Ashley Furniture Industries, Inc. v. Ashley consulting Group
Claim Number: FA0811001235335
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence
J. Madden, of Kostner, Koslo & Brovold LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashley.com>, registered with Network Solutions, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On November 21, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashley.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 4,
A timely Response was received and determined to be complete on December 24, 2008.
On January 2, 2009, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
An Additional Submission was submitted by Complainant on January 7, 2009, and was determined to be deficient, since it was received after the deadline pursuant to Supplemental Rule 7. Contrary to Complainant’s view, Supplemental Rule 6 is only applicable to the filing of a response in the formal sense and is not applicable to the filing of additional submissions, to which Supplemental Rule 7 applies exclusively, leaving no room for the analogous application of Supplemental Rule 6. This is so, regardless of whether Respondent’s Response included allegations of reverse domain name hijacking and bad faith complaint filing “in the nature of an original complaint or counter-claim,” as Complainant contends. Further, and even if an analogous application of Supplemental Rule 6 were to be considered, the request was untimely pursuant to Supplemental Rule 6(a)(i)(B). Under Paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel is vested with the sole discretion to decide whether to receive supplemental material from the parties. The Panel declines to consider the Complainant’s Additional Submission in its Decision.
An Additional Submission entitled “Response to Complainant’s Purported and Deficient Additional Submissions” was submitted by Respondent on January 12, 2009. The Panel has chosen not to consider this Additional Submission in its Decision. Clearly, if assessed under Supplemental Rule 7(a), which allows for additional submissions to be filed within 5 Calendar Days after the date the Response was received by the Forum, this Additional Submission was untimely filed. However, Supplemental Rule 7(c) provides for the possibility for the party not filing the original additional submission under 7(a) to file additional written statements and documents to the Forum within five (5) Calendar Days after the date the original additional submission was received by the Forum. However, since the original additional submission was filed untimely and will not be considered by the Panel, the legal situation is as if the original additional submission had not been filed at all, thus leaving no room for the subsequent additional submission under Supplemental Rule 7(c).
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges as follows:
(1) Complainant is the owner of the registered trademark ASHLEY® by virtue of its ownership of U.S. Reg. Nos. 1,600,879 and 1,864,076 for goods and services in International Classes 20 and 35, respectively. The registration in International Class 20 is for furniture and was effective on June 12, 1990. The registration in International Class 35 is for retail store services in the field of furniture and was effective on July 12, 1993.
Complainant argues that the disputed domain’s name is identical to the Complainant’s registered trademark ASHLEY®.
(2) On information and belief, the Respondent is
not known by the domain name, but by the name “Ashley Consulting Group.” The
Complainant owns a number of registrations in the
(3) The fact that the domain name is identical to the Complainant’s registered trademark indicates that Respondent registered the domain name to prevent the Complainant from reflecting the mark in a corresponding domain name. The use of the domain name in a manner where accessing it resolves to a “parked” website that contains only links to other websites, including websites offering products from competitors of the Complainant, presumably for consideration paid to Respondent, creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these competitors’ products accessed through Respondent’s domain name.
Respondent alleges as follows:
(1) Respondent acknowledges that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
(2) The Respondent, ASHLEY CONSULTING GROUP, is a
registered business name of Mr. Hardy Koester, registered as a Sole
Proprietorship on February 16, 2007. Originally, Mr. Koester incorporated
ASHLEY COMPUTER SYSTEMS INC. on December 24, 1986, which remains a valid
On August 14, 1995, Respondent registered the disputed domain name and immediately commenced to use it for email purposes. For a period of time Respondent also erected a web site in association with Respondent’s business. Respondent believes that this web site appeared shortly after the initial registration of the domain name and remained available on the world wide web for at least several years after that, although the web site was not an important part of its business.
Respondent further contends that the domain name is generic and that there are numerous businesses, for all manner of goods and services using the term ASHLEY.
(3) Respondent contends that Respondent had never even heard of Complainant when he incorporated his business and registered the Domain Name.
Respondent contends that Respondent has received numerous offers to purchase the Domain Name over the years, some for US $20,000.00 and higher, and has always turned down such offers.
Respondent contends that to Respondent’s knowledge none of the advertisements on the “parked website” are for Complainant or its competitors.
(4) Respondent contends that, had Complainant undertaking a fundamental due diligence prior to commencing the ICANN Complaint, Complainant would have seen that the Domain Name was registered for the past 13 years to an apparent computer company operating under a related business name. Respondent requests that the Panel make a finding of Bad Faith or Reverse Domain Hijacking against Complainant, pursuant to Paragraph 15(e) of the Rules.
FINDINGS AND DISCUSSION
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent concedes Complainant’s arguments under Policy ¶ 4(a)(i).
Complainant has not met its burden to prove that Respondent has no rights or legitimate interests in respect of the domain name, pursuant to Paragraph 4(a)(ii) of the Policy.
While the considerable difficulties in proving a negative proposition have led UDRP panels to adopt the rule that a complainant only needs to make out a prima facie case whereupon the burden of production shifts to the respondent (See Alexa Internet v. Lepanto, FA 945904, Nat. Arb. Forum May 16, 2007), and the Panel concurs, Complainant must still discharge this burden. While the burden must, by necessity be relatively light (See Educational Testing Service v. Netkorea Co, WIPO Case No D2000-0087, 4 Apr 2000) Complainant must produce concrete evidence, not mere bald assertions, that Respondent lacks rights or legitimate interests.
Claimant’s allegations with regard to Paragraph 4(a)(ii) of the Policy limit themselves to the following assertions: 1) that “on information and belief” Respondent is not known by the domain name, <ashley.com>, but by the name “Ashley Consulting Group;” 2) that Complainant owns the trademark ASHLEY® in the United States; 3) that a search of the United States Patent and Trademark Office’s online database reveals that Respondent owns no registered trademarks, or pending applications to register trademarks, containing “Ashley;” and 4) that accessing the domain name resolves to a “parked” website that contains only links to other websites, including websites offering products from competitors of the Complainant.
Claimant provides proof only of its second assertion, while it provides no evidence for his third and fourth assertions, as could for instance have been a print-out of the results of the search of the United States Patent and Trademark Office’s online database and a printout of the “parked” website that contains only links to other websites, including websites offering products from competitors of the Complainant. Moreover the third assertion concerning a search of the United States Patent and Trademark Office’s online database is pretty much irrelevant, since Respondent is Canadian.
The content of the first assertion, while meant as an argument for Complainant, is actually an argument which favors Respondent. Clearly, Respondent’s name, “Ashley Consulting Group,” gives more than a hint that Respondent might very well be known as “Ashley,” especially since the other two words in the name, “Consulting Group” are elements which are not as distinguishing as the first.
Considering both the fact that Respondent’s
name shows an obvious connection to the disputed domain name and the fact that
Complainant cannot claim an exclusive and presumptive right to a name as common
as “Ashley” (See Rusconi Editore S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875, Oct. 10, 2001 (“Donna”); Gail Guarulhos Indústria e Comércio Ltda. v. Watson,
WIPO Case No. D2006-0655, July 7, 2006 (“Gail”); Etam,
Even if Complainant had discharged its burden of proof, Respondent has proved that he has a legitimate interest in respect of the disputed domain name.
Respondent has asserted that he uses the disputed domain name for email purposes and has proved this assertion by providing copies of various emails to and from Respondent using the email address email@example.com. Moreover, even if not too specific with regard the exact period of time, Respondent has asserted that for a period of time he also erected a web site in association with Respondent’s business. Respondent has thus proved that before any notice to him of the dispute he used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, Policy ¶ 4(c)(i).
The connection between the disputed domain and Respondent’s name is self-evident. Respondent has proved his longstanding use of the name, ASHLEY, in association with his business, and thus that his business has been commonly known by the domain name, Policy ¶ 4(c)(ii).
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) (See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512, Nat. Arb. Forum Mar. 9, 2005). Registration and use of a domain name for legitimate business purposes is not bad faith under the Policy.
To support Policy ¶ 4(b)(ii) Complainant argues the fact that the domain name is identical to the Complainant’s registered trademark indicates that Respondent registered the domain name to prevent the Complainant from reflecting the mark in a corresponding domain name. This in itself is not enough of an indication, especially in the case of a common name like “Ashley.”
Further, Complainant argues Policy ¶ 4(b)(iv) by stating that the use of the domain name in a manner where accessing steers one to a “parked” website that contains only links to other websites, including websites offering products from competitors of the Complainant, presumably for consideration paid to Respondent, creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these competitors’ products accessed through Respondent’s domain name. It has to be noted that Policy ¶ 4(b)(iv) requires not only that the referred likelihood is created but that it is intentionally attempted to attract, for commercial gain, Internet users to the web site, by creating such likelihood. In any event, Respondent has denied that the advertisements are for Complainant’s competitors. Since Complainant has not provided any evidence that the pay-per-click site contains links to websites offering products from competitors of the Complainant, Policy ¶ 4(b)(iv) cannot be established.
The Panel declines to make a finding of bad faith or reverse domain name hijacking against the Complainant.
It is true that Complainant has failed to even establish a prima facie case under Policy ¶ 4(a)(ii), that Complainant has not met its burden of proof with regard to Policy ¶ 4(a)(iii), and that Complainant knew or should have known that Respondent’s name is connected to the disputed domain name. However, not every weak case constitutes reverse domain name hijacking. The examples of bad faith in Paragraph 15(e) of the Rules (complaint brought in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder) both indicate that an element of intent has to be present, while mere negligence does not suffice. Respondent’s request is based on the contention that a fundamental due diligence by Complainant would have made him realize that a complaint was baseless. This, if true would constitute mere negligence, and thus cannot amount to bad faith in the sense of Paragraph 15(e) of the Rules.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable Charles K. McCotter, Jr., (Ret.), Panelist
Professor David E. Sorkin, Panelist
Dated: January 16, 2009
National Arbitration Forum