national arbitration forum

DECISION

Audigier Brand Management Group, LLC and Nervous Tattoo, Inc. v. Qiu Zhong

Claim Number: FA0909001286320

PARTIES

Complainant is Audigier Brand Management Group, Inc. and Nervous Tattoo, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Qiu Zhong (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <christianaudigierca.com> and <edhardyshp.com>, registered with Xiamen Chinasource Internet Service Co., Ltd.

PANEL

The undersigned certifies that she has acted independently and impartially and that 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically September 25, 2009; the National Arbitration Forum received a hard copy of the Complaint September 28, 2009.

After numerous requests, the Registrar, Xiamen Chinasource Internet Service Co., Ltd., has not confirmed to the National Arbitration that the <christianaudigierca.com> and <edhardyshp.com> domain names are registered with Xiamen Chinasource Internet Service Co., Ltd. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.

On October 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 9, 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@christianaudigierca.com and postmaster@edhardyshp.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 18, 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 to 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <christianaudigierca.com> domain name is confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark.

Respondent’s <edhardyshp.com> domain name is confusingly similar to Complainant’s ED HARDY mark.

2. Respondent has no rights to or legitimate interests in the <christianaudigierca.com> and <edhardyshp.com> domain names.

3. Respondent registered and used the <christianaudigierca.com> and <edhardyshp.com> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Audigier Brand Management Group, LLC and Nervous Tattoo, Inc., Complainant collectively, are affiliated companies manufacturing and selling clothing and accessories around the world. Complainant holds several trademark registrations of the marks CHRISTIAN AUDIGIER (e.g., Reg. No. 3,348,997 issued Dec. 4, 2007) and ED HARDY (e.g., Reg. No. 3,135,603 issued Aug. 29, 2006) with the United States Patent and Trademark Office (“USPTO”).

Respondent, Qiu Zhong, registered the <christianaudigierca.com> and <edhardyshp.com> domain names August 10, 2009 and August 8, 2009, respectively. The disputed domain names resolve to commercial websites offering counterfeits of Complainant’s goods as well as goods of Complainant’s competitors.

DISCUSSION

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.

Identical to and/or Confusingly Similar

The Panel finds that Complainant established rights in the CHRISTIAN AUDIGIER (e.g., Reg. No. 3,348,997 issued Dec. 4, 2007) and ED HARDY (e.g., Reg. No. 3,135,603 issued Aug. 29, 2006) marks under Policy ¶ 4(a)(i) via its multiple registrations of marks with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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).

Complainant contends that the <christianaudigierca.com> domain name is confusingly similar to its CHRISTIAN AUDIGIER mark. The disputed domain name contains the mark in its entirety, omitting the space between the words of the mark. Previous panels have found that the omission of spaces in a mark does not add distinctiveness since spaces are impermissible in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The <christianaudigierca.com> domain name also add the generic top-level domain (“gTLD”) “.com.” Since gTLDs are a required element in a domain name, previous panels have found that the addition of a gTLD is irrelevant in an analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Finally, the <christianaudigierca.com> domain name adds the geographic identifier “ca,” which indicates California. The Panel notes that previous panels have found that the addition of a geographic identifier does not negate the confusing similarity that arises from using Complainant’s complete mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). This Panel therefore finds that the <christianaudigierca.com> domain name is confusingly similar to its CHRISTIAN AUDIGIER mark under Policy ¶ 4(a)(i).

Complainant contends that the <edhardyshp.com> domain name is confusingly similar to its ED HARDY mark. This disputed domain name contains Complainant’s ED HARDY mark with the space omitted, the abbreviation for the generic word “shop,” and the gTLD “.com.” The Panel finds that the <edhardyshp.com> domain name is confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc., supra; see also Isleworth Land Co., supra; see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in either of the disputed domain names. If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).

Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names. However, the Panel still examines the record in consideration of the factors listed in Policy ¶ 4(c) before making a determination that Respondent has no rights or legitimate interests in the domain names. 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 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).”).

Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use either its CHRISTIAN AUDIGIER or ED HARDY marks, and the WHOIS information identifies the registrant as “Qiu Zhong.” The Panel finds no evidence in the record suggesting that Respondent is commonly known by the either of the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by either the <christianaudigierca.com> or <edhardyshp.com> domain names and therefore has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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.”).

Complainant argues, and the Panel finds, that the disputed domain name resolves to a commercial website that offers counterfeits of Complainant’s goods and goods of Complainant’s competitors. The Panel finds that Respondent is using Complainant’s marks to compete with Complainant. The Panel finds that this use 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The websites resolving from the <christianaudigierca.com> and <edhardyshp.com> domain names are commercial websites selling knock-offs of Complainant’s goods and goods of Complainant’s direct competitors. The Panel finds that Respondent is disrupting Complainant’s business by operating in direct competition with Complainant and using Complainant’s own CHRISTIAN AUDIGIER and ED HARDY marks to do so. The Panel finds this to be bad faith registration and use under 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 G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

Given that the <christianaudigierca.com> and <edhardyshp.com> domain names are confusingly similar to Complainant’s marks and that the resolving website offers counterfeits of Complainant’s goods, Internet users would likely be confused as to whether Respondent is offering genuine goods made by Complainant and whether Complainant had authorized Respondent to use its marks. Internet users might believe that Respondent is indeed Complainant or at least an authorized distributor. The Panel finds that Respondent’s attempt to profit from this confusion amounts to bad faith registration and use 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 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).

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <christianaudigierca.com> and <edhardyshp.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 2, 2009.

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