national arbitration forum

 

DECISION

 

Only The Best, Inc., d/b/a Crazy Shirts v. Ashed Hefner

Claim Number: FA0706001011864

 

PARTIES

Complainant is Only The Best, Inc., d/b/a Crazy Shirts (“Complainant”), represented by William G. Meyer III, of Dwyer Schraff Meyer Grant & Green, Suite 1800 Pioneer Plaza, 900 Fort Street Mall, Honolulu, HI 96813.  Respondent is Ashed Hefner (“Respondent”), Gibraltar, Suite 2, Portland House, Glasis Road, Verpen 14698 GI.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <crazyshirts.com>, registered with Parava Networks Inc d/b/a Registrateya.com Naame.com.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 21, 2007.

 

On June 20, 2007, Parava Networks Inc d/b/a Registrateya.com Naame.com confirmed by e-mail to the National Arbitration Forum that the <crazyshirts.com> domain name is registered with Parava Networks Inc d/b/a Registrateya.com Naame.com and that Respondent is the current registrant of the name.  Parava Networks Inc d/b/a Registrateya.com Naame.com has verified that Respondent is bound by the Parava Networks Inc d/b/a Registrateya.com Naame.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 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 2007 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@crazyshirts.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 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <crazyshirts.com> domain name is identical to Complainant’s CRAZY SHIRTS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <crazyshirts.com> domain name.

 

3.      Respondent registered and used the <crazyshirts.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Only The Best, Inc., d/b/a Crazy Shirts, manufactures and sells T-shirts and other apparel around the world.  Complainant acquired the assets of Crazy Shirts, Inc. on November 20, 2001, and entered into a Trademark Assignment Agreement with Crazy Shirts, Inc. on the same date.  Through its predecessors-in-interest, Complainant has continuously and extensively promoted itself under the CRAZY SHIRTS mark since 1966.

 

Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CRAZY SHIRTS mark (including Reg. No. 943,290 issued September 19, 1972 and Reg. No. 1,126,473 issued October 30, 1979).

 

Crazy Shirts, Inc. initially registered the <crazyshirts.com> domain name in 1996 and transferred it to Complainant in 2001.  Unbeknownst to Complainant, Respondent fraudulently obtained control over the disputed domain name registration on November 4, 2005 and changed the registrar.  Respondent has not changed the use of the disputed domain name, however, for it still forwards to Complainant’s original website.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s numerous valid and subsisting USPTO trademark registrations for the CRAZY SHIRTS mark sufficiently satisfy the requirement of Policy ¶ 4(a)(i) that Complainant establish rights in a mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Toray Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (“The Panel finds that Complainant has established rights in the Trademark, by reason of its U.S. trademark registrations, which are valid and subsisting.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).

 

The <crazyshirts.com> domain name is identical to Complainant’s CRAZY SHIRTS mark, but for the addition of the generic top-level domain “.com” and the omission of the space between terms in the mark.  In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found that the elimination of spaces between terms and the addition of a gTLD did not establish distinctiveness under Policy ¶ 4(a)(i).  The panel in U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) came to the same conclusion, stating, “Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”  Therefore, the Panel holds that neither the addition of a gTLD nor the omission of a space between terms is capable of distinguishing the <crazyshirts.com> domain name from Complainant’s mark, and thus the two are identical pursuant to Policy ¶ 4(a)(i).

 

Furthermore, Complainant and its predecessors-in-interest possessed the <crazyshirts.com> domain name from 1996 to 2005, at which point Respondent somehow fraudulently transferred the domain name to itself.  The Panel considers Complainant’s prior possession of the domain name at issue, which is identical to its CRAZY SHIRTS mark, as further evidence that Complainant has rights in the CRAZY SHIRTS mark pursuant to Policy ¶ 4(a)(i).  See Suburban Ostomy Supply Co. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the [disputed] domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark pursuant to Policy ¶ 4(a)(i).”); see also Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent lacks rights and legitimate interests in the <crazyshirts.com> domain name.  Complainant has the initial burden of proving that Respondent has no rights or legitimate interests.  Once it makes out a prima facie case, as Complainant in the instant proceeding has done, the burden effectively shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Toray Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the domain name at issue under Policy ¶ 4(a)(ii), and then the burden shifts to 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).

 

Respondent has not responded to this Complaint, which raises a presumption that it has no rights or legitimate interests in the <crazyshirts.com> domain name.  See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  Nevertheless, the Panel will still consider all of the available evidence to see if Respondent can establish rights or legitimate interests with respect to the factors listed in Policy ¶ 4(c).

 

Respondent is not commonly known by the disputed domain name.  The WHOIS information lists the registrant of the <crazyshirts.com> domain name as “Ashed Hefner,” and Complainant has not authorized Respondent to register this disputed domain name.  In fact, Complainant previously held the registration for the disputed domain name until Respondent obtained it through fraudulent means.  The Panel therefore concludes that Respondent is not commonly known by the disputed domain name and cannot establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent has not changed the content of the website at the <crazyshirts.com> domain name despite fraudulently obtaining control of it two years ago, leaving consumers with the impression that the current website is still affiliated with Complainant.  In Anbex Inc. v. WEB-Common Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006), the panel found that the respondent had no rights or legitimate interests under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where the respondent hijacked the complainant’s domain name and merely displayed the complainant’s website.  The panel found that the respondent was attempting to pass itself off as the complainant and offer the complainant’s products for sale.  Id.  In this case, Respondent is also attempting to pass itself off as Complainant by maintaining Complainant’s website at the disputed domain name but changing the registration information.  The Panel does not find such a use to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s attempts to impersonate the complainant online provided evidence that the respondent lacked rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii)). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has hijacked the <crazyshirts.com> domain name from Complainant, yet is still displaying Complainant’s website.  Because Internet users will likely assume that Complainant still maintains this website, Respondent has registered and is using the disputed domain name for the primary purpose of disrupting Complainant’s business under the CRAZY SHIRTS mark, which represents bad faith according to 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 G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Moreover, Respondent has registered and is using the <crazyshirts.com> domain name in bad faith according to Policy ¶ 4(b)(iv), for Respondent is attempting to attract, for commercial gain, Internet users to its website displaying Complainant’s CRAZY SHIRTS mark and selling Complainant’s products.  In 8X Entertainment, Inc. v. EXC Int’l AG, WIPO D2005-1126 (Dec. 28, 2005), the panel found bad faith registration and use where the respondent had hijacked the domain name from the complainant and continued to redirect Internet users to the complainant’s website.  The panel in Mezenin v. Baselmans, FA 664060 (Nat. Arb. Forum May 8, 2006) also found bad faith registration and use because the respondent had hijacked the disputed domain name and yet still maintained the complainant’s website.  Similarly, Respondent in this case is taking advantage of consumer confusion as to the source, affiliation, sponsorship or endorsement of the disputed domain name and profiting from the goodwill associated with the CRAZY SHIRTS mark.  Therefore, Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <crazyshirts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  August 6, 2007

 

 

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