (first use 1946) and ASHLEY HOMESTORES, ASHLEY FURNITURE HOMESTORE and ASHLEY FURNITURE HOMESTORE plus device (all first used 1997) in the USA for furniture and/or furniture related services.
The Domain Name is confusingly similar to the Complainant's registered trade marks because it incorporates the distinctive parts of those marks ASHLEY and ASHLEY HOMESTORE with only a hyphen and letter 's' added.
The Respondent has no rights or legitimate interest in the Domain Name. Complainant has not authorized the Respondent to use those marks.
The Domain Name was registered in 2015. It has been used to advertise products such as 'Nice Box' and 'South Bike' amongst other things. The products are not manufactured or distributed by the Complainant. Customers trying to find the Complainant and its products may be frustrated and get the wrong impression that these products are associated with the Complainant. This use is commercial and misleading and the Respondent is not making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade marks ASHLEY (first use 1946) and ASHLEY HOMESTORES, ASHLEY FURNITURE HOMESTORE and ASHLEY FURNITURE HOMESTORE plus device (all first used 1997) in the USA for furniture and/or furniture related services.
The Domain Name was registered in 2015. It has been used to advertise products which are not manufactured or distributed by the Complainant.
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.”).
Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant's registered trade marks because it incorporates the distinctive parts of those marks ASHLEY with only a hyphen and the generic word 'homestore' plus a letter 's' added, 'homestore' being an element in a number of the Complainant's marks, reflecting the furniture business in which the Complainant operates.
See Nintendo of Am. Inc. v This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000)(finding <game-boy.com> at least confusingly similar to the Complainant’s GAME BOY mark because the insertion of punctuation will not prevent confusing similarity).
See Warner Bros Entm't Inc. v Sadler FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that addition of generic terms to Complainant's mark failed to alleviate the confusing similarity between the mark and the domain names).
See The Big Green Egg Inc. v Texas International Property Associates- NA NA, FA 1228170 (NAF Dec 1, 2008) (where complainant owned the BIG GREEN EGG trade mark and Respondent deleted a 'g' between 'big' and 'green' in registering the domain name 'bigreenegg.com' to create a minor spelling error and the Panel found that the disputed domain name was confusingly similar to the Complainant's trade mark.)
The gTLD .com does not serve to distinguish the Domain Name from the ASHLEY mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Respondent does not appear to be commonly known by the Domain Name. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Name has been used to point to a website offering third party commercial products not connected to the Complainant. The Panel notes Seiko Kabushiki Kaisha v CS into Tech, FA 198795 (Nat Arb. Forum Dec 6, 2003) where the Panel concluded that the respondent's diversionary use of the complainant's mark to attract Internet users to its own website, which is unrelated to the mark was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain names.
The Panel thus concludes that there is no rights or legitimate interests in the Domain Name under para 4 (c) (i) or (iii) of the Policy.
Registration and Use in Bad Faith
Respondent has not responded . He has not explained why he has registered a Domain Name including the Complainant's trade mark or a misspelling thereof and/or the generic term 'homestores' which appears as an element in a number of the Complainant’s registered marks and reflects the trade in which the Complainant operates.
The available evidence suggests that the Respondent is using the Domain Name in an attempt to purposely attract Internet users seeking Complainant's goods to a web site used for commercial purposes unconnected to the Complainant to advertise products not of the Complainant’s manufacture, intending disruption of the Complainant's business and to profit from confusion caused. The Panel notes EthnicGrocer, Inc. v Unlimited Latin Flavors, Inc., FA 94385 (Nat Arb Forum July 7, 2000) (finding that the minor degree of variation from the complainant’s marks suggests that the respondent, the complainant's competitor, registered the names for the purpose of disrupting the Complainant’s business under the Policy at 4(b)(iii).
The Panel also notes Philip Morris Inc. v r9.net, D2003-0004 (WIPO Feb. 28, 2003)(finding that the respondent’s registration of an infringing domain name to redirect Internet users to advertisements unconnected with the Complainant constituted bad faith use of the domain name) Respondent appears to have registered and used the Domain Name to profit from Internet user confusion under the Policy at 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 <ashley-homestores.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 14, 2015
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