Nervous Tattoo, Inc. v. Ed Hardy Grosshandel a/k/a EDH
Claim Number: FA0906001268776
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 <edhardygrosshandel.com>, registered with Name.com LLC.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2009.
On June 17, 2009, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <edhardygrosshandel.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 14, 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@edhardygrosshandel.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 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <edhardygrosshandel.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardygrosshandel.com> domain name.
3. Respondent registered and used the <edhardygrosshandel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is a leading designer of luxury and fashion products. Complainant 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 (Reg. No. 3,141,658 issued September 12, 2006). Complainant uses its ED HARDY mark in relation to the advertisement and retail sales of merchandise based on vintage Japanese tattoo designs.
Respondent registered the <edhardygrosshandel.com> domain name on May 6, 2009. The disputed domain name is being used to resolve to a website offering competing merchandise as well as 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 established rights in its ED HARDY mark under Policy ¶ 4(a)(i) based on the registration of its ED HARDY mark with the USPTO. Additionally, it is not necessary under the Policy for Complainant to have registered its ED HARDY mark in the country of Respondent’s residence. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <edhardygrosshandel.com> domain name contains Complainant’s ED HARDY mark in its entirety with the addition of the generic German term “grosshandel” and the affixation of the generic top-level domain “.com.” The Panel finds that neither the addition of a generic German term nor the suffix “.com” detracts from the confusing similarity between Complainant’s ED HARDY mark and Respondent’s <edhardygrosshandel.com> domain name. Thus, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum April 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”); see also State Farm Mut. Auto. Ins. Co. v. Rodriguez, FA 612779 (Nat. Arb. Forum Jan. 22, 2006) (finding that Respondent’s disputed domain name is confusingly similar because “Respondent’s domain name incorporates Complainant’s mark in its entirety and merely adds “seguro” and the generic top-level domain “.com.”); 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).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The disputed 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 <edhardygrosshandel.com>
domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
Furthermore, Complainant alleges
that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the
registrant as “Ed Hardy Grosshandel a/k/a EDH.” While this information indicates a possible
connection with the disputed domain name, there is no evidence in the record to
corroborate this indication. Respondent
failed to counter Complainant’s allegations with any evidence to show that it
is commonly known by the disputed domain name.
See Yoga
Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Nature’s
Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2,
2004) (“In its WHOIS contact information, Respondent lists its name and its
administrative contact as ‘Natures Path, Inc.’
However, since Respondent failed to respond to the Complaint, there has
not been any affirmative evidence provided to the Panel showing that Respondent
was commonly known by the disputed domain name prior to its registration of the
domain name.”). Thus, the Panel finds
that Respondent is not commonly by the <edhardygrosshandel.com>
domain name under Policy ¶ 4(c)(ii).
Complainant has
satisfied Policy ¶ 4(a)(ii).
Complainant further alleges that Respondent has registered and is using the confusingly similar domain name to attract Internet users to Respondent’s website offering competing products and counterfeit versions of Complainant’s products. The Panel concludes that Respondent is misappropriating Complainant’s ED HARDY mark to divert Internet users to Respondent’s competing website. Respondent is likely disrupting Complainant’s business and Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See 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; see also 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).
Complainant asserts that Respondent’s use of the <edhardygrosshandel.com>
domain name in order to sell
counterfeit merchandise using Complainant’s ED HARDY mark constitutes bad faith
registration and use. The Panel finds
that the use of a confusingly similar domain name in order to commercially
benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Respondent has
created a likelihood of confusion and has benefited by selling competing and
counterfeit products. 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 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(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <edhardygrosshandel.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 3, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum