national arbitration forum

 

DECISION

 

Ashley Furniture Industries, Inc. v. Parks Furniture c/o Patrick Gabriel

Claim Number: FA1107001400928

 

PARTIES

Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA.  Respondent is Parks Furniture c/o Patrick Gabriel (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleyleatherfurniturehamilton.info>, registered with 1&1 Internet AG.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2011; the National Arbitration Forum received payment on July 29, 2011.

 

On August 1, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <ashleyleatherfurniturehamilton.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name.  1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 August 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2011 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@ashleyleatherfurniturehamilton.info.  Also on August 1, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <ashleyleatherfurniturehamilton.info> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <ashleyleatherfurniturehamilton.info> domain name.

 

3.    Respondent registered and used the <ashleyleatherfurniturehamilton.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ashley Furniture Industries, Inc., manufactures and distributes furniture goods under its brand, dating back to at least 1946.  Complainant owns the A ASHLEY FURNITURE mark and uses the mark in connection with its furniture sales.  Complainant holds a trademark registration for its A ASHLEY FURNITURE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,894,665 registered October 19, 2004).

 

Respondent, Parks Furniture c/o Patrick Gabriel, registered the <ashleyleatherfurniturehamilton.info> domain name on November 29, 2010.  The disputed domain name resolves to Respondent’s website which offers both Complainant’s furniture products for sale, as well as the furniture goods of Complainant’s competitors.

 

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."

 

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(e), 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 respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it holds rights in the A ASHLEY FURNITURE mark.  Complainant submitted evidence of its trademark registration for its A ASHLEY FURNITURE mark with the USPTO (Reg. No. 2,894,665 registered October 19, 2004).  A complainant can establish rights in a mark by trademark registration with a trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).  It is unnecessary for Complainant to register its mark within Canada, the country of Respondent, in order to establish rights in the mark.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Thus, the Panel holds that Complainant has demonstrated its rights in the A ASHLEY FURNITURE mark according to Policy ¶ 4(a)(i) through its USPTO registration.

 

Complainant also purports that Respondent’s <ashleyleatherfurniturehamilton.info> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark.  The disputed domain name incorporates Complainant’s mark in its entirety and alters it by deleting the letter “a,” adding the descriptive word “leather,” which relates to Complainant’s leather furniture goods, and by adding the geographic term “hamilton.”  The Panel finds that the deletion of a single letter does not remove the disputed domain name from the realm of confusing similarity.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).  The Panel also holds that adding descriptive or geographic terms to Complainant’s mark does not adequately distinguish the disputed domain name for the purposes of Policy ¶ 4(a)(i).  See Constellation Wines U.S., Inc. v. Texas Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).  Finally, Respondent’s disputed domain name also deletes the spaces between the words of Complainant’s mark and adds the generic top-level domain (“gTLD”) “.info,” which the Panel determines does not avoid a finding of confusing similarity.  See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  The Panel concludes that Respondent’s <ashleyleatherfurniturehamilton.info> domain name is confusingly similar to Complainant’s A ASHLEY FURNITURE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent is lacking any rights or legitimate interests in the disputed domain name.  In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel expressed that “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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”  Here, Complainant has made a prima facie showing in support of its allegations.  Respondent failed to submit a response to these allegations and therefore, the Panel may assume that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel will examine the record and determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c). 

 

Complainant argues that Respondent is not commonly known by the <ashleyleatherfurniturehamilton.info> domain name.  As indicated by the WHOIS information, Respondent identifies itself as “Parks Furniture c/o Patrick Gabriel,” which is not similar to the disputed domain name.  Moreover, Complainant has not licensed or authorized Respondent to use its A ASHLEY FURNITURE mark within the domain name.  After examining the evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s <ashleyleatherfurniturehamilton.info> domain name redirects Internet users to its own website which sells products manufactured and distributed by Complainant and also products manufactured or distributed by Complainant’s competitors.  Complainant claims that Respondent is a furniture retailer with stores in Hamilton and St. Catherine’s, Ontario, and allegedly purchases goods from Complainant in order to re-sell the goods through its stores.  The Panel holds that Respondent’s use of a confusingly similar disputed domain name to sell Complainant’s goods and sell goods of Complainant’s competitors in the furniture industry is not 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).  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s <ashleyleatherfurniturehamilton.info> domain name disrupts its own furniture business.  Internet users intending to purchase Complainant’s goods may find Respondent’s competing online store at the disputed domain name and purchase similar furniture goods from Respondent or from one of Complainant’s competitors.  The Panel finds that registration and use for such an operation constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

 

Furthermore, Complainant contends that as a competing furniture business, Respondent registered and is using the disputed domain name in order to commercially gain from furniture sales.  Respondent’s use of the confusingly similar disputed domain name and re-sale of Complainant’s own goods creates a likelihood of confusion for Internet users as to Complainant’s affiliation with the disputed domain name and featured products.  Respondent tries to profit from this confusion by increasing Internet traffic and furniture sales.  The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ashleyleatherfurniturehamilton.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  September 6, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page