Ashleysfurniture.org

The timeline behind ashleysfurniture.org

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Ashley Furniture Industries, Inc. v. Blerim Petro Claim Number: FA1107001400938 PARTIES Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Blerim Petro (“Respondent”), Oklahoma, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <ashleysfurniture.org>, registered with Wild West Domains, Inc. 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. Judge Ralph Yachnin 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 July 30, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <ashleysfurniture.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 2, 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@ashleysfurniture.org. Also on August 2, 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 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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. 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 <ashleysfurniture.org> domain name is confusingly similar to Complainant’s ASHLEY mark. 2. Respondent does not have any rights or legitimate interests in the <ashleysfurniture.org> domain name. 3. Respondent registered and used the <ashleysfurniture.org> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Ashley Furniture Industries, Inc., is in the furniture business. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990). Respondent, Blerim Petro, registered the <ashleysfurniture.org> domain name on March 1, 2011. The disputed domain name resolves to a website that contains hyperlinks resolving to Complainant’s competitors in the furniture industry. 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 claims to have established rights in its ASHLEY mark under Policy ¶ 4(a)(i). Complainant provides evidence of multiple trademark registrations with the USPTO for its ASHLEY and related marks (e.g., Reg. No. 1,600,879 registered June 12, 1990). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels held that the complainants’ trademark registrations with the USPTO were sufficient to establish rights in the respective marks. Therefore, the Panel concludes that Complainant has established rights in its ASHLEY mark pursuant to Policy ¶ 4(a)(i). Complainant alleges that Respondent’s <ashleysfurniture.org> domain name is confusingly similar to Complainant’s ASHLEY mark under Policy ¶ 4(a)(i). The disputed domain name combines Complainant’s ASHLEY mark with the descriptive term “furniture,” the letter “s,” and the generic top-level domain (“gTLD”) “.org.” In Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), and Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004), the panels held that the addition of a descriptive term fails to substantially differentiate the disputed domain name from the complainant’s mark. In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), and Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panels found that the addition of a letter does not significantly distinguish a disputed domain name. In Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panels determined that the inclusion of a gTLD is irrelevant. Thus, the Panel concludes that Respondent’s <ashleysfurniture.org> domain name is confusingly similar to Complainant’s ASHLEY mark pursuant to Policy ¶ 4(a)(i). The Panel finds Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent does not have any rights or legitimate interests in the <ashleysfurniture.org> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). According to Complainant, Respondent is not commonly known by the <ashleysfurniture.org> domain name. Complainant argues that it has not licensed or otherwise authorized Respondent to use its ASHLEY mark. The WHOIS information for the <ashleysfurniture.org> domain name lists “Blerim Petro” as the registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that a respondent was not commonly known by a disputed domain name where the WHOIS information, as well as all other information in the record, gave no indication that a respondent was commonly known by a disputed domain name and the complainant had not authorized the respondent to register a domain name containing its registered mark. Based on this precedent and the evidence in the record, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <ashleysfurniture.org> domain name under Policy ¶ 4(c)(iii). Complainant claims that Respondent’s <ashleysfurniture.org> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the furniture industry. In the screen shots of the resolving website provided by Complainant, “Get It Now Furniture,” “Havertys Furniture,” “Crate & Barrel Furniture,” “JCPenneyTM Official Site,” and “Restaurant Furniture Sale” are all listed on the website. See Complainant’s Exhibit 1. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panels found that a similar use of a disputed domain name to resolve to a hyperlink page featuring a complainant’s competitors was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel agrees with the decisions of prior panels and finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <ashleysfurniture.org> domain name under Policy ¶ 4(c)(iii). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith While Complainant does not specifically make an argument under Policy ¶ 4(b)(iii), Complainant does argue that Respondent’s registration and use of the <ashleysfurniture.org> domain name diverts Complainant’s customers from Complainant to Complainant’s competitors in the furniture industry. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels concluded that such a diversion is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). This Panel finds accordingly in this case. Complainant also does not make any specific allegations relating to Policy ¶ 4(b)(iv). However, Complainant does maintain that Respondent is attempting to commercially gain by misleading Internet users. Complainant further alleges that Respondent profits from its use of the disputed domain name by receiving click-through fees when Internet users click on the hyperlinks found on the website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panels held that a respondent’s registration and use of a confusingly similar disputed domain name to provide hyperlinks to a complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iv). Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel holds that Respondent registered and uses the <ashleysfurniture.org> domain name in bad faith. The Panel finds Policy ¶ 4(a)(iii) has been satisfied. 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 <ashleysfurniture.org> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: August 26, 2011 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.