Gets Cocky, Loses Case for Ashley.com — Ashley Furniture

Furniture firm tries its luck at UDRP but loses.

I’ve seen it happen many times: a firm starts filing UDRP arbitrations for a number of obvious trademarks. Following winning a handful, it gets bold and goes following a generic domain.

That’s exactly what happened with Ashley Furniture Industries, Inc. The firm has won over a dozen UDRP cases over the past year for domains such as AshleyFurnitureStore.com, AshleyBeds.com, and FurnitureAshley.com. So it set its sights on a bigger prize: the valuable generic domain name Ashley.com.

The domain was registered in 1995 by Hardy Koester for his associated Ashley Computer Systems Inc. firm. He later changed the firm name to Ashley Consulting Group.

The arbitration panel found that Koester had legitimate interest in the domain name and didn’t register it in bad faith. It shouldn’t have taken an arbitration panel to figure that out.

Ashley Furniture made a number of allegations, counting that the domain had a parking page that included links to Ashley Furniture competitors. Ashley was correct; for a period of time there was a parking page with links to furniture firms. But it didn’t bother to include a printout of a parking page as proof. That’s probably since those links haven’t been on the site for a while. Koester right now uses the domain name for e-mail rather than a web site, and the web site resolves to a generic parking page.

Ashley Furniture’s lawyer Terrence J. Madden, of Kostner, Koslo & Brovold LLC, even tripped up on one of his assertions, “on information and belief Respondent is not known by the domain name, ashley.com, but by the name “Ashley Consulting Group”. The panel pointed out that, while meant as an argument for the complainant, this is actually an argument on behalf of the 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.

The panel didn’t find Ashley Furniture guilty of reverse domain name hijacking. The panel stated that it had to be clear that the “complaint brought in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder”. Apparently, since the respondent merely claimed that Ashley Furniture was negligent in its due diligence and didn’t claim intent, that wasn’t enough to find the firm guilty.