Nervous Tattoo, Inc. v. edhardy-tattoo.com c/o bo li
Claim Number: FA0906001266580
Complainant is Nervous
Tattoo, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <edhardy-tattoo.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2009.
On June 5, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <edhardy-tattoo.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 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@edhardy-tattoo.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 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edhardy-tattoo.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardy-tattoo.com> domain name.
3. Respondent registered and used the <edhardy-tattoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is a leading designer of luxury and fashion products. Complainant owns the rights to a number of trademark registrations around the world, including one with the United States Patent and Trademark Office (“USPTO”) for the ED HARDY mark (Reg. No. 3,141,658 issued September 12, 2006), and one filed with the Chinese trademark authority (Reg. No. G907827 issued December 8, 2005). Complainant uses its ED HARDY mark in relation to the advertisement and retail sales of merchandise based on vintage Japanese tattoo designs.
Respondent registered the <edhardy-tattoo.com> domain name on March 13, 2009. The disputed domain name is being used to resolve to a website offering competing merchandise as well as 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 its ED HARDY mark under Policy ¶ 4(a)(i) based on the registration of its ED HARDY mark with the USPTO and the Chinese trademark authority. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s <edhardy-tattoo.com>
domain name is confusingly similar to its ED HARDY mark under Policy ¶ 4(a)(i). The disputed
domain name contains Complainant’s ED HARDY mark in its entirety with the
addition of a hyphen, the addition of the descriptive term “tattoo,” and the
affixation of the generic top-level domain “.com.” The addition of the descriptive term “tattoo”
relates to Complainant’s business and therefore fails to remove Respondent’s <edhardy-tattoo.com>
domain name from the realm of
confusing similarity with Complainant’s ED HARDY mark. The Panel further finds that the additions of
a hyphen and a generic top-level domain fail to sufficiently distinguish
Respondent’s domain name from Complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005)
(“Therefore, the Panel concludes that the addition of a term descriptive of
Complainant’s business, the addition of a hyphen, and the addition of the gTLD
‘.com’ are insufficient to distinguish Respondent’s domain name from
Complainant’s mark.”); see also Gillette
Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28,
2005) (finding that the additions of the term “batteries,” which described the
complainant’s products, and the generic top-level domain “.com” were
insufficient to distinguish the respondent’s <duracellbatteries.com> from
the complainant’s DURACELL mark).
Therefore, the Panel concludes that Respondent’s <edhardy-tattoo.com>
domain name is confusingly similar
to Complainant’s ED HARDY mark.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights and legitimate interests in the <edhardy-tattoo.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case asserting that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant meets this burden of production, the burden then shifts to Respondent to show that it has rights or legitimate interests under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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). In this case, Respondent has failed to respond to the Complaint. Based on this failure, the Panel may infer that Respondent lacks any rights or legitimate interests in the <edhardy-tattoo.com> domain name under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel now chooses to review the evidence in the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The disputed domain name resolves to a commercial website offering
products in direct competition with Complainant as well as counterfeit versions
of Complainant’s products. The Panel
finds that Respondent’s use of the <edhardy-tattoo.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 Hewlett-Packard
Co. v. Inversiones HP Milenium
Furthermore, Complainant contends
that Respondent is not commonly known by the <edhardy-tattoo.com>
domain name under Policy ¶ 4(c)(ii). The WHOIS
information lists the registrant as “edhardy-tattoo.com c/o bo li.” While the WHOIS information may indicate a
possible relationship to the disputed domain name, there is no evidence in the
record to corroborate this fact.
Respondent failed to counter Complainant’s allegations with any evidence
to show that it is commonly known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb.
Forum June 17, 2003) (finding that the
respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Nature’s
Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2,
2004) (“In its WHOIS contact information, Respondent lists its name and its
administrative contact as ‘Natures Path, Inc.’
However, since Respondent failed to respond to the Complaint, there has
not been any affirmative evidence provided to the Panel showing that Respondent
was commonly known by the disputed domain name prior to its registration of the
domain name.”). Thus, the Panel finds
that Respondent is not commonly by the <edhardy-tattoo.com> domain name under Policy ¶ 4(c)(ii).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further alleges that Respondent has registered and is using the confusingly similar domain name to attract Internet users to Respondent’s website offering competing products and counterfeit versions of Complainant’s products. The Panel concludes that Respondent is misappropriating Complainant’s ED HARDY mark to divert Internet users to Respondent’s competing website. Respondent is likely disrupting Complainant’s business and Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business; see also Johnson & Johnson v. tziporah breuer, FA 1240474 (Nat. Arb. Forum Feb. 16, 2009)
(finding that the respondent’s diversionary use of the disputed domain name to sell counterfeit versions of Complainant’s products has disrupted Complainant’s business).
Complainant asserts that Respondent’s use of the <edhardy-tattoo.com>
domain name in order to sell
counterfeit merchandise using Complainant’s ED HARDY mark constitutes bad faith
registration and use. The Panel finds
that the use of a confusingly similar domain name in order to commercially
benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Respondent has
created a likelihood of confusion and has benefited by selling competing and
counterfeit products. See Compaq
Info. Techs. Group, L.P. v.
Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of
the <compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”); see also
Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding
bad faith where the respondent used the disputed domain name to sell the
complainant’s products without permission and mislead Internet users by
implying that the respondent was affiliated with the complainant).
Complainant has satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edhardy-tattoo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 14, 2009
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