Nervous Tattoo, Inc. v. chen lu c/o lu chen
Claim Number: FA0910001291029
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 <buyedhardy2009.com> and <edhardy2010.net>, registered with Hichina Zhicheng Technology Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2009. The Complaint was submitted in both Chinese and English.
On October 26, 2009, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <buyedhardy2009.com> and <edhardy2010.net> 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 November 3, 2009, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 23, 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@buyedhardy2009.com and postmaster@edhardy2010.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <buyedhardy2009.com> and <edhardy2010.net> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <buyedhardy2009.com> and <edhardy2010.net> domain names.
3. Respondent registered and used the <buyedhardy2009.com> and <edhardy2010.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc.,
is the exclusive licensee of the ED HARDY mark through Hardy Life, LLC, the
owner of the mark. Hardy Life, LLC,
registered the ED HARDY mark with the United States Patent and Trademark Office
(“USPTO”) on
Respondent, chen lu c/o lu chen,
registered the disputed domain names on
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
the ED HARDY mark under Policy ¶ 4(a)(i) through its registrations of the mark
with the USPTO (Reg. No. 3,141,658 issued
Complainant contends that Respondent’s <buyedhardy2009.com>
domain name is confusingly similar to Complainant’s ED HARDY mark. The
<buyedhardy2009.com> domain name differs from the ED HARDY mark in
four ways: (1) the generic term “buy” has been added to the mark; (2) the space
has been removed from the mark; (3) the number “2009” has been added to the
mark; and (4) the generic top-level domain (“gTLD”) “.com” has been added to
the mark. The Panel finds that the addition of a generic term to a
complainant’s mark fails to adequately distinguish a disputed domain name from
that mark, as does the addition of a number. See Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also Hitachi, Ltd. v. Fortune Int’l
Dev. Ent.
Complainant also contends that Respondent’s <edhardy2010.net> domain name is confusingly similar to Complainant’s ED HARDY mark. The <edhardy2010.net> domain name differs from the ED HARDY mark in three ways: (1) the space has been removed from the mark; (2) the number “2010” has been added to the mark; and (3) the generic top-level domain (“gTLD”) “.net” has been added to the mark. As above, the Panel finds that the addition of a number to a complainant’s mark fails to adequately distinguish a disputed domain name from that mark. See Hitachi, Ltd., D2000-0412, supra. The Panel also finds that removing spaces cannot distinguish a domain name from a mark. See Bank of Am. Corp., FA 95092, supra. The Panel also finds that the addition of a gTLD fails to sufficiently distinguish the disputed domain name from a complainant’s mark. See Rollerblade, Inc., D2000-0429, supra. Therefore, the Panel finds that Respondent’s <edhardy2010.net> domain name is confusingly similar to Complainant’s ED HARDY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed 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 that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings. 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. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Nonetheless, the Panel will examine the record for compliance with the Policy.
Complainant contends that Respondent is not commonly known by the disputed domain names, nor has
it ever been the owner or licensee of the ED HARDY mark. The WHOIS information for the disputed domain
names lists the registrant as “chen lu c/o lu
chen.” Respondent fails to offer evidence
showing Respondent is commonly known by the disputed domain names. Therefore, the Panel finds
that Respondent is not commonly known by the disputed domain names and therefore has not established rights or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Educ.
Broad. Corp. v. DomainWorks Inc.,
FA 882172 (Nat. Arb. Forum
Complainant contends that Respondent is using the
<buyedhardy2009.com> domain
name to operate a website that sells both competing products and counterfeit
versions of Complainant’s products.
The Panel finds that using a domain name incorporating a mark to profit
from sales of counterfeit and competing products is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use of a domain name under
Policy ¶ 4(c)(iii). See Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain
names used to sell the complainant’s goods without the complainant’s authority,
as well as others’ goods, is not bona fide use);
see also Hewlett-Packard Co. v. Inversiones HP Milenium
Complainant also
contends that Respondent is not making an active use of the <edhardy2010.net> domain name. Previous panels have found that a failure to
make an active use of a disputed domain name can fail to be either 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).
Consequently, under these circumstances this Panel finds that Respondent’s failure to make an active use
of the <edhardy2010.net> 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 Thermo Electron Corp. v. Xu,
FA 713851 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is using the <buyedhardy2009.com> domain name (initial registration: June 8,
2009) to host a website that sells both competing
products and counterfeit products, and that this diversion of Internet users to
competing businesses is an intentional disruption of Complainant’s business by
Respondent. Consequently, Complainant
contends that Respondent’s actions are evidence of Respondent’s
registration and use of the <buyedhardy2009.com> domain name in
bad faith pursuant to Policy ¶ 4(b)(iii). The Panel agrees with Complainant’s
contentions and finds that Respondent’s competitive and fraudulent use of the <buyedhardy2009.com>
domain name indicates that Respondent registered and is using the <buyedhardy2009.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Jerie v. Burian, FA
795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent
registered and used the <sportlivescore.com> domain name in order to
disrupt the complainant’s business under the LIVESCORE mark because the
respondent was maintaining a website in direct competition with the
complainant); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant).
Complainant also contends that Respondent is profiting from
the sales of competing and counterfeit products, and that this commercial gain
is evidence of Respondent bad faith registration and use of the <buyedhardy2009.com>
disputed domain name pursuant
to Policy ¶ 4(b)(iv). The Panel agrees
and finds that Respondent’s commercial gain from its use of the <buyedhardy2009.com>
domain name is evidence of its bad faith registration and use of the <buyedhardy2009.com>
domain name pursuant to Policy ¶ 4(b)(iv). See
Nokia
Corp. v. Private, D2000-1271
(WIPO
The Panel finds that the list of factors within Policy ¶ 4(b) are not exhaustive of the potential factors which may show evidence of a respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant contends that Respondent has failed to make
active use of the <edhardy2010.net> domain name (registered
The Panel finds 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 <buyedhardy2009.com> and <edhardy2010.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 12, 2009
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