Ashley Furniture Industries, Inc. v. BizClimb LLC
Claim Number: FA1506001626407
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is BizClimb LLC (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurniturecreditcardr.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2015; the Forum received payment on June 29, 2015.
On June 29, 2015, NameSilo, LLC confirmed by e-mail to the Forum that the <ashleyfurniturecreditcardr.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@ashleyfurniturecreditcardr.com. Also on July 2, 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 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 the ASHLEY mark through 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 goods and services in the furniture industry. The <ashleyfurniturecreditcardr.com> domain name is confusingly similar to the ASHLEY mark. The domain name contains Complainant’s mark in full, inserts the generic terms “furniture,” “credit,” “card,” and the letter “r.” The disputed domain name contains the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent registered the disputed domain name more than two decades after Complainant registered two of its trademarks. Respondent is not commonly known by the disputed domain name. Further, Complainant has not licensed or otherwise authorized Respondent to use the ASHLEY mark. Respondent is not making a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the <ashleyfurniturecreditcardr.com> domain name. Respondent’s disputed domain name uses Complainant’s ASHLEY mark to provide Internet users an opportunity to comment on their use of Complainant’s credit card services. Consumers trying to locate Complainant’s products, services, or stores may become frustrated when diverted to a website about comments on a credit card, which damages Complainant and its business.
Respondent has engaged in bad faith registration and use of the <ashleyfurniturecreditcardr.com> domain name. Respondent uses the disputed domain name to tarnish the image of Complainant, through a likelihood of confusion, presumably for Respondent’s financial benefit in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Ashley Furniture Industries, Inc., owns the ASHLEY mark through 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 goods and services in the furniture industry.
Respondent, BizClimb LLC, registered the <ashleyfurniturecreditcardr.com> domain name on August 21, 2014. . Respondent’s disputed domain name uses Complainant’s ASHLEY mark to provide Internet users an opportunity to comment on their use of Complainant’s credit card services.
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 owns rights in the ASHLEY mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 1,600,879, registered June 12, 1990). 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.”).
Respondent’s <ashleyfurniturecreditcardr.com> domain name is confusingly similar to the ASHLEY mark under Policy ¶ 4(a)(i). The domain name contains Complainant’s mark in full, inserts the generic terms “furniture,” “credit,” “card,” and the letter “r.”
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent registered the disputed domain name more than two decades after Complainant registered two of its trademarks. Complainant has not licensed or authorized Respondent to use the ASHLEY mark. The WHOIS information for the <ashleyfurniturecreditcardr.com> domain name refers to “BizClimb LLC” as the registrant of record. Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the <ashleyfurniturecreditcardr.com> domain name under Policy ¶ 4(c)(iii). Respondent’s disputed domain name uses the ASHLEY mark to provide Internet users an opportunity to comment on their use of Complainant’s credit card services. Respondent presumably receives a financial benefit through this activity. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Prior panels have declined to find rights or legitimate interests for respondents who use a complainant’s trademark to offer critiques or reviews of that complainant. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
Respondent registered and uses the disputed domain name to tarnish the image of Complainant, through a likelihood of confusion, presumably for Respondent’s financial benefit in violation of Policy ¶ 4(b)(iv). Although Respondent may sponsor a website offering consumers the opportunity to criticize Complainant, Respondent is not entitled to use Complainant’s registered trademark to do so. See TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturecreditcardr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 12, 2015
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