Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC v. niu niu
Claim Number: FA0905001265502
Complainant is Nervous Tattoo, Inc. and Audigier
Brand Management 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 <edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, <edhardybuyitnow.com>, <edhardy777.com>, <christianaudigier777.com>, and <edhardysdiscount.com>, registered with Xin Net Technology Corporation.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 29, 2009.
On June 14, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, <edhardybuyitnow.com>, <edhardy777.com>, <christianaudigier777.com>, and <edhardysdiscount.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 June 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 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@edhardydiscounts.com, postmaster@edhardybuyer.com, postmaster@edhardydiscountshop.com, postmaster@edhardyusashop.com, postmaster@edhardybuyitnow.com, postmaster@edhardy777.com, postmaster@christianaudigier777.com, and postmaster@edhardysdiscount.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2009, 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." 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 <<edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, <edhardybuyitnow.com>, <edhardy777.com>, and <edhardysdiscount.com> domain names are confusingly similar to Complainant’s ED HARDY mark. Respondent’s <christianaudigier777.com> domain name is confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark.
2. Respondent does not have any rights or legitimate interests in the <edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, <edhardybuyitnow.com>, <edhardy777.com>, <christianaudigier777.com>, and <edhardysdiscount.com> domain names.
3. Respondent registered and used the <edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, <edhardybuyitnow.com>, <edhardy777.com>, <christianaudigier777.com>, and <edhardysdiscount.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC join as Complainant in this proceeding. Complainant uses the ED HARDY and CHRISTIAN AUDIGIER marks in association with its clothing and accessories products. Complainant has a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ED HARDY mark (Reg. No. 3,135,603 issued August 29, 2006) and the CHRISTIAN AUDIGIER mark (Reg. No. 3,348,997 issued December 4, 2007).
Respondent registered the <edhardydiscounts.com> and <edhardysdiscount.com>
domain names on March 19, 2009; the <edhardybuyer.com> and <edhardybuyitnow.com>
domain names on March 21, 2009; the <edhardy777.com> and <christianaudigier777.com>
domain names on February 23, 2009; the <edhardydiscountshop.com>
domain name on March 3, 2009; and the <edhardyusashop.com> domain
name on March 23, 2009. Respondent’s
disputed domain names resolve to websites offering products in direct
competition with Complainant and counterfeit versions of Complainant’s
products.
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 ED HARDY and CHRISTIAN AUDIGIER marks for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See AOL LLC v. Interrante,
FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant
had submitted evidence of its registration with the USPTO, “such evidence
establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia,
Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s
trademark registrations with the USPTO adequately demonstrate its rights in the
[EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondents disputed domain names are confusingly similar to Complainant’s registered marks pursuant to Policy ¶ 4(a)(i). Each of Respondent’s disputed domain names contains one of Complainant’s marks in its entirety. Respondent’s <edhardy777.com> domain name adds the “777” numerals to Complainant’s registered mark. The Panel finds that the addition of numerals to a registered mark do nothing to create distinctiveness in a disputed domain name. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Respondent’s <edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, and <edhardybuyitnow.com> domain names add generic terms to Complainant’s ED HARDY mark. The Panel finds that the addition of generic terms, especially generic terms with an obvious relationship to a complainant’s business, create a confusing similarity between the disputed domain name and the complainant’s registered mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). Respondent’s <edhardysdiscount.com> domain name also adds the letter “s,” to Complainant’s mark. The Panel finds that the addition of an “s” to a registered mark fails to add a distinguishing characteristic to the disputed domain name. 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)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Lastly, each of Respondent’s disputed domain names add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. See Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s registered ED HARDY mark pursuant to Policy ¶ 4(a)(i).
Additionally, Complainant argues that Respondent’s <christianaudigier777.com> domain name is confusingly
similar to Complainant’s CHRISTIAN AUDIGIER mark pursuant to Policy ¶
4(a)(i). The Panel finds that
Respondent’s disputed domain name contains Complainant’s mark in its entirety,
adds the numerals “777,” and adds the gTLD “.com.” The Panel finds that the addition of numerals
to a registered mark creates a confusing similarity between the disputed domain
name and the registered mark. See Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24,
2000) (finding that the respondent’s domain names <pokemon2000.com> and
<pokemons.com> are confusingly similar to the complainant’s mark). In addition, the Panel finds that the
addition of a gTLD fails to provide the disputed domain name with any
distinctive characteristics. See Sporty's
Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert.
denied, 530
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions. 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 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”).
Complainant contends that Respondent is neither commonly known by, nor licensed to register the disputed domain names. Respondent’s WHOIS information identifies Respondent as “niu niu.” The Panel finds that Respondent’s failure to respond to the Complaint and the WHOIS information demonstrate that Respondent is not commonly known by the disputed domain names. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain names. See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant provides evidence and argues that Respondent’s use of the disputed domain names are both commercial and competitive with Complainant. Respondent’s disputed domain names resolve to websites offering products in direct competition with Complainant. The Panel finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
In addition, Complainant provides evidence that Respondent
is using the disputed domain names to offer counterfeit versions of
Complainant’s products. The Panel finds
that Respondent’s offering of counterfeit goods is further evidence that
Respondent lacks rights and legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Inversiones HP Milenium
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain names to operate websites in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s use of the disputed domain names in order to intentionally attract Internet users to its websites by creating a strong possiblity of confusion with Complainant’s marks and profiting by offering products in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain names constitutes bad faith registration and use. 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 State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Lastly, Complainant alleges that Respondent is using the disputed domain names to offer counterfeit versions of Complainant’s goods. The Panel finds that Respondent’s activities in selling counterfeit goods is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
The Panel finds that ¶ 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 <edhardydiscounts.com>, <edhardybuyer.com>, <edhardydiscountshop.com>, <edhardyusashop.com>, <edhardybuyitnow.com>, <edhardy777.com>, <christianaudigier777.com>, and <edhardysdiscount.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 27, 2009
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