Ashley Furniture Industries, Inc. v. Steve Olson a/k/a Beth Moser for Steve Olson / AZ Home Furniture
Claim Number: FA1506001622176
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Steve Olson a/k/a Beth Moser for Steve Olson / AZ Home Furniture (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfurniture.forsale> and <ashleyfurniture.club>, registered with Blue Razor Domains, LLC and Go Australia Domains, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 4, 2015.
On June 2, 2015, Go Australia Domains, LLC confirmed by e-mail to the Forum that the <ashleyfurniture.club> domain name is registered with Go Australia Domains, LLC and that Respondent is the current registrant of the name. Go Australia Domains, LLC has verified that Respondent is bound by the Go Australia Domains, 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 June 2, 2015, Blue Razor Domains, LLC confirmed by e-mail to the Forum that the <ashleyfurniture.forsale> domain name is registered with Blue Razor Domains, LLC and that Respondent is the current registrant of the name. Blue Razor Domains, LLC has verified that Respondent is bound by the Blue Razor Domains, 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 June 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@ashleyfurniture.forsale, postmaster@ashleyfurniture.club. Also on June 10, 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 July 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”), one of which is the ASHLEY mark (e.g., Reg. No. 1,600,879, registered June 12, 1990), and another being for the ASHLEY FURNITURE HOMESTORE mark (e.g., Reg. No. 2,449,045, registered May 8, 2001). Both marks are used in connection with the sale of retail store services in the field of furniture. The <ashleyfurniture.forsale> and <ashleyfurniture.club> domain names are confusingly similar to the ASHLEY mark because the domain names contain the entire mark and add the term “furniture” along with the generic top-level domains (“gTLDs”) “.forsale” and “.club.” The domain names are confusingly similar to the ASHLEY FURNITURE HOMESTORE mark because they contain the dominant portion of the mark (“Ashley Furniture”) and add the gTLDs “.forsale” and “.club.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Further, the domain names resolve to a parked webpage containing links to Complainant’s competitors.
Respondent has engaged in bad faith registration and use. Respondent registered the domain names with the purposes of selling them. Respondent is also trying to commercially profit from a likelihood of confusion. Also, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Ashley Furniture Industries, Inc. which list its address as Arcadia, WI, USA. Complainant is the owner of the USA registered trademarks for ASHLEY and ASHLEY FURNITURE HOMESTORE. Complainant has secured additional domestic registrations for a number of similar marks constituting the ASHLEY family of marks which are all registered in association with the Complainant’s offering of goods and services in the furniture industry. Complainant has continuously used these marks since at least as early as 1990 when the first ASHLEY mark was registered.
Respondent is Steve Olson a/k/a Beth Moser for Steve Olson / AZ Home Furniture of Mesa, AZ, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that <ashleyfurniture.club> was registered on or about May 7, 2014, and <ashleyfurniture.forsale> was registered on or about January 21, 2015.
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 registered the ASHLEY mark with the USPTO (e.g., Reg. No. 1,600,879, registered June 12, 1990). Complainant also owns a USPTO registration for the ASHLEY FURNITURE HOMESTORE mark (e.g., Reg. No. 2,449,045, registered May 8, 2001). Both marks are used in connection with the sale of retail store services in the field of furniture. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <ashleyfurniture.forsale> and <ashleyfurniture.club> domains names are confusingly similar to the ASHLEY mark. Complainant notes that the domain names contain the entire mark and add the term “furniture” along with the gTLDs “.forsale” and “.club.” As a general rule, a gTLD can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have found that the addition of terms that describe the goods or services offered under the mark at issue cause confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel here finds that the <ashleyfurniture.forsale> and <ashleyfurniture.club> domains names are confusingly similar to the ASHLEY mark.
Complainant additionally argues that the <ashleyfurniture.forsale> and <ashleyfurniture.club> domains names are confusingly similar to the ASHLEY FURNITURE HOMESTORE mark. Complainant notes that the domain names contain the dominant portion of the mark and differ only by the omission of the term “Homestore” and the addition of the gTLDs “.forsale” and “.club.” Again, gTLDs can never distinguish a domain name from the mark at issue. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Previous panels have also found the omission of certain words from a mark in a domain name to be inconsequential when determining confusing similarity. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel here finds that the <ashleyfurniture.forsale> and <ashleyfurniture.club> domains names are confusingly similar to the ASHLEY FURNITURE HOMESTORE mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the <ashleyfurniture.forsale> and <ashleyfurniture.club> domain names, nor is Respondent licensed to use Complainant’s marks in domain names. The Panel notes that “Steve Olson” is listed as the registrant of record for the <ashleyfurniture.forsale> domain name, and “Beth Moser for Steve Olson” is listed as the registrant of record for the <ashleyfurniture.club> domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain names or in possession of licensing rights. Because Respondent has failed to provide any evidence to the contrary, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names <ashleyfurniture.club> and <ashleyfurniture.forsale> fails to amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. In support, Complainant argues that the domain names resolve to a parked webpage that contains various hyperlinks, some of which lead to competing goods. The Panel notes that the domain names do resolve to a parked webpage, and hyperlinks appear that read, among other things, “AllModern Furniture,” Aspen Log Furniture,” and “Outdoor Patio Furniture.” A respondent is always responsible for the content of a parked webpage. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Past panels have also found that displaying hyperlinks to competing goods or service on the resolving webpage of a confusingly similar domain name cannot result in rights under Policy ¶¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel here finds that Respondent lacks any rights to the disputed domains under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering to sell the disputed domain names for costs that exceed the out-of-pocket costs associated with their acquisition. Complainant claims that Respondent assessed the value of the domain names at $75,000.00, and that Respondent is attempting to sell them for this amount. Complainant has provided a copy of an email in which Respondent states, “I value the domain name www.ashleyfurniture.forsale @ $75,000. If this is an attempt for making an offer to purchase, please advise.” The Panel finds evidence of such an offer indicates bad faith registration and use as it supports a conclusion that Respondent primarily intended such an offer when registering the domain names. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel here finds bad faith and use under Policy ¶ 4(b)(i).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially benefit from a likelihood of confusion. Complainant argues that because the resolving webpage contains links to other furniture provider, Internet users are likely to believe that the webpage is sponsored by or affiliated with Complainant. Complainant further asserts that Respondent is profiting through the reception of pay-per-click fees. The Panel again notes that the domain names resolve to a parked webpage, and hyperlinks appear that read, among other things, “AllModern Furniture,” Aspen Log Furniture,” and “Outdoor Patio Furniture.” A respondent is always responsible for the content of a parked webpage. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). It is well established that use of a domain name to create a likelihood of confusion for commercial gain amounts to bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel here finds that a likelihood of confusion exists, and that Respondent is profiting in the process, thus further buttressing the conclusion that bad faith registration and use exist under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniture.forsale> and <ashleyfurniture.club> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 21, 2015
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