Ashley Furniture Industries, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1512001654331
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnlture.com>, registered with Tucows Domains Inc.
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 sits as Panelist.
Complainant submitted a Complaint to the Forum electronically December 28, 2015; the Forum received payment December 31, 2015.
On December 29, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <ashleyfurnlture.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. 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 January 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2016, 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@ashleyfurnlture.com. Also on January 6, 2016, 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 January 25, 2016, 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 Allegations in this Proceeding:
Policy ¶ 4(a)(i)
Complainant has rights in the A ASHLEY FURNITURE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,894,665, registered on October 19, 2004). Respondent’s <ashleyfurnlture.com> domain name is confusingly similar to the A ASHLEY FURNITURE mark because it contains the mark, except for the removal of the letter “A” and the spaces between the words, the misspelling of the word “furniture,” and addition of the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <ashleyfurnlture.com> domain name because no evidence suggests as much and because Complainant has not authorized Respondent to use its mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving webpage contains only a link to another website.
Policy ¶ 4(a)(iii)
Respondent registered and uses the <ashleyfurnlture.com> domain name in bad faith because it resolves to a page containing only a link to another website, and this is done in order to profit financially through the creation of confusion.
Respondent’s Allegations in Response in this Proceeding:
Respondent failed to submit a formal Response.
The Panel notes that Respondent created the <ashleyfurnlture.com> domain name August 14, 2015, some eleven years after Complainant’s registration of its mark.
Complainant established rights to and legitimate interests in the disputed domain name.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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(f), 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 has rights in the A ASHLEY FURNITURE mark through its registration with the USPTO (Reg. No. 2,894,665, registered on October 19, 2004). Complainant provided this registration in Exhibit 3. Accordingly, the Panel finds that Complainant has rights in the A ASHLEY FURNITURE mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <ashleyfurnlture.com> domain name is confusingly similar to the A ASHLEY FURNITURE mark because it is substantially similar to the mark, except for the misspelling of the word “furniture” as “furnlture,” changing the “i” to an “l”. The Panel notes that the domain does not contain spaces, or the letter “A” and does include the gTLD “.com.” The Panel agrees that the misspelling of the word “furniture” is not enough to distinguish the domain from the protected mark and finds that Respondent’s <ashleyfurnlture.com> domain name is confusingly similar to the A ASHLEY FURNITURE mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent created a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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 argues that Respondent is not commonly known by the <ashleyfurnlture.com> domain name because no evidence suggests as much and because Complainant has not authorized Respondent to use its mark. The Panel notes that the available WHOIS information lists “VistaPrint Technologies Ltd” as Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <ashleyfurnlture.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant urges that Respondent fails to use the <ashleyfurnlture.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving webpage contains only a link to another website. Complainant provided evidence of this use in Exhibit 1, showing a link to <vistaprint.com/websites>. The Panel finds this evidence sufficient to show that Respondent is not providing a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
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:
Because Respondent registered the domain name without authorization and makes no bona fide use of it, the Panel finds that Respondent registered the disputed domain name in bad faith. Complainant also alleges that Respondent uses the <ashleyfurnlture.com> domain name in bad faith because it resolves to a page containing only a link to another website, <vistaprint.com/websites>, and this is done in order to profit financially through the creation of confusion with Complainant and the inference that may be drawn that Complainant supports the website when it does not.. Complainant provided evidence of this use in Exhibit 1. The confusing similarity of the domain name, as set out above, and the use permits this Panel to make an inference that Respondent knew full well of Complainant’s rights in its mark when Respondent registered and used the disputed domain name in this manner. The Panel finds this evidence sufficient to support a finding that Respondent uses the domain in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
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 requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurnlture.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 8, 2016.
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