Nervous Tattoo, Inc. v. 陈永光
Claim Number: FA0905001265475
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 <pickedhardy.com> and <edhardycan.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 28, 2009; the National Arbitration Forum received a hard copy of the Complaint May 29, 2009.
On June 1, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <pickedhardy.com> and <edhardycan.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and thereby has 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 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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@pickedhardy.com and postmaster@edhardycan.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 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <pickedhardy.com> and <edhardycan.com>, are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent has no rights to or legitimate interests in the <pickedhardy.com> and <edhardycan.com> domain names.
3. Respondent registered and used the <pickedhardy.com> and <edhardycan.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., owns the rights to a number of trademark registrations around the world including one with the United States Patent and Trademark Office (“USPTO”) for the ED HARDY mark (i.e., Reg. No. 3,135,603 issued August 29, 2006). Complainant has also registered its ED HARDY mark with the Chinese governmental trademark authority. Complainant uses the ED HARDY mark in connection with the marketing and sales of its collection of luxury fashion goods and street couture designs.
Respondent registered the <pickedhardy.com> domain name April 19, 2009. Respondent registered the <edhardycan.com> domain name April 22, 2009. The <pickedhardy.com> domain name resolves to a website offering competing merchandise as well as counterfeit versions of Complainant’s products. The <edhardycan.com> domain name does not 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 concludes that Complainant satisfied Policy ¶ 4(a)(i) based on the registration of its ED HARDY mark with the
USPTO and the Chinese governmental trademark authority. 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 disputed domain names are confusingly similar to Complainant’s ED HARDY mark. The <pickedhardy.com> and <edhardycan.com> domain names contain Complainant’s ED HARDY mark in its entirety with the addition of the generic term “pick” or “can” as well as the generic top-level domain “.com.” The Panel finds that the additions of generic terms fail to sufficiently distinguish Respondent’s disputed domain names from Complainant’s mark. Furthermore, the addition of a generic top-level domain is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <pickedhardy.com> and <edhardycan.com> domain names are confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i). See 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 Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); 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 Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must establish that it has rights and that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant produced a sufficient prima facie case showing rights and allegations that Respondent has no such rights. Thus Complainant met its burden and once Complainant does so the burden shifts to Respondent to come forward with proof that it has rights to or legitimate interests in the disputed domain names. Respondent failed to respond to the allegations against it and; therefore, the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain names. Nonetheless, the Panel examines the record to determine whether evidence suggests that Respondent has any rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The <pickedhardy.com> domain name resolves to a commercial website offering products in
direct competition with Complainant as well as counterfeit versions of
Complainant’s products. The Panel finds
that Respondent’s use of the <pickedhardy.com> domain name is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and that it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium
Respondent’s <edhardycan.com> domain name does not resolve to an active website. Complainant alleges that the failure to make demonstrable preparations to use the disputed domain name as an active website supports findings that Respondent lacks rights to and legitimate interests in the <edhardycan.com> domain name. Thus, the Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Furthermore, Complainant contends that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information lists the registrant as “陈永光” and the meaning of this string of Chinese characters is unknown. No evidence before the Panel permits an inference that Respondent is commonly known by the disputed domain names and therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under ¶ 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); 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 finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using the <pickedhardy.com> domain name to attract Internet users to a website offering competing products and counterfeit versions of Complainant’s products. The Panel finds that Respondent’s misappropriation of Complainant’s ED HARDY mark to divert Internet users likely disrupts Complainant’s business and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Johnson & Johnson v. tziporah breuer, FA 1240474 (Nat. Arb. Forum Feb. 16, 2009)
(finding that the respondent’s diversionary use of the disputed domain name to sell counterfeit versions of Complainant’s products has disrupted Complainant’s business);
see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent uses a confusingly similar variation of
Complainant’s ED HARDY mark within the <pickedhardy.com> domain
name to attract unsuspecting Internet users looking for Complainant’s website. Respondent then redirects Internet users to Respondent’s
website that offers competing and counterfeit goods for sale. Respondent commercially benefits from this
diversion scheme. Thus, the Panel finds
Respondent registered and used the <pickedhardy.com> domain name
in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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).
Complainant further alleges that Respondent’s failure to make an active use of the <edhardycan.com> domain name supports findings of bad faith under Policy ¶ 4(a)(iii). The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pickedhardy.com> and <edhardycan.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 13, 2009.
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