Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC v. chen sheng c/o chensheng and chen hanbiao c/o chenhanbiao and liu sheng c/o liusheng
Claim Number: FA0905001263142
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 <edhardyca.com>, <edhardyroad.com> and <christianaudigiered.com>, registered with Xin Net Technology Corporation.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2009.
On May 18, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <edhardyca.com>, <edhardyroad.com>, and <christianaudigiered.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 May 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 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@edhardyca.com, postmaster@edhardyroad.com, and postmaster@christianaudigiered.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edhardyca.com> and <edhardyroad.com> domain names are confusingly similar to Complainant’s ED HARDY mark. Respondent’s <christianaudigiered.com> domain name is confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark.
2. Respondent does not have any rights or legitimate interests in the <edhardyca.com>, <edhardyroad.com>, and <christianaudigiered.com> domain names.
3. Respondent registered and used the <edhardyca.com>, <edhardyroad.com>, and <christianaudigiered.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 collectively the exclusive licensee responsible for enforcing the ED HARDY and CHRISTIAN AUDIGIER marks. Complainant uses these marks in connection with a variety of goods, including its line of luxury and cutting-edge fashions. Complainant holds several registrations for the ED HARDY mark with various governmental authorities throughout the world including the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 3,135,603 issued August 29, 2006). Complainant also holds numerous registrations of the CHRISTIAN AUDIGIER mark with various governmental authorities throughout the world including the USPTO (i.e., Reg. No. 3,348,997 issued December 4, 2007).
Respondent registered the <edhardyca.com> domain name on March 11, 2009, the <edhardyroad.com> domain name on March 21, 2009, and the <christianaudigiered.com> domain name on March 19, 2009. All of the disputed domain names resolve to similar websites, each of which display both of Complainant’s marks and sell 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.
The Panel finds that Complainant has sufficiently established rights in both the ED HARDY mark and the CHRISTIAN AUDIGIER mark under Policy ¶ 4(a)(i) through their respective registrations with various governmental authorities throughout the world including the USPTO. See 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); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <edhardyca.com> and <edhardyroad.com> domain names contain Complainant’s entire ED HARDY mark, merely adding the generic term “ca” or “road,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <edhardyca.com> and <edhardyroad.com> domain names are confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i) because these additions do not sufficiently distinguish these disputed domain names from Complainant’s mark. 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 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The <christianaudigiered.com> domain name contains Complainant’s entire CHRISTIAN AUDIGIER mark, adds the “ED” portion of Complainant’s ED HARDY mark, and merely adds the gTLD “.com.” The Panel finds that none of these additions to Complainant’s CHRISTIAN AUDIGIER mark sufficiently distinguish the <christianaudigiered.com> domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <christianaudigiered.com> domain name is confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, 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). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”).
All of the disputed domain names resolve to similar
websites, each displaying both of Complainant’s ED HARDY and CHRISTIAN AUDIGIER
marks and selling counterfeit versions of Complainant’s goods. The Panel finds that Respondent is attempting
to pass itself off as Complainant.
Therefore, the Panel finds that such use of the disputed domain names is
not a bona fide offering of goods and
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
Furthermore, Respondent is listed in the WHOIS information
as “chen sheng c/o chensheng” for the <edhardyca.com>
domain name, “chen hanbiao c/o chenhanbiao” for the <edhardyroad.com> domain name, and “liu sheng c/o
liusheng” for the <christianaudigiered.com> domain name. The WHOIS information for all of the disputed
domain names list the e-mail address as “chenfeisheng@163.com,” indicating that
Respondent is the registrant for all of the disputed domain names. None of this WHOIS information
indicates that Respondent is commonly known by any of the disputed domain
names.
Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not
commonly known by any of the disputed domain names under Policy ¶
4(c)(ii). See 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
All of the disputed domain names resolve to similar
websites, each of which sells counterfeit versions of Complainant’s goods that
directly compete with Complainant’s business.
The Panel finds that Respondent’s commercial use of the <edhardyca.com>, <edhardyroad.com>,
and <christianaudigiered.com> domain names disrupts
Complainant’s business and constitutes bad faith registration and use under
Policy ¶ 4(b)(iii). See 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).”); 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)).
Moreover, Respondent’s <edhardyca.com>, <edhardyroad.com>,
and <christianaudigiered.com> domain names resolve to
similar websites, each of which prominently display Complainant’s marks and
sell counterfeit versions of Complainant’s goods. The Panel finds that Respondent, in attempting
to pass itself off as Complainant for commercial gain, is creating a likelihood
of confusion as to Complainant’s affiliation with the disputed domain names. Therefore, the Panel finds that Respondent’s
actions constitute bad faith registration and use under Policy ¶ 4(b)(iv)
because Respondent is attempting to benefit from Complainant’s goodwill. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”); see also Compaq Info. Techs.
Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May
29, 2002) (finding that the respondent’s use of the <compaq-broker.com>
domain name to sell the complainant’s products “creates a likelihood of
confusion with Complainant's COMPAQ mark as to the source, sponsorship, or
affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
The Panel finds that 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 <edhardyca.com>, <edhardyroad.com>, and <christianaudigiered.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 1, 2009
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