Ashleysfurnitureoutlet.com

The timeline behind ashleysfurnitureoutlet.com

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. Ashley Miller Claim Number: FA1210001468419 PARTIES Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Ashley Miller (“Respondent”), Illinois, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <ashleysfurnitureoutlet.com>, registered with Register.com. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2012; the National Arbitration Forum received payment on October 24, 2012. On October 25, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <ashleysfurnitureoutlet.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 October 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2012 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@ashleysfurnitureoutlet.com. Also on October 29, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 Complainant Complainant, Ashley Furniture Industries, Inc., is a business selling goods and services, including furniture and retail store services in the field of furniture. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASHLEY trademark (Reg. No. 1,600,879 registered June 12, 1990), the ASHLEY FURNITURE service mark (Reg. No. 2,894,665 registered October 19, 2004), and the ASHLEY FURNITURE INDUSTRIES mark (Reg. No. 1,604,686 registered July 3, 1990). Respondent’s <ashleysfurnitureoutlet.com> domain name is confusingly similar as it incorporates Complainant’s ASHLEY mark and the ASHLEY FURNITURE mark, the addition of the letter “s,” and the addition of the descriptive term “outlet.” Respondent has no rights or legitimate interests in the disputed domain name. i. Respondent is not a customer of Complainant, is not licensed by or otherwise authorized by Complainant to use the registered ASHLEY and ASHLEY FURNITURE trademarks, and is not commonly known by the disputed domain name. ii. Respondent formerly used the disputed domain name to host links to third-party websites that sell various types of furniture products. iii. The resolving website is currently inactive. Respondent has registered and is using the disputed domain name in bad faith. i. Respondent is not currently making an active use of the disputed domain name. ii. Respondent’s resolving website previously offered links to websites or pages offering various types of furniture products. iii. Respondent, at the time it registered the disputed domain name, had constructive knowledge of Complainant’s rights in the ASHLEY and ASHLEY FURNITURE marks. iv. Respondent registered the <ashleysfurnitureoutlet.com> domain name on June 2, 2012. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1. Complainant has rights to its ASHLEY and ASHLEY FURNITURE marks. 2. Respondent’s <ashleysfurnitureoutlet.com> domain name is confusingly similar to Complainant’s marks. 3. Respondent has no rights to or legitimate interests in the domain name. 4. Respondent registered and used the domain name in bad faith. 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 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(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.”). Identical and/or Confusingly Similar Complainant, Ashley Furniture Industries, Inc., alleges that it is a business selling goods and services, including furniture and retail store services in the field of furniture. Complainant argues that it owns several trademark registrations with the USPTO for the ASHLEY trademark (Reg. No. 1,600,879 registered June 12, 1990), for the ASHLEY FURNITURE service mark (Reg. No. 2,894,665 registered October 19, 2004), and the ASHLEY FURNITURE INDUSTRIES mark (Reg. No. 1,604,686 registered July 3, 1990). See Complainant’s Exhibit 4, 5, and 6. The Panel finds that Complainant’s registration of the ASHLEY and ASHLEY FURNITURE marks with the USPTO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant argues that Respondent’s <ashleysfurnitureoutlet.com> domain name is confusingly similar as it incorporates Complainant’s ASHLEY mark and the ASHLEY FURNITURE mark in the domain name with the addition of the letter “s” after “ashley.” The Panel chooses to compare the disputed domain name with the ASHLEY FURNITURE mark. When comparing the disputed domain name to the ASHLEY FURNITURE mark, the Panel notes that in addition to the added letter “s” and the added term “outlet,” the disputed domain name also removes the spaces from between the terms of the mark. The Panel finds that the addition of the letter “s” does not distinguish Respondent’s disputed domain name from the Complainant’s mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant further argues that the addition of the generic term “outlet” and the gTLD “.com” does not distinguish Respondent’s disputed domain name from Complainant’s mark. The Panel finds the addition of a generic term and a gTLD does not distinguish Respondent’s disputed domain name from Complainant’s marks. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Additionally, the Panel notes that Respondent removed the spaces between the terms “ashleys” and “furniture.” The Panel finds that the removal of spaces between words does not distinguish Respondent’s disputed domain name from Complainant’s marks. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that there is confusing similarity between Respondent’s <ashleysfurnitureoutlet.com> disputed domain name and Complainant’s ASHLEY FURNITURE marks under Policy ¶ 4(a)(i). Rights or Legitimate Interests 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant contends that Respondent is not a customer of the Complainant, is not commonly known by the disputed domain name, and is not licensed by or otherwise authorized by the Complainant to use Complainant’s registered trademarks. The Panel notes that the WHOIS information identifies the registrant as “Ashley Miller.” Although the Panel notes that the WHOIS information appears to indicate an association between Respondent and the disputed domain name, the Panel finds that there is no other evidence in the record indicating that Respondent was commonly known by the disputed domain name prior to the domain name’s registration. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”). Complainant argues that Respondent previously used the disputed domain name to display links to third-party websites that sell various types of furniture products. The Panel finds that using the disputed domain name to host links to competing third-party websites is not consistent with Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) as Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Complainant further asserts that Respondent’s website is currently inactive. See Complainant’s Exhibit 3. Complainant contends that Respondent presumably rendered the website inactive after receiving a request to transfer the domain name to Complainant dated July 20, 2012. See Complainant’s Exhibit 1. Complainant argues that Respondent would not have altered the status of its website if Respondent had a legitimate business purpose for the use of the disputed domain name. The Panel finds that Respondent’s current failure to actively use the disputed domain name also does not constitute a bona fide offering of goods or a legitimate noncommercial fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Registration and Use in Bad Faith Complainant contends that Respondent previously used the disputed domain name to offer links to websites or pages offering various types of furniture products. Complainant asserts that consumers looking for Complainant’s products may end up at Respondent’s website and believe that it is owned by, associated with, or endorsed by Complainant. The Panel infers that Respondent presumably profits from these links in the form of click-through fees. The Panel finds that Respondent’s use of the disputed domain name to host these competing hyperlinks is an effort to attract consumers and create confusion about Respondent’s affiliation with Complainant for Respondent’s own commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Complainant alleges that Respondent is not currently making an active use of the disputed domain name. See Complainant’s Exhibits 3. Complainant contends that if consumers accessed Respondent’s website while searching for Complainant’s website and discover an inactive website, they may become frustrated and choose another furniture company for their needs. The Panel finds that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Complainant contends that Respondent, at the time it registered the disputed domain name, had constructive notice of Complainant’s rights in the ASHLEY and ASHLEY FURNITURE marks. Complainant argues that the ASHLEY and ASHLEY FURNITURE marks were registered two decades before Respondent registered the disputed domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)." 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 <ashleysfurnitureoutlet.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: December 14, 2012 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.