Nervous Tattoo, Inc. v. shang zheng c/o zheng shang and chen hua c/o hua chen and jun zheng c/o zheng jun
Claim Number: FA1001001302930
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 <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>, <doedhardyonline.com>, and <doneedhardyus.com>, registered with Hichina Zhicheng Technology Ltd., Bizcn.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 14, 2010. The Complaint was submitted in both Chinese and English.
On January 14, 2010, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <doedhardyonline.com>, and <doneedhardyus.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 14, 2010, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 January 25, 2010, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@myshopedhardy.com, postmaster@donedhardyeu.com, postmaster@donedhardyeurope.com, postmaster@edhardyy.net, postmaster@myedhardyy.com, postmaster@edhardyystore.com, postmaster@donedhardyyshop.com, postmaster@edhardyyy.com, postmaster@ouredhardyy.com, postmaster@donedhardyystore.com, postmaster@shopyouredhardyy.com, postmaster@doedhardyonline.com, and postmaster@doneedhardyus.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 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>, <doedhardyonline.com>, and <doneedhardyus.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>, <doedhardyonline.com>, and <doneedhardyus.com> domain names.
3. Respondent registered and used the <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>, <doedhardyonline.com>, and <doneedhardyus.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., designs, manufactures, promotes, sells, and distributes clothing, accessories, and other products. Complainant offers these products under its ED HARDY mark. Complainant owns a variety of domain names incorporating Complainant’s mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ED HARDY mark (e.g., Reg. No. 3,135,603 issued August 26, 2006).
Respondent registered the <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>, <doedhardyonline.com>, and <doneedhardyus.com> domain names no earlier than July 9, 2009. The disputed domain names resolve to websites that sells competing apparel products, including 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.
Preliminary Issue:
Multiple Respondents
In the instant proceedings, Complainant has alleged that the
entities which control the domain names at issue are effectively controlled by
the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” The same e-mail address was used to register
each of the domain names and the other contact information is also similar
between the domain names. The disputed
domain names all resolve to website featuring the same counterfeit versions of
Complainant’s products. Therefore, the
Panel finds that the disputed domain names are all controlled by a single
entity, the Respondent in this case.
Previous panels have found a complainant establishes rights in a mark by holding a trademark registration with the USPTO. Complainant holds multiple trademark registrations for its ED HARDY mark with the USPTO (e.g., Reg. No. 3,135,603 issued August 26, 2006). Therefore, the Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the ED HARDY mark through its registrations of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
All of the <myshopedhardy.com>, <donedhardyeu.com>,
<donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>,
<edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>,
<ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>,
<doedhardyonline.com>, and <doneedhardyus.com>
domain names contain Complainant’s ED HARDY mark in its entirety and add the
generic top-level domain (“gTLD”) “.com” or “.net.” In addition, some of the disputed domain
names add generic terms such as “my,” “shop,” “our,” “store,” “your,” or
“online”, or the descriptive term “don,” which describes the creator of
Complainant’s products, while the <donedhardyeu.com>, <donedhardyeurope.com>,
and <doneedhardyus.com> domain names add the geographic terms
“eu,” “europe,” or “us.” Moreover, the <edhardyy.net>,
<myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>,
<edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>,
and <shopyouredhardyy.com>
domain names add the letter “y,” to the disptued domain names to create a
misspelling of Complainant’s mark.
The <edhardyyy.com> domain
name adds the letter “y” twice. The
Panel finds that none of Respondent’s additions to Complainant’s ED HARDY mark
sufficiently distinguish the disputed domain names from Complainant’s ED HARDY
mark. Therefore, the Panel finds that
the disputed domain names are confusingly similar to Complainant’s ED HARDY
mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)
(“[T]he fact that a domain name wholly incorporates a Complainant’s registered
mark is sufficient to establish identity [sic] or confusing similarity for
purposes of the Policy despite the addition of other words to such marks”); see also Sutton Group Fin. Servs. Ltd. v. Rodger,
D2005-0126 (WIPO June 27, 2005) (finding that the domain name
<suttonpromo.com> is confusingly similar to the SUTTON mark because the
addition of descriptive or non-distinctive elements to the distinctive element
in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well
established that a domain name consisting of a well-known mark, combined with a
geographically descriptive term or phrase, is confusingly similar to the
mark.”); see also Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks); see also 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 that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s disputed domain names
resolve to similar websites that sell competing products as well as counterfeit
products. The Panel finds that such a
use of the disputed domain names by Respondent does not represent 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also Ultimate Elecs., Inc.
v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent's “use of the domain name (and Complainant’s mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
The WHOIS information for the
disputed domain names does not indicate
that Respondent is commonly known by the disputed domain names. Respondent has not presented any evidence to
suggest that Policy ¶ 4(c)(ii) applies in this case. Moreover, Complainant asserts that it has not
authorized Respondent to use the ED HARDY mark.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name);
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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the disputed domain names no earlier than July 9, 2009, the disputed domain names have resolved to similar websites that sells competing apparel products, including counterfeit versions of Complainant’s products. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business. The Panel further finds that such a disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent’s confusingly similar
disputed domain names create a likelihood of confusion as to Complainant’s
affiliation with the disputed domain names.
The Panel further finds that Respondent is commercially gaining from
this likelihood of confusion from selling competing products and counterfeit
products, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601
(Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under
Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); 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
Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <myshopedhardy.com>, <donedhardyeu.com>, <donedhardyeurope.com>, <edhardyy.net>, <myedhardyy.com>, <edhardyystore.com>, <donedhardyyshop.com>, <edhardyyy.com>, <ouredhardyy.com>, <donedhardyystore.com>, <shopyouredhardyy.com>, <doedhardyonline.com>, and <doneedhardyus.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 10, 2010
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