Ashley Furniture Industries, LLC v. liu ying jun
Claim Number: FA2106001951170
Complainant is Ashley Furniture Industries, LLC (“Complainant”), represented by Monica B. Richman of Dentons US LLP, Illinois, USA. Respondent is liu ying jun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyhomefurniture.shop>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2021; the Forum received payment on June 15, 2021. The Complaint was received in English.
On June 18, 2021, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <ashleyhomefurniture.shop> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 25, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 15, 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@ashleyhomefurniture.shop. Also on June 25, 2021, the Chinese and English language 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 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Preliminary Issue: Language of Proceeding
Complainant alleges that, because Respondent is conversant in English, the proceeding should be conducted in English. The Panel has discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that Respondent’s website is written entirely in English, Respondent’s domain name targets a US-based company, and a previous proceeding against Respondent was in English; thus, Respondent is conversant in the English language. Complainant lacks fluency in the Chinese language and would incur delay and unnecessary costs to translate the documents. The Panel finds that Respondent is conversant in English and determines that this proceeding will be conducted in English.
A. Complainant
1. Respondent’s <ashleyhomefurniture.shop> domain name is confusingly similar to Complainant’s ASHLEY and ASHLEY FURNITURE HOMESTORE marks.
2. Respondent does not have any rights or legitimate interests in the <ashleyhomefurniture.shop> domain name.
3. Respondent registered and uses the <ashleyhomefurniture.shop> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Ashley Furniture Industries, LLC, is a furniture manufacturer and retailer. Complainant holds registrations for the ASHLEY and ASHLEY FURNITURE HOMESTORE marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,600,879, registered Jun. 12, 1990, and Reg. No. 2,680,466, registered Jan. 28, 2003).
Respondent registered the <ashleyhomefurniture.shop> domain name on November 23, 2020, and uses it to resolve to a pay-per-click website with competing links.
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 Panel finds that Complainant has rights in the ASHLEY and ASHLEY FURNITURE HOMESTORE marks through registration with the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <ashleyhomefurniture.shop> domain name uses Complainant’s ASHLEY FURNITURE HOMESTORE mark, reversing the order of FURNITURE and HOME and adding the gTLD “.shop” in the place of the term STORE in the mark. Transposing the terms in a mark and adding a descriptive gTLD the does not negate confusing similarity. See Google LLC v. Hai Min Xu / Xu Hai Min / haimin xu, FA 1779597 (Forum May 3, 2018) (finding the <opensourcegoogle.com> domain name to be confusingly similar to the GOOGLE OPEN SOURCE mark, as the domain name consists of the mark with the terms transposed); see also Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017) (“Appending a top-level domain that describes a complainant’s business adds to confusing similarity.”). Therefore, the Panel finds that Respondent’s <ashleyhomefurniture.shop> domain name is confusingly similar to Complainant’s ASHLEY FURNITURE HOMESTORE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent does not have rights or legitimate interests in the <ashleyhomefurniture.shop> domain name because Respondent is not commonly known by the disputed domain name. Complainant has not licensed or permitted Respondent to use the ASHLEY FURNITURE HOMESTORE mark. The WHOIS information identifies “liu ying jun” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus has no rights 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); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant contends that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to resolve to a pay-per-click website which contains competing links. Using a disputed domain name to host competing hyperlinks does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of Respondent’s website, which features hyperlinks for categories such as “MATTRESS,” “LIVING ROOM,” “KITCHEN & DINING,” which are products offered by Complainant. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has displayed a pattern of bad faith registration and use of infringing domain names as demonstrated by Respondent’s past involvement in UDRP actions. Past UDRP actions against a respondent, which resulted in the transfer of the respondent’s registered domain names, are evidence of bad faith under Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). Complainant provides examples of past UDRP decisions against Respondent, including: Dell Inc. v. liu ying jun, FA2101001928280 (Forum Feb. 15, 2021); Advance Auto Innovations, LLC v. liu ying jun, FA2103001934937 (Forum Apr. 1, 2021); World Wrestling Entertainment, Inc. v. liu ying jun, FA2104001942345 (Forum May 18, 2021); Dell Inc. v. liu ying jun / zhou lei, FA2104001942987 (Forum May 27, 2021); The Container Store, Inc. v. liu ying jun, FA2105001944444 (Forum June 3, 2021). Therefore, the Panel finds bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered and uses the <ashleyhomefurniture.shop> domain name in bad faith because Respondent uses the domain name to resolve to a website containing pay-per-click referral links that directly compete with Complainant. Hosting competing hyperlinks to collect pay-per-click fees is 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 Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, 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 trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”); see also Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). Accordingly, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent registered the <ashleyhomefurniture.shop> domain name with actual knowledge of Complainant’s rights in the ASHLEY FURNITURE HOMESTORE mark, based on the global fame of the mark, and Complainant’s widespread registration and use of the mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the ASHLEY FURNITURE HOMESTORE mark when it registered the disputed domain name, noting Respondent’s direct competition with Complainant, and finds bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”).
The Panel finds that Complainant has satisfied 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 <ashleyhomefurniture.shop> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 21, 2021
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