Nervous Tattoo, Inc. v. song xu a/k/a songxu jing
Claim Number: FA0907001276508
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 <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.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 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 <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.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 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 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 <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.com> domain names.
3. Respondent registered and used the <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., provides luxury and cutting-edge fashion and street couture to the public. Complainant uses its ED HARDY mark in connection with its business in countries all over the world. Complainant has also registered its ED HARDY mark numerous times with various governmental trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,141,658 issued September 12, 2006) and the Chinese trademark authority (Reg. No. G907,827 issued December 8, 2005).
Respondent, song xu a/k/a songxu jing, registered the <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.com> domain names between March 30, 2009 and May 10, 2009. The disputed domain names all resolve to websites that sell competing and counterfeit merchandise.
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. Complainant contends that even though the registrant names are slightly different, the registration information for all three disputed domain names contains the same registrant address, telephone number, and e-mail address. Complainant further argues that the resolving websites for all three disputed domain names are in the same style, offer the same counterfeit product, and even reference each other. 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 has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant has set forth evidence of its rights in the ED
HARDY mark through its registrations of the mark with the USPTO (i.e. Reg. No.
3,141,658 issued September 12, 2006) and the Chinese trademark authority (Reg.
No. G907,827 issued December 8, 2005). The Panel finds that Complainant has
sufficient rights in the mark under Policy ¶ 4(a)(i).
The <edhardy-shoppe.com>, <edhardyvogue.com>, and
names contain Complainant’s ED HARDY mark while removing the space in the ED
HARDY mark and adding: (1) the generic top-level domain “.com;” (2) the generic
and descriptive words such as “shoppe;” “vogue;” or “pop;” and/or (3) a
hyphen. The Panel finds that the removal
of spaces, the addition of a top-level domain, and the addition of a hyphen
fail as material changes under the Policy.
Moreover, the addition of generic or descriptive words generally does not
constitute sufficient alterations so as to thwart a finding of confusing
similarity between the disputed domain names and the mark. Therefore, the Panel finds that the disputed
domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Because Complainant has set forth a prima facie case supporting its allegations, Respondent carries the burden to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).
Based on the evidence within the record, there is no indication that Respondent is commonly known by the disputed domain names. The WHOIS domain name registration information lists the registrant of record as “song xu a/k/a songxu jing.” As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The disputed domain names resolve to websites that offer
products that compete with, and in some cases are counterfeit versions of,
Complainant’s own fashion offerings. The
Panel finds it to be clear that Respondent has sought to divert Internet users
to its own competitive website for commercial gain, given the purported sale of
goods on this website. Therefore, the
Panel finds that Respondent has not created a bona fide offering of goods or 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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain names, which were registered between March 30, 2009 and May 10, 2009, resolve to websites that sell products that both compete with, and constitute counterfeit versions of, Complainant’s clothing products. That such competition could disrupt Complainant’s business is obvious given the confusingly similar nature of the disputed domain names with respect to Complainant’s mark. Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing 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)).
Respondent’s offering of competitive and counterfeit goods at the resolving websites of the disputed domain names clearly constitutes a commercial use. That Respondent is using confusingly similar disputed domain names to facilitate this operation demonstrates that Respondent intentionally sought to create a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and resolving websites. This constitutes evidence that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).
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 <edhardy-shoppe.com>, <edhardyvogue.com>, and <pop-edhardy.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 15, 2009
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