Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC v. huan huan and niu niu and niu niu c/o guang zhou and yu ming
Claim Number: FA0909001285443
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 <mychristianaudigier.com>, <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <christianaudigierstore.com>, <edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>, <offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>, <edhardybuynow.com>, <donedhardydiscount.com>, <cheapedhardystore.com>, and <christianaudigieronline.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2009.
On September 21, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <mychristianaudigier.com>, <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <christianaudigierstore.com>, <edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>, <offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>, <edhardybuynow.com>, <donedhardydiscount.com>, <cheapedhardystore.com>, and <christianaudigieronline.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 September 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 19, 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@mychristianaudigier.com, postmaster@edhardyclothingdiscount.com, postmaster@hardyclothingsale.com, postmaster@christianaudigierstore.com, postmaster@edhardy2013.com, postmaster@edhardy2012.com, postmaster@edhardyshopusa.com, postmaster@offedhardy.com, postmaster@edhardystoreusa.com, postmaster@edhardyselling.com, postmaster@edhardy2009.com, postmaster@edhardyclothingsale.com, postmaster@edhardy2011.com, postmaster@edhardybuynow.com, postmaster@donedhardydiscount.com, postmaster@cheapedhardystore.com, and postmaster@christianaudigieronline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>, <offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>, <edhardybuynow.com>, <donedhardydiscount.com>, and <cheapedhardystore.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
Respondent’s <mychristianaudigier.com>, <christianaudigierstore.com>, and <christianaudigieronline.com> domain names are confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark.
2. Respondent does not have any rights or legitimate interests in the <mychristianaudigier.com>, <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <christianaudigierstore.com>, <edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>, <offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>, <edhardybuynow.com>, <donedhardydiscount.com>, <cheapedhardystore.com>, and <christianaudigieronline.com> domain names.
3. Respondent registered and used the <mychristianaudigier.com>, <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <christianaudigierstore.com>, <edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>, <offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>, <edhardybuynow.com>, <donedhardydiscount.com>, <cheapedhardystore.com>, and <christianaudigieronline.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC, is the owner or licensee responsible for enforcing trademark registrations, including the ED HARDY and CHRISTIAN AUDIGIER trademarks. The trademarks are both associated with fashion lines under the respective marks. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ED HARDY (Reg. No. 3,135,603 issued August 31, 2005) and CHRISTIAN AUDIGIER marks (Reg. No. 3,348,997 issued December 4, 2007).
Respondent registered all the disputed domain names no
earlier than
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.
Complainant holds trademark registrations with the USPTO for
its ED HARDY (Reg. No. 3,135,603 issued August 31, 2005) and CHRISTIAN AUDIGIER
marks (Reg. No. 3,348,997 issued December 4, 2007). Previous panels have found trademark
registration with a federal trademark authority is sufficient to establish
rights in a complainant’s mark. See Thermo Electron
Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that
the complainants had established rights in marks where the marks were
registered with a trademark authority); see
also
Complainant contends
Respondent’s <mychristianaudigier.com>, <christianaudigierstore.com>,
and <christianaudigieronline.com> domain names are confusingly
similar to Complainant’s CHRISTIAN AUDIGIER mark. The disputed domain names remove the space
between “christian” and “audigier,” and simply add one of the generic terms
“my,” “store,” and “online.” The Panel
finds the removal of a space and the addition of a generic
term are insufficient to adequately distinguish the disputed domain
names from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec.
31, 2007) (finding that “spaces are impermissible and a generic top-level
domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”);
see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term). The disputed domain names also include the
generic top-level domain (‘gTLD”) “.com.”
Previous panels have found the addition of a gTLD is irrelevant to a
Policy ¶ 4(a)(i) analysis. See Trip 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). The Panel finds these disputed
domain names are confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark
under Policy ¶ 4(a)(i).
Complainant further
argues Respondent’s <edhardyclothingdiscount.com>, <hardyclothingsale.com>,
<edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>,
<offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>,
<edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>,
<edhardybuynow.com>, and <donedhardydiscount.com>, <cheapedhardystore.com> domain names
are confusingly similar to Complainant’s ED HARDY mark. The disputed domain names remove the space
between “ed” and “hardy,” add the generic terms or numbers, adds the gTLD
“.com,” and some of the disputed domain names remove part of the mark “ed.” The Panel finds the removal of a space, the
addition of a generic term or number, the addition of a gTLD, and the deletion
of a word of the mark fail to adequately distinguish the disputed domain names
from Complainant’s mark. See Bond
& Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent is not authorized to use the ED HARDY or CHRISTIAN AUDIGIER marks. Respondent failed to offer evidence showing Respondent is commonly known by the disputed domain names. The WHOIS information on the record does not reflect that Respondent is commonly known by Complainant’s marks. There is no evidence on the record showing Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <edhardy2013.com>, <offedhardy.com>, <edhardyselling.com>,
<edhardy2009.com>, <edhardyclothingsale.com>, and <donedhardydiscount.com>
domain names to directly offer, or redirect Internet users to websites that
offer, counterfeit and competing fashion merchandise. The Panel finds this use is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or legitimate noncommercial or
fair use of these disputed domain names under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones
HP Milenium
Respondent’s <mychristianaudigier.com>,
<edhardyclothingdiscount.com>, <hardyclothingsale.com>,
<christianaudigierstore.com>, <edhardy2012.com>, <edhardyshopusa.com>,
<edhardystoreusa.com>, <edhardy2011.com>, <edhardybuynow.com>,
<cheapedhardystore.com>, and <christianaudigieronline.com>
domain names fail to resolve to active webpages. The Panel finds the failure to make an active
use is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or legitimate noncommercial or fair use of these disputed domain names under
Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB
v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where the respondent failed to submit a response to the complaint and
had made no use of the domain name in question); see also 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 an active
use] of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <edhardy2013.com>, <offedhardy.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, and <donedhardydiscount.com> domain names to directly offer, or redirect Internet users to websites that offer, counterfeit and competing fashion merchandise. Internet users interested in Complainant’s fashion products may instead purchase the counterfeit or competing fashion products because of Respondent’s confusingly similar disputed domain names. The Panel finds Respondent’s use of these disputed domain names disrupts Complainant’s fashion business, which constitutes bad faith registration and use under Policy 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel infers Respondent profits from the sale of counterfeit and competing fashion merchandise on the websites resolving from the <edhardy2013.com>, <offedhardy.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, and <donedhardydiscount.com> domain names. Internet users, searching for Complainant’s fashion products, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain names and resolving websites. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of these disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s <mychristianaudigier.com>, <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <christianaudigierstore.com>, <edhardy2012.com>, <edhardyshopusa.com>, <edhardystoreusa.com>, <edhardy2011.com>, <edhardybuynow.com>, <cheapedhardystore.com>, and <christianaudigieronline.com> domain names fail to resolve to active webpages. The Panel finds Respondent’s failure to actively use these disputed domain constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds 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 <mychristianaudigier.com>, <edhardyclothingdiscount.com>, <hardyclothingsale.com>, <christianaudigierstore.com>, <edhardy2013.com>, <edhardy2012.com>, <edhardyshopusa.com>, <offedhardy.com>, <edhardystoreusa.com>, <edhardyselling.com>, <edhardy2009.com>, <edhardyclothingsale.com>, <edhardy2011.com>, <edhardybuynow.com>, <donedhardydiscount.com>, <cheapedhardystore.com>, and <christianaudigieronline.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 9, 2009
National
Arbitration Forum
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