START-UP TRADEMARK OPPOSITION POLICY

DECISION

Ashley Furniture Industries Inc. v. Ename Holdings

Claim Number: FA0204000110848

PARTIES

Complainant is Ashley Furniture Industries Inc., Arcadia, WI (“Complainant”) represented by Daniel J. Aiman, of Kostner Koslo & Brovold.  Respondent is Ename Holdings, Wilmington, DE (“Respondent”) represented by Jordan H. Richland.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ashley.biz>, registered with Corporate Domain Names, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on May 24, 2002.

Complainant and Respondent each submitted an Additional Submission, which were both determined to be untimely.  Therefore, it is the Panel’s discretionary right to consider or disregard the Additional Submissions upon determining the outcome.

On July 2, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson as the single Panelist.

RELIEF SOUGHT

Complainant seeks transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

Respondent has registered a domain name that is identical to a mark in which Complainant has rights and that Respondent has no such rights or legitimate interests. Further Complainant alleges that Respondent has no legitimate intent to use or develop the disputed domain name and that Respondent acted in bad faith and with knowledge at the time of registering the disputed domain name that Complainant had rights in the mark.

B. Respondent makes the following allegations in response:

Respondent contends that Respondent’s background in registering domain names in the area of medical services qualifies Respondent to register this domain name.  Respondent contends that Respondent has registered names under the names of each of Respondent’s children, under Respondent’s nickname and under Ashley for Respondent’s partner and professional colleague, Ashley Coffield. Respondent admits that Respondent has registered domain names in the past for the purpose of holding them for sale. Respondent urges that no bad faith exists.

C. Additional Submissions:

Both Parties submitted Additional Submissions, which were not filed timely.  The Panel reviewed those submissions and finds that consideration of them would not affect the outcome set out in this Decision.

FINDINGS

Complainant has established in this proceeding that it holds rights in the Ashley mark through registration with the United States Patent and Trademark Office and through continuous use.  Complainant holds various marks containing the Ashley mark, including Registration Numbers 1,600,879 for furniture; 1,864,076 for retail sales; 2,231,864 for retail store services; 2,449,045 for retail store services; 76/363814 for retail store services; 1,604,686 for furniture; 1,903,578 for furniture; 1,886,621 for furniture; 2,053,455 for furniture; and 75/614,632 for mattresses.

Further, Complainant’s interest in the mark has been protected internationally in thirty-seven countries.

Respondent registered the disputed domain name March 27, 2002.

Respondent has not registered the mark Ashley anywhere and has shown no intent to engage in a bona fide commercial enterprise using the Ashley or <Ashley.biz> name.

Respondent is Ename Holdings. Respondent is not known as Ashley or <Ashley.biz>. And, Respondent is not the Ashley Coffield, whose name Respondent relates was made the subject of a domain name filing.  In fact, Respondent suggests that Ename Holdings is really Jordan H. Richland, a fact that suggests to the Panel that Respondent has no proprietary rights to register and use Ms. Coffield’s name as though she were chattel or an alter ego to Respondent.

           

Respondent further concedes knowledge of the trademark at the time the domain name in issue was registered.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical 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 or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established its rights in the ASHLEY mark through worldwide trademark registration and considerable commercial endeavor that the Panel presumes had generated good will that attaches to the name and is associated with Complainant.

The domain name registered by Respondent <Ashley.biz> contains the central core name contained within all of Complainant’s marks.  Respondent’s domain name only adds the inconsequential “.biz” to Complainant’s mark.  Therefore, Respondent’s domain name is identical to Complainant’s mark. 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.  

Respondent’s Rights or Legitimate Interests

Respondent may show rights in an identical domain name under STOP Policy ¶ 4(c) where Respondent demonstrates that:

i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or

ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.

STOP Policy ¶ 4(c) provides, without limitation, that a Respondent may demonstrate rights and/or interests in a domain name by making the above three-part showing; however, an unnamed third party cannot assert its rights or interests on behalf of a Respondent in order to prevent the transfer of a domain name to the Complainant and a Respondent may not act without right to assert the rights of a third party who is not a party to the action in order to prevent that transfer. Here, Complainant has established its rights to the ASHLEY mark. Respondent has not shown a right to use the ASHLEY mark either existing in Respondent or as a result of Respondent’s personal and professional association with Ashley Coffield, who is not a party to this dispute.  See Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (finding that a Respondent cannot assert the rights of a third party to demonstrate rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii) when that third party has not formally intervened in the proceeding); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

Further, Respondent has made no use of the domain name and presents no evidence of a business plan for the domain name.  Without evidence to show demonstrable plans to use the domain name it may be presumed that there are no plans to use the domain name.  Thus, Respondent has not met the burden of STOP Policy ¶ 4(c)(ii).  See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant).

Respondent is not known as Ashley; Respondent’s personal and professional associate is Ashley Coffield and she is not a party. No evidence in this proceeding shows that Respondent is commonly known as ASHLEY or as <ashley.biz>.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(iii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Accordingly, Respondent is unable to show rights and legitimate interest in the disputed domain name under any one of the three-part showing set out above and the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Respondent had constructive notice of Complainant’s rights in the ASHLEY mark prior to registering the disputed domain name due to Complainant’s trademark registrations and distribution of its products in thirty-seven countries around the world, including Respondent’s home country.  Furthermore, Respondent had actual notice of Complainant’s rights in the ASHLEY mark because of the notification received from the STOP registration procedure.  Respondent’s registration of <Ashley.biz>, despite knowledge of Complainant’s rights, constitutes bad faith registration under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim.  Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).

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

DECISION

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

Accordingly, it is Ordered that the <ashley.biz> domain name be TRANSFERRED from Respondent to Complainant.  Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted because there are no further IP Claims.

Hon. Carolyn Marks Johnson, Panelist
Dated: July 16, 2002.

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