Audigier Brand Management Group, LLC v. chinasupply c/o tan longli
Claim Number: FA0812001238123
Complainant is Audigier
Brand Managemnt Group, LLC (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A
Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bychristianaudigier.com> and <buychristianaudigier.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2008.
On December 11, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bychristianaudigier.com> and <buychristianaudigier.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bychristianaudigier.com and postmaster@buychristianaudigier.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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." 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bychristianaudigier.com> and <buychristianaudigier.com> domain names are confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark.
2. Respondent does not have any rights or legitimate interests in the <bychristianaudigier.com> and <buychristianaudigier.com> domain names.
3. Respondent registered and used the <bychristianaudigier.com> and <buychristianaudigier.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant produces and advertises street couture for the mainstream public. Complainant promotes its fashion lines under the CHRISTIAN AUDIGIER mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on December 4, 2007 (Reg. No. 3,348,997). Complainant uses the CHRISTIAN AUDIGIER mark to market its clothing all around the world, and has established very successful brands.
Respondent registered the <bychristianaudigier.com> and <buychristianaudigier.com> domain names on June 9, 2008. The <bychristianaudigier.com> domain name resolves to a website that advertises and sells merchandise that competes with Complainant’s products. The <buychristianaudigier.com> domain name currently does not resolve to an active website.
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.
The Panel finds that Complainant has established rights in
the CHRISTIAN AUDIGIER mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant contends that
Respondent’s <bychristianaudigier.com> and <buychristianaudigier.com>
domain names are confusingly similar to its CHRISTIAN
AUDIGIER mark.
The disputed domain names differ from Complainant’s mark in three ways:
(1) in each case, a generic term has been added to the beginning of the mark;
(2) in each case, the space between “CHRISTIAN” and “AUDIGIER” has been
removed; and (3) in each case, the generic top-level domain (“gTLD”) “.com” has
been added to the end of the mark. Under Policy ¶ 4(a)(i),
adding generic terms does not distinguish a domain name from a mark, nor does
removing spaces. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606
(WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to
the complainant’s ICQ mark, makes the <neticq.com> domain name
confusingly similar to the complainant’s mark); see also Down E. Enter. Inc. v. Countywide
Commc’ns, FA 96613 (Nat. Arb.
Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com>
confusingly similar to the complainant’s common law mark DOWN EAST, THE
MAGAZINE OF MAINE). Furthermore, the
addition of a gTLD does nothing to distinguish a domain name from a mark,
because all domain names must include a top-level domain. See Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) ( “[I]t is a well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis.”). Therefore,
the Panel finds that the disputed domain names are not sufficiently
distinguished from, and are confusingly similar to, Complainant’s CHRISTIAN
AUDIGIER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the <bychristianaudigier.com> and <buychristianaudigier.com> domain names, nor has
it ever been the owner or licensee of the CHRISTIAN AUDIGIER mark. The WHOIS records for the disputed domain
names list Respondent as “chinasupply c/o tan longli.” Because Respondent has failed to show any evidence
contrary to Complainant’s contentions and is not known by any variant on the
CHRISTIAN AUDIGIER mark, the Panel finds that Respondent is not commonly known
by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see
also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record).
Respondent is using the <bychristianaudigier.com> domain name to host a website that advertises and sells products that compete with Complainant’s business. The Panel finds that this use by Respondent of the <bychristianaudigier.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent is not making any active use of the <buychristianaudigier.com>
domain name. The Panel finds that
Respondent’s failure to make active use of the <buychristianaudigier.com>
domain name precludes the possibility that Respondent is using the <buychristianaudigier.com>
domain name in connection with 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
TMP Int’l, Inc. v. Baker Enters.,
FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that
Respondent's failure to make active use of the domain name does not establish
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights
or legitimate interests in the domain name <solgarvitamins.com> where the
respondent made no active use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <bychristianaudigier.com>
domain name to divert Internet customers from Complainant’s website to
Respondent’s website that resolves from the disputed domain name, through the
confusion caused by the similarity of the CHRISTIAN AUDIGIER mark and the <bychristianaudigier.com>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by this diversion. The Panel finds that Respondent did disrupt
Complainant’s business, and therefore did register and use the <bychristianaudigier.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
the complainant's marks suggests that the respondent, the complainant’s
competitor, registered the names primarily for the purpose of disrupting the
complainant's business).
Complainant also contends that Respondent gains commercially
from this diversion, as Respondent is advertising and selling products that
compete with Complainant’s business at the website that resolves from the <bychristianaudigier.com>
domain name. The Panel finds that
Respondent intentionally used the disputed domain name for commercial gain
through a likelihood of confusion with Complainant’s mark, and so, pursuant to
Policy ¶ 4(b)(iv), this use is also evidence of
Respondent’s registration and use in bad faith. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant); see
also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent
registered a domain name confusingly similar to the complainant’s mark and the
domain name was used to host a commercial website that offered similar services
offered by the complainant under its mark).
As established in the discussion
of Policy ¶ 4(a)(ii), Respondent is not making
any active use of the <buychristianaudigier.com> domain name. Because Respondent
has failed to make any active use of the <buychristianaudigier.com>
domain name, the Panel finds that Respondent has registered and used the <buychristianaudigier.com>
domain name in bad faith under Policy ¶ 4(b)(iv). See
Caravan Club v. Mrgsale, FA 95314
(Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that failure to
make active use of a domain name permits an inference of registration and use
in bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the respondent made no use of the domain name in question and there are no
other indications that the respondent could have registered and used the domain
name in question for any non-infringing purpose).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bychristianaudigier.com> and <buychristianaudigier.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 27, 2009
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