Ashley Furniture Industries, Inc. v. Jerry Bingman
Claim Number: FA1506001626406
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Jerry Bingman (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnituredistributors.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she 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 as Panelist.
Complainant submitted a Complaint to the Forum electronically June 26, 2015; the Forum received payment June 29, 2015.
On June 29, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ashleyfurnituredistributors.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 July 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@ashleyfurnituredistributors.com. Also on July 6, 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 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions in this Proceeding:
Complainant owns the ASHLEY mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,879, registered June 12, 1990). See Compl., at Attached Ex. 2. Complainant uses the ASHLEY mark in connection with its business in the furniture industry. The <ashleyfurnituredistributors.com> domain name is confusingly similar to the ASHLEY mark, because Respondent simply added the descriptive terms “furniture” and “distributors,” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS information available for the disputed domain name. Further, Respondent has not been licensed or authorized to use the ASHLEY mark. Additionally, Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent is using the disputed domain name to offer Complainant’s own products for sale, along with products of Complainant’s competitors. See Compl., at Attached Ex. 1.
Respondent registered and is using the disputed domain name in bad faith. First, Respondent uses the disputed domain name to offer Complainant’s products and products of Complainant’s competitors for sale. Such use is disruptive of Complainant’s business. Additionally, Respondent uses the disputed domain name to attract Internet users to its own website, where it is selling furniture products, for commercial gain. 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.
Respondent’s Contentions
Respondent failed to submit a response.
Respondent registered the disputed domain name November 11, 2014.
Complainant established that it has rights and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name containing Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used 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 or Confusingly Similar:
Complainant uses the ASHLEY mark in connection with its business in the furniture industry. Complainant owns the ASHLEY mark through its trademark registration with the USPTO (Reg. No. 1,600,879, registered June 12, 1990). See Compl., at Attached Ex. 2. Complainant believes that this registration satisfies the requirements of Policy ¶ 4(a)(i). Generally, panels agree with this argument. 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.”). Accordingly, the Panel finds that Complainant has rights in the ASHLEY mark according to Policy ¶ 4(a)(i).
Complainant also argues that the <ashleyfurnituredistributors.com> domain name is confusingly similar to the ASHLEY mark, because Respondent simply added the descriptive terms “furniture” and “distributors,” and the gTLD “.com.” Addition of descriptive terms to a disputed domain name does not distinguish the domain name; it is confusingly similar to the Complainant’s mark. Affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. 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). As such, the Panel finds that the <ashleyfurnituredistributors.com> domain name is confusingly similar to the ASHLEY mark pursuant to 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 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 contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant believes Respondent is not commonly known by the disputed domain name. Further, Complainant notes that Respondent has been neither licensed nor authorized to use the ASHLEY mark. The Panel notes that the available WHOIS information for the disputed domain name lists “Jerry Bingman” as the registrant of the disputed domain name. The Panel recalls that Respondent failed to submit a response to rebut any of Complainant’s contentions. Given the lack of evidence to make an inference otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Additionally, Complainant asserts that Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant argues that Respondent uses the disputed domain name to offer Complainant’s own products and products of Complainant’s competitors for sale. See Compl., at Attached Ex. 1. Complainant urges that such behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have agreed with such reasoning. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Thus, the Panel agrees that Respondent failed to show a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
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 asserts that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Complainant points to Respondent’s use of the disputed domain name to sell Complainant’s own products and products of Complainant’s competitors. See Compl., at Attached Ex. 1. Complainant believes that such actions disrupt Complainant’s business, thus demonstrating bad faith according to policy ¶ 4(b)(iii). The Panel agrees with Complainant and finds that Respondent’s disruptive behavior indicates bad faith registration and use according to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
In addition, Complainant alleges that Respondent uses the disputed domain name in bad faith according to Policy ¶ 4(b)(iv), in that Respondent uses the confusing similarity of the disputed domain name to sell Complainant’s own products along with the products of Complainant’s competitors. The Panel is reminded of Complainant’s Attached Exhibit 1, as a demonstration of this behavior. Complainant believes that Respondent obviously profits from the sale of these goods. The Panel finds Complainant’s allegations to be true, and the Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ASHLEY mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels do not regard constructive notice sufficient to support a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnituredistributors.com> domain name be TRANSFERRED from Respondent to Complainant.
.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 12, 2015
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