Nervous Tattoo, Inc. v. Michelle Massey
Claim Number: FA0904001260239
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 <edhardy100.com>, registered with Godaddy.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2009.
On April 30, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <edhardy100.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 May 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 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@edhardy100.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edhardy100.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardy100.com> domain name.
3. Respondent registered and used the <edhardy100.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is the owner of the ED HARDY mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,144,658 issued September 12, 2006) and other governmental trademark authorities worldwide. The ED HARDY mark is used in relation to the advertisement and retail sales of clothing and other fashion accessories.
Respondent registered the <edhardy100.com> domain name on January 18, 2009. Respondent is using the disputed domain name to resolve to Respondent’s commercial website offering Complainant’s goods and other goods directly competing with Complainant for sale.
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.
Based on the registration of the ED HARDY mark with the USPTO and other governmental trademark authorities throughout the world, the Panel finds that Complainant has established rights in the mark to satisfy Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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).
Complainant alleges that Respondent’s <edhardy100.com>
domain name is confusingly similar to its ED HARDY mark. The disputed domain name contains
Complainant’s ED HARDY mark in its entirety, with the addition of the number
“100” as well as the affixation of a generic top-level domain name “.com.” The Panel finds that the addition of the
numerals “100” after Complainant’s ED HARDY mark fails to prevent the finding
of confusing similarity for the purposes of a Policy ¶ 4(a)(i) analysis. See Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding
the suffixes "502" and "520" to the ICQ trademark does
little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO
Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name
is confusingly similar to the OMNITEL trademark). Complainant further alleges that the generic
top-level domain name is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. The
Panel agrees and concludes that Respondent’s <edhardy100.com>
domain name is confusingly similar to Complainant’s ED HARDY mark. See
Jerry Damson, Inc. v.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights or legitimate interests in the <edhardy100.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 <edhardy100.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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). 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.
Complainant alleges that Respondent lacks any rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the <edhardy100.com> domain name. The WHOIS information identifies Respondent as “Michelle Massey,” and there is no other evidence in the record to suggest that Respondent is otherwise commonly known by the <edhardy100.com> domain name under 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). The Panel concludes that Respondent is not, and has never been, commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The <edhardy100.com> domain name resolves to Respondent’s commercial website offering Complainant’s goods and goods of Complainant’s competitors for sale. The Panel finds that Respondent’s use of the disputed domain name to operate a commercial website intending to redirect Internet users who are seeking Complainant’s goods to Respondent’s resolving website is not 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 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a commercial website that features Complainant’s goods for sale, as well as goods of Complainant’s competitors. The Panel finds that this likely disrupts Complainant’s business, and therefore Respondent registered and is using the disputed domain name in bad faith 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent also created a likelihood of confusion as to Complainant’s endorsement of the disputed domain name by attracting Internet users through the confusingly similar <edhardy100.com> domain name, presumably for commercial gain. The Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods)
Complainant has satisfied Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edhardy100.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 11, 2009
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