Nervous Tattoo, Inc. v. ou guo cong c/o guo cong
Claim Number: FA1001001302096
Complainant is Nervous Tattoo, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <donedhardy-shop.com>, <edhardyonline-shop.com>, and <edhardy-onlinestore.com>, registered with Hichina Zhicheng Technology Ltd.
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 January 7, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2010. The Complaint was submitted in both Chinese and English.
On January 10, 2010, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <donedhardy-shop.com>, <edhardyonline-shop.com>, and <edhardy-onlinestore.com> domain names are registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the names. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 January 18, 2010, a Chinese Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2010 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@donedhardy-shop.com, postmaster@edhardyonline-shop.com, and postmaster@edhardy-onlinestore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2010, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <donedhardy-shop.com>, <edhardyonline-shop.com>, and <edhardy-onlinestore.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <donedhardy-shop.com>, <edhardyonline-shop.com>, and <edhardy-onlinestore.com> domain names.
3. Respondent registered and used the <donedhardy-shop.com>, <edhardyonline-shop.com>, and <edhardy-onlinestore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., provides luxury fashion and street couture to the public through the production of clothing products and accessories. Complainant uses its ED HARDY mark in connection with its business. Complainant has registered its ED HARDY mark numerous times with various governmental trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,141,658 issued September 12, 2006) and the Chinese trademark authority (Reg. No. G907,827 issued December 8, 2005).
Respondent registered the disputed domain names were registered on July 5, 2009. The <edhardy-onlinestore.com> domain name resolves to a website that competes with Complainant’s fashion products. Respondent’s <donedhardy-shop.com> and <edhardyonline-shop.com> domain names fail to 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.
Complainant has set forth evidence of its rights in the ED
HARDY mark through its registrations of the mark with the USPTO (i.e. Reg. No.
3,141,658 issued September 12, 2006) and the Chinese trademark authority (Reg.
No. G907,827 issued December 8, 2005).
The Panel finds that Complainant has sufficient rights in the mark under
Policy ¶ 4(a)(i).
Respondent’s disputed domain
names contain Complainant’s ED HARDY mark while removing the space in the ED
HARDY mark and adding: (1) the generic top-level domain “.com”; (2) a generic
or descriptive term; and (3) a hyphen.
The Panel finds that the removal of spaces, the addition of a top-level
domain, and the addition of a hyphen fail as material changes under the Policy. Furthermore, the addition of generic or
descriptive words to a complainant’s mark does not prevent a finding of
confusing similarity between the disputed domain names and the mark. Therefore, the Panel finds the disputed
domain names are confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the disputed domain names. Once a prima facie case has been established by Complainant, the burden
then shifts to Respondent to demonstrate its rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c). The Panel finds that Complainant has
adequately established a prima facie
case in these proceedings. Since
Respondent has failed to respond to the allegations against it, the Panel may
assume that Respondent lacks any rights or legitimate interests in the disputed
domain names. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”).
Based on the record, there is no indication Respondent is commonly known by the disputed domain names. The WHOIS domain name registration information does not indicate Respondent is commonly known by the disputed domain names and Complainant contends Respondent has no authority to use its ED HARDY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also 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.”).
Complainant argues Respondent’s <edhardy-onlinestore.com> domain name
resolves to a website that competes with Complainant’s fashion products. The Panel finds that Respondent’s use of the <edhardy-onlinestore.com> domain name 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 Hewlett-Packard
Co. v. Inversiones HP Milenium
In addition, Respondent has failed to make an active use of the <donedhardy-shop.com> and <edhardyonline-shop.com> domain names. There is no evidence on record that Respondent has used or intends to use the disputed domain names in any manner. As a result, the Panel finds that Respondent has not made a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s registration and use of the <edhardy-onlinestore.com> domain name to operate a website 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 <edhardy-onlinestore.com> domain name to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s ED HARDY mark and profiting by offering products in direct competition with Complainant is further evidence of bad faith registration and use. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the <edhardy-onlinestore.com> domain name 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).
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 has registered the donedhardy-shop.com> and <edhardyonline-shop.com> domain names but has failed to make an active use of them. The Panel finds that such non-use consitutes bad faith registration and use under Policy ¶ 4(a)(iii). 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 an active use of a domain name permits an inference of registration and use 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 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 <donedhardy-shop.com>, <edhardyonline-shop.com>, and <edhardy-onlinestore.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 1, 2010
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