Ashley Furniture Industries, LLC v. Mohsin shahzad
Claim Number: FA2106001950582
Complainant is Ashley Furniture Industries, LLC (“Complainant”), represented by Monica B. Richman of Dentons US LLP, Illinois, USA. Respondent is Mohsin shahzad (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyfurnituredecor.com>, registered with Launchpad.com Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2021; the Forum received payment on June 10, 2021.
On June 11, 2021, Launchpad.com Inc. confirmed by e-mail to the Forum that the <ashleyfurnituredecor.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. 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 June 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2021 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@ashleyfurnituredecor.com. Also on June 11, 2021, 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. Respondent did however send an email to the Forum, see below.
On July 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the world’s largest furniture manufacturer, and also manufactures and sells a variety of other related home goods internationally. Complainant’s brand was founded in 1946 and has over 1,000 global retail locations, more than 33,000 employees, and has generated over USD $6 billion in revenue. Complainant has registered the mark ASHLEY by itself and as the dominant component of other marks in the United States, Pakistan, Trinidad and Tobago, and globally; the mark ASHLEY was registered in the United States in 1990. Complainant has registered the mark ASHLEY FURNITURE in many countries around the world including in Pakistan in 2018.
Complainant alleges that the disputed domain name is confusingly similar to its ASHLEY FURNITURE mark because it includes the mark in its entirety and merely adds the descriptive term “decor” and the “.com” generic top level domain (“gTLD”). Complainant also alleges that the disputed domain name is confusingly similar to its ASHLEY mark because it includes the mark in its entirety and merely adds the descriptive terms “furniture” and “decor” (which relate to Complainant’s business) and the “.com” gTLD.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its marks. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to host pay-per-click hyperlinks to competing products from which it receives referral revenue.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale. Additionally, Respondent uses the disputed domain name to host competing pay-per-click hyperlinks from which it likely receives referral fees. Furthermore, Respondent had actual knowledge of Complainant’s marks based on the widespread recognition of the mark and Respondent’s use of the mark on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states, in pertinent part:
We would like to highlight few key points:
1. Our intention when buying this domain was never to sell any kinds of our own products through it. This is an informational blog spreading information for our readers.
2. Later down the line, affiliate marketing strategy might be added but is currently not active. Even then, we do not plan to sell any of our own products through this website. We are not manufacturers or traders of tangible products at all.
3. The domain was available and we purchased it from a well-known service provider. There is no intention to use any party’s name or brand at all. Our logos and all other identifiers are solely our own developed independently.
4. We will not use any party including your name for our benefit. Our decision to go with this domain name is based on personal choices and we were not aware of your or any other similar named stores and brands at all.
With all these in mind, we would like to assure you that your business name is under no threat. We have not and will not damage anyone’s copyrights to business at all. There is no unauthorized use of Ashley mark or name as it is a famous name and variations like ours are natural without any intentions to use anyone’s brand or name at all. Hence, we are under no obligation to meet the three conditions [that Complainant had set forth in a cease-and-desist letter; those conditions were; 1) transfer the domain name ashleyfurnituredecor.com to Ashley; discontinue all use of the ASHLEY marks; and confirm you will not use the ASHLEY marks, or any variations thereof, in the future].
Complainant has rights in the marks ASHLEY and ASHLEY FURNITURE dating back, respectively, to 1990 and 2018 and uses them to market furniture.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain name to resolve to a web site that displays competing pay-per-click hyperlinks. The resolving website displays a guide to Complainant’s products; Complainant’s email indicates prior knowledge of Complainant’s marks.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name includes Complainant’s ASHLEY FURNITURE mark in its entirety and merely adds the descriptive term “decor” and the “.com” generic top level domain (“gTLD”); further, the disputed domain name includes Complainant’s ASHLEY mark in its entirety and merely adds the descriptive terms “furniture” and “decor” (which relate to Complainant’s business) and the “.com” gTLD). The addition of one or more descriptive terms and a gTLD to a mark do not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (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). Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information identifies “Mohsin shahzad” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name domain to host pay-per-click hyperlinks to competing products from which it receives referral revenue. In its email, Respondent does not deny that the resolving website displays pay-per-click links. Respondent’s allegation that it does not violate Complainant’s copyrights is not relevant for the instant proceedings, which are about the use of Complainant’s trademark in a domain name. Contrary to Respondent’s allegation, its use of Complainant’s mark is not permissible under the Policy: use of a disputed domain name to host pay-per-click hyperlink from which a respondent receives commercial gain does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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.”). Thus, the Panel finds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent offered to sell the disputed domain name for an amount in excess of out-of-pocket costs. In support of this allegation, it provides evidence that Respondent offered to enter into negotiations to transfer the disputed domain name. However, Complainant does not provide any evidence showing that Respondent actually asked for an amount in excess of out-of-pocket costs. Therefore, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and it will not further discuss the allegation.
As already noted, the resolving website hosts competing pay-per-click hyperlinks from which Respondent likely receives referral fees. Using a disputed domain name to host pay-per-click hyperlinks can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Therefore, the Panel find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s marks: the resolving website displays a guide to Complainant’s products, and Respondent’s email indicates prior knowledge of Complainant’s marks. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <ashleyfurnituredecor.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 7, 2021
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