Nervous Tattoo, Inc. v. chen binbin and lin shun and zheng chao and zheng qun
Claim Number: FA0906001266925
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 <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.com>, registered with Hichina Zhicheng Technology Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2009. The Complainant was submitted in both Chinese and English.
On June 9, 2009, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.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 June 17, 2009, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@edhardypub.com, postmaster@oedhardy.com, postmaster@edhardyy.com, and postmaster@edhardyshoppe.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 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.com> domain names.
3. Respondent registered and used the <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is the exclusive licensee of Hardy Life, Inc., which owns the registration for the ED HARDY mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,141,658 issued September 12, 2006) and the Chinese trademark authority (Reg. No. G907,827 issued May 20, 2008). Complainant is authorized and obligated to enforce rights pertaining to the ED HARDY mark. The ED HARDY mark is used in connection with the provision of clothing and other products.
Respondent registered the <edhardypub.com>, <oedhardy.com>, <edhardyy.com>,
and <edhardyshoppe.com> domain names between March 19, 2009
and
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.
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 Panel finds that Complainant’s registration of the ED HARDY mark with the USPTO and Chinese trademark authority each satisfy Complainant’s obligations under Policy ¶ 4(a)(i) such that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)) Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
The <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.com> domain names all contain the ED HARDY mark in its entirety with the following changes: (1) adding the generic top-level domain “.com,” (2) adding an extra letter; and/or (3) adding the descriptive or generic terms “pub” or “shoppe.” First, the addition of a generic top-level domain is irrelevant in every Policy ¶ 4(a)(i) analysis since every domain name requires such a feature. Second, the addition of extra letters typically will fail to render a disputed domain name sufficiently distinct. Third, the addition of a generic or descriptive term likewise fails to thwart a finding of confusing similarity where, as here, the mark is the dominant feature of the disputed domain names. As such, the Panel finds that the above disputed domain names are each confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See 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).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence in the record, including the WHOIS information, to conclude that Respondent is commonly known by the disputed domain names. Moreover, Complainant contends that Respondent is not authorized to register or use the disputed domain names or the ED HARDY mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests 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 disputed domain names resolve to a website that offers
competitive and counterfeit goods for sale.
The use of confusingly similar disputed domain names that are clearly
and obviously related to Complainant’s mark in order to compete with and
therefore undermine Complainant’s business violates the Policy. It would take some difficulty in finding a
starker failure to create either a bona
fide offering of goods or services or legitimate noncommercial or fair
use. As such, the Panel finds that
Respondent has failed to engender rights or legitimate interests under Policy
¶¶ 4(c)(i) or (iii).
The Panel also wishes to note that the <oedhardy.com> and <edhardyy.com> domain names
constitute typosquatting. This theory
refers to the registration of disputed domain names that misspell a
complainant’s mark by adding or omitting letters so as to capture unsuspecting
and innocent Internet users that commit these typographical blunders. Such a practice is not engaged in by mere
chance, but rather reflects a substantively deeper effort to create confusion
and deceit on the Internet. As such,
these ventures have been found to independently establish a base for finding a
lack of rights and legitimate interests.
The Panel so finds with the current Respondent as to the <oedhardy.com>
and <edhardyy.com> domain names under Policy ¶ 4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that its business is disrupted by the provision of competitive and counterfeit goods through the disputed domain names. The Panel is inclined to agree, as Respondent obviously intended to route customers to Respondent instead of Complainant for commercial gain. Respondent has thus fallen under Policy ¶ 4(b)(iii), in that Respondent has registered and continues to use the disputed domain names in bad faith. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Complainant also argues that Respondent intentionally sought to create a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and competitive websites. It is clear that Respondent sought to commercially profit from Internet users who, seeking Complainant’s products, might imagine that they were conducting business through Complainant instead of Respondent. Respondent has therefore engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
As a final
consideration, the Panel has expended effort in Policy ¶ 4(a)(ii) in
determining that the <oedhardy.com> and <edhardyy.com> domain names clearly constitute
typosquatting. All that need be said
here is that typosquatting with respect to these two domain names constitutes
an adequate and independent basis for the Panel’s finding of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005)
(finding that the respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent engaged in typosquatting, which is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edhardypub.com>, <oedhardy.com>, <edhardyy.com>, and <edhardyshoppe.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 27, 2009
National
Arbitration Forum
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