Nervous Tattoo, Inc. v. lin jia and linjia co.ltd
Claim Number: FA0907001276302
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 <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2009.
On July 31, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.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 August 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@edhardy123.com, postmaster@edharddworld.com, postmaster@edhardycool.com, postmaster@edhardyde.com, postmaster@kicksedhardy.com, and postmaster@niceedhardy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names.
3. Respondent registered and used the <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered each of the <edhardy123.com>, <edharddworld.com>,
<edhardycool.com>, <edhardyde.com>,
<kicksedhardy.com>, and <niceedhardy.com> domain
names between March 6, 2009 and May 25, 2009.
The <edhardy123.com>,
<edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>,
and <niceedhardy.com> domain names each resolve to a
commercial website offering competing and counterfeit clothing and accessories for
sale under Complainant’s ED HARDY mark.
The <edharddworld.com> domain name resolves to a blank website featuring only the phrase “Index
of” accompanied by a list of inaccessible links.
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’s multiple registrations of the ED HARDY mark with the USPTO and the SAIC confer upon Complainant sufficient rights in the mark for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005): “Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’); 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 pursuant to Policy ¶ 4(a)(i). Respondent’s
<edhardy123.com> domain
name incorporates Complainant’s mark in its entirety with the addition of the
generic numerals “123.” The Panel finds
that this addition does nothing to negate a finding of confusing similarity
under Policy ¶ 4(a)(i). 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). The <edhardycool.com>, <kicksedhardy.com>, <edhardyde.com>
and <niceedhardy.com> domain
names incorporate Complainant’s entire ED HARDY mark with the addition of
generic terms or indiscriminate letters.
The Panel finds that the addition of non-descriptive terms or
letters to a registered mark does nothing to create distinctiveness in a
disputed domain name. See 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 Am. Online, Inc. v. Amigos On Line
RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the
<aolrj.com> domain name was confusingly similar to the complainant’s AOL
mark because “…the addition of a string of indiscriminate letters to a famous
mark in a second level domain does not differentiate the domain name from the
mark.”). Respondent’s <edharddworld.com> domain name incorporates the distinctive
portion of Complainant’s ED HARDY mark with the substitution of the letter “y”
with the letter “d,” a misspelling of Complainant’s mark, and the addition of
the generic term “world.” The Panel
finds that these alterations do not reduce the confusing similarity between the
<edharddworld.com> domain name and Complainant’s ED HARDY mark
under Policy ¶ 4(a)(i). See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change respondent’s infringement on a core trademark held by the
complainant); see also Am. Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)).
Furthermore, the Panel concludes that the affixation of the generic
top-level domain “.com” to Complainant’s mark in all of the disputed domain
names does not sufficiently distinguish the disputed domain names from
Complainant’s ED HARDY mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names under Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Respondent’s <edhardy123.com>, <edhardycool.com>,
<edhardyde.com>, <kicksedhardy.com>, and
<niceedhardy.com> domain names each resolve to a commercial
website featuring competing and counterfeit merchandise bearing the ED HARDY
mark. The Panel presumes that Respondent
is profiting through the sale of said clothing and accessories. The Panel therefore concludes that
Respondent’s use of the <edhardy123.com>, <edhardycool.com>, <edhardyde.com>,
<kicksedhardy.com>, and <niceedhardy.com> domain
names 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
The <edharddworld.com> domain name does not resolve to an active website, and Complainant contends that Respondent has never made an active use of the disputed domain name. The only content displayed on the <edharddworld.com> domain name is the phrase “Index of” followed by a listing of inactive links. The Panel finds that Respondent’s failure to make an active use of the <edharddworld.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The pertinent WHOIS information identifies the registrant of each of the disputed domain names as “lin jia and linjia co.ltd.” 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 in the disputed domain names 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).
Finally, the Panel finds that Respondent is taking advantage of a common misspelling of Complainant’s ED HARDY mark, substituting the letter “y” with the letter “d” in the <edharddworld.com> domain name. Respondent is using this common misspelling in the disputed domain name to divert Internet users to Respondent’s website; this practice is commonly referred to as “typosquatting.” Thus, the Panel concludes that Respondent’s engagement in typosquatting is further evidence that Respondent lacks rights and legitimate interests in the <edharddworld.com> domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of six
infringing domain names prevents Complainant from reflecting its ED HARDY mark
on the Internet. Complainant further asserts that such conduct is
evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). The Panel agrees and finds that Respondent’s
conduct establishes a pattern that constitutes bad faith registration and use
of the disputed domain names under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept.
8, 2000) (“Registration of more than one domain name that infringes on
another’s registered mark(s) supports the inference that Respondent knew of
Complainant’s marks upon registering the domain names . . . [and
t]he registration of multiple domain names that infringe on Complainant’s
trademarks is evidence of a pattern of conduct.”); see also Gamesville.com, Inc.
v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent engaged in a pattern of conduct of registering domain names to
prevent the owner of the trademark from reflecting the mark in a corresponding
domain name, which is evidence of registration and use in bad faith).
Respondent’s <edhardy123.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names each resolve to a commercial website that sells competing and counterfeit products under Complainant’s ED HARDY mark. The Panel finds that Respondent’s registration and use of the <edhardy123.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names to operate websites in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); 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)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, Respondent’s <edhardy123.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names resolve to commercial websites, each of which prominently displays Complainant’s mark through the sale of counterfeit versions of Complainant’s goods. The Panel finds that Respondent is intentionally 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 profit from the goodwill associated with Complainant’s ED HARDY mark 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 notes that the enumerated indications of bad faith under Policy ¶ 4(a)(b) are intended to be illustrative, and are without limit. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Respondent’s <edharddworld.com> domain name resolves to an inactive website that only contains the terms “Index of” and a listing of inaccessible directory files. The Panel finds that Respondent’s failure to make an active use of the <edharddworld.com> domain name supports a finding of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name 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).
Finally,
the Panel finds that Respondent has engaged in typosquatting because Respondent
is taking advantage of a common misspelling of Complainant’s ED HARDY mark in
the <edharddworld.com> domain
name to divert unknowing Internet users. The Panel finds that
Respondent’s engagement in typosquatting with respect to the <edharddworld.com>
domain name is evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). See
Microsoft Corp. v. Domain Registration
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 <edhardy123.com>, <edharddworld.com>, <edhardycool.com>, <edhardyde.com>, <kicksedhardy.com>, and <niceedhardy.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 17, 2009
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