Ashley Furniture Industries, Inc. v. Camren de Waard
Claim Number: FA1803001774528
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Camren de Waard (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com>, registered with GoDaddy.com, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2018; the Forum received payment on March 6, 2018.
On March 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2018 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@ashleyfurniturehomestoregrandrapids.com, postmaster@ashleyfurnituregrandrapids.com, and postmaster@ashleyhomestoregrandrapids.com. Also, on March 7, 2018, 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.
A timely Response was received and determined to be complete on March 20, 2018.
An Additional Submission was timely filed by Complainant on March 3. The Additional Submission complies with Supplemental Rule 7.
On March 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Ashley Furniture Industries, Inc., uses its ASHLEY, ASHLEY FURNITURE, and ASHLEY FURNITURE HOMESTORE marks to promote its products and services. Complainant established rights in the ASHLEY, ASHLEY FURNITURE, and ASHLEY FURNITURE HOMESTORE marks through registration with the United States Patent and Trademark Office (“USPTO”) (ASHLEY - Reg. No. 1,600,879, registered June 12, 1990), (ASHLEY FURNITURE – Reg. No. 2,894,665, registered Oct. 19, 2004), and (ASHLEY FURNITURE HOMESTORE – Reg. No. 2,449,045, registered May 8, 2001). See Compl. Exs. 2-4.
Respondent’s <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names are confusingly similar to Complainant’s marks as each incorporates the distinctive portions of the ASHLEY marks and merely append the geographic term “grand rapids” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names. Respondent has not licensed or otherwise authorized Respondent’s marks. Respondent is not commonly known by any of the disputed domain names as the WHOIS information of record lists “Camren de Waard” as the registrant. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to parked websites featuring links to Complainant’s competitors. See Compl. Ex. 1.
Respondent registered and is using the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names in bad faith. Respondent uses the domain names to create confusion as to the source, sponsorship, affiliation or endorsement therein to profit from competing pay-per-click hyperlinks. See Compl. Ex. 1.
B. Respondent
Respondent registered the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names on November 29, 2017. Respondent intended to use the domain names to funnel traffic to its client’s store, which sells Complainant’s furniture.
Respondent offers to transfer the disputed domain names to Complainant at a price of $100 per domain name, for a total of $300.
C. Additional Submissions
Complainant filed an Additional Submissions in which it reiterates previous arguments and adds that given the Respondent’s comments about its familiarity with Complainant and its products, and its admission of its intent to use the domain names for its client’s benefit, that it is obvious that Respondent registered the domain names intending to obtain a commercial benefit, the opportunity to enter into or maintain a contract with its alleged client, from the use of Complainant’s trademarks.
Complainant states further that Respondent does not have the right to register a domain name that includes Complainant’s registered trademarks.
Finally, that Complainant should not be made to purchase such domain names at a profit to the infringer, nor should Complainant need to monitor the ownership of the domain name to determine if Respondent’s alleged contractual relationship with Complainant’s customer continues.
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.
Complainant contends it established rights in the ASHLEY, ASHLEY FURNITURE, and ASHLEY FURNITURE HOMESTORE marks through registration with the USPTO (ASHLEY - Reg. No. 1,600,879, registered June 12, 1990), (ASHLEY FURNITURE – Reg. No. 2,894,665, registered Oct. 19, 2004), and (ASHLEY FURNITURE HOMESTORE – Reg. No. 2,449,045, registered May 8, 2001). See Compl. Exs. 2-4. Registration of a mark with a trademark authority, such as the USPTO, sufficiently confers rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
As such, the Panel holds that Complainant established rights in the ASHLEY, ASHLEY FURNITURE, and ASHLEY FURNITURE HOMESTORE marks under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names are confusingly similar to Complainant’s ASHLEY, ASHLEY FURNITURE, or ASHLEY FURNITURE HOMESTORE marks as each incorporates the distinctive portions of the ASHLEY marks and merely append the geographic term “grand rapids” and the gTLD “.com.”
Similar changes to registered marks have not been sufficient to sufficiently distinguish domain names under a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues that term “grand rapids” is a geographically descriptive term.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Accordingly, the Panel holds that the disputed domain names are confusingly similar to Complainant’s ASHLEY, ASHLEY FURNITURE, or ASHLEY FURNITURE HOMESTORE marks.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its ASHLEY marks in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the infringing domain names list “Camren de Waard” as the registrant.
Accordingly, the Panel concludes that Respondent is not commonly known by the <ashleyfurnituregrandrapids.com>, <ashleyfurniturehomestoregrandrapids.com>, and <ashleyhomestoregrandrapids.com> domain names per Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain names to resolve to parked websites featuring links that compete with, or are unrelated to, Complainant’s business. Use of a domain name to resolve to a generic parked webpage featuring hyperlinks is generally not considered to be a bona fide use under Policy ¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant provides screenshots of the <ashleyfurniturehomestoregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names’ resolving websites, which indicate that the sites feature links including “HOM Furniture Store – Incredible Selection & Prices,” “Home Decoration Accessories,” and “Area Rugs – 2017 Blowout Sale.” See Comp. Ex. 1. Complainant also provides screenshots for the <ashleyfurnituregrandrapids.com> domain name’s resolving website, which features hyperlinks for “Car Insurance,” “Credit Cards,” and “Life Insurance.” See Compl. Ex. 1.
The Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain names, sufficient to shift the burden to Respondent to come forward with evidence of its rights or legitimate interests.
Respondent contends that it has rights and legitimate interests in the disputed domain names because it registered the domain names on behalf of a client who sells Complainant’s products. A respondent may have rights and legitimate interests in a domain name where the respondent is an affiliate of the complainant and the domain was created for the purpose of advertising or providing the Complainant’s services. See Century 21 Real Estate LLC v Wiechert At the Rockies, FA 1660574 (Forum Mar. 4, 2016) (“Respondent established the domain while it was affiliated with Complainant and that the domain was created for the purpose of advertising and providing real estate brokerage services… Therefore, Respondent has rights and legitimate interests in the domain.”).
Respondent did not provide any evidence to support its claim.
The Panel does not agree that Respondent registered the domain names as part of an affiliate relationship with Complainant and therefore concludes that Respondent has not established rights and legitimate interests in the domain names.
The Panel finds that Respondent used the disputed domain names to offer click-through links and as such fails to use the domain names in connection with any bona fide offering of goods or services or a legitimate noncommercial use.
Complainant argues that Respondent registered and is using the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names in bad faith, as Respondent uses the domain names to create confusion as to the source, sponsorship, affiliation or endorsement therein. Use of a domain name to mislead Internet users as to Complainant’s affiliation with the domain name may evidence bad faith under Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
As described in the previous section, Complainant provided screenshots which indicate that Respondent uses the disputed domain names to resolve to websites featuring hyperlinks related to Complainant’s furniture business. See Compl. Ex. 1.
The Panel notes that Respondent’s registration of the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com> and <ashleyhomestoregrandrapids.com> domain names does not predate Complainant’s first claimed rights in the mark. Complainant introduced its marks in commerce more than a decade before Respondent registered the disputed domain names. Indeed, Respondent admits to actual knowledge of the existence of Complainant’s trademarks. Further, Respondent has demonstrated no rights or legitimate interests in the disputed domain names, e.g. that it registered the domain names as part of an affiliate relationship with Complainant.
Respondent contends that it registered the domain names on behalf of a client who sells Complainant’s products. Intent to use a domain name to sell a complainant’s products may preclude a finding of bad faith registration and use. See Celebrity Signatures Int’l, Inc. v. Hera’s Inc. Iris Linder, D2002-0936 (WIPO Dec. 16, 2002) (finding no bad faith where Respondent “intended to use the domain name for a website selling Complainant's products, [it] was encouraged to do so by Complainant's representatives, [and it] did so for over a year without [the complainant’s] objection”).
However, as noted above, Respondent does not provide any evidence to establish this assertion. There is no evidence that Respondent registered the domain names for the purpose of selling Complainant’s products with Complainant’s permission.
The Panel agrees that Respondent used the domain names to create confusion between Complainant’s marks in bad faith under Policy ¶ 4(b)(iv). The Panel therefore finds that Respondent has registered the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyfurniturehomestoregrandrapids.com>, <ashleyfurnituregrandrapids.com>, and <ashleyhomestoregrandrapids.com> domain names be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: April 10, 2018
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