Ashley Furniture Industries, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1603001667374
Complainant is Ashley Furniture Industries, Inc. (Ashley Furniture Industries, InTerrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Domain Admin / Whois Privacy Corp. (Domain Admin / Whois Pr
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnitue.com>('the Domain Name'), registered with Internet Domain Service BS Corp.
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 March 24, 2016; the Forum received payment on March 28, 2016.
On March 28, 2016, Internet Domain Service BS Corp. confirmed by e-mail to the Forum that the <ashleyfurnitue.com> domain name is registered with Internet Domain Service BS Corp. and that Respondent is the current registrant of the name. Internet Domain Service BS Corp. has verified that Respondent is bound by the Internet Domain Service BS Corp. 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 March 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@ashleyfurnitue.com. Also on March 30, 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 April 21, 2016, 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 positions can be summarized as follows;
The Domain Name is confusingly similar to the Complainant’s registered trade mark ASHLEY, registered for furniture with the only substantive difference being the presumably intentioned misspelling of furniture as 'furnitue'.
The Complainant's ASHLEY trade mark was registered in 1990 with use in commerce since 1946.
The Domain Name was created November 27, 2005 well after the Complainant began using and registered its trade marks.
Respondent is not commonly known by the Domain Name. Complainant has not licensed Respondent to use its mark. The Respondent is not making a legitimate non commercial or fair use of the Domain Name.
The web site attached to the Domain Name is a parked web site offering only links to other web sites including products offered by competitors to the Complainant. Customers may think the Domain Name and website attached to it is owned by the Complainant and be diverted. The Respondent should not be allowed to use the Complainant's well known mark to divert consumers looking for the Complainant to products offered by the Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant's ASHLEY trade mark registered for furniture was registered in 1990 with use in commerce since 1946.
The web site attached to the Domain Name is a parked web site offering only links to other web sites and products offered by competitors to 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(f), 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 respondentecide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(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.”).
The Domain Name is confusingly similar to the Complainant's ASHLEY mark registered for furniture. It includes this mark of the Complainant's in full adding only a misspelling of the generic word 'furniture' as ‘furnitue’.
Previous panels have held that adding a generic word may increase the likelihood of confusion where the chosen term alludes to the Complainant's business. See Chanel Inc. v Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (where it was held that the addition of the generic term 'perfumes' was not a distinguishing feature, and in this case increased the likelihood of confusion because it related to the Complainant’s business) . ‘Furnitue’ may easily be misread as the ordinary generic word ‘furniture’.
The gTLD .com does not serve to distinguish the Domain Name from the Complainant's marks. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) and OL Inc. v Morgan, FA 1349260 (Nat. Arb. Forum Nov 4, 2010).
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.
The Respondent does not appear to be authorised to use or commonly known by the Domain Name. The site attached to the Domain Name appears to be set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the complainant's services. Panels have previously held that such conduct does not give rights or legitimate interests in the Domain Name. See ALPITOUR SpA v Albloushi FA 888651 (Nat. Arb Forum. Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.)
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
The Respondent's use of the site is commercial and he is using it to make profit from linking to third party web sites that compete with the Complainant in a confusing manner. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the links on its web site. See AltaVista Co. v Krotov, D2000-1091 (WIPO Oct 25, 2000)(Finding bad faith under Policy 4 (b)(iv) where the respondent's domain name resolved to a web site that offered links to third party web sites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (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 <ashleyfurnitue.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<April 26, 2016>>
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