Nervous Tattoo, Inc. v. hl lu c/o shimisi
Claim Number: FA0910001291032
Complainant is Nervous Tattoo, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is hl lu c/o shimisi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <londonedhardy.com>, registered with Hichina Zhicheng Technology Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin 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 25, 2009, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <londonedhardy.com> domain names is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. 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@londonedhardy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <londonedhardy.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <londonedhardy.com> domain name.
3. Respondent registered and used the <londonedhardy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is the owner of registrations of the ED HARDY mark in countries all over the world, including the United States and China. The United States Patent and Trademark Office (“USPTO”) has issued Complainant several registrations of the ED HARDY mark (e.g., Reg. No. 3,135,603 issued Aug. 29, 2006). The China Patent and Trademark Office (“CPTO”) has also issued Complainant several registrations of the ED HARDY mark (e.g., Reg. No. G907827 issued Dec. 8, 2005).
Respondent, hl lu c/o shimisi, registered the <londonedhardy.com> domain name on July 19, 2009. The disputed domain name resolves to a commercial website offering counterfeits of Complainant’s goods as well as goods of Complainant’s competitors.
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 pursuant to Policy ¶ 4(a)(i) through its multiple registrations with the USPTO and the CPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s
<londonedhardy.com> domain name is confusingly similar to
Complainant’s ED HARDY mark. The
disputed domain name contains the mark in its entirety, omitting the space
between the words of the mark. The
omission of spaces in a mark does not add distinctiveness as 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 <londonedhardy.com>
domain name also adds the generic top-level
domain (“gTLD”) “.com.” Since gTLDs are
a required element in a domain name, 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 <londonedhardy.com> domain name adds
the geographic term “London.” The
addition of a geographic term does not negate the confusingly similarity that
arises from using Complainant’s complete mark.
See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic
terms, such as “cancun” to the end of the CHEAPTICKETS mark in the
<cheapticketscancun.com>, <cheapticketscancun.biz>,
<cheapticketscancun.net>, and <cheapticketscancun.org> domain
names, does not overcome a finding of confusing similarity under Policy ¶
4(a)(i)). The Panel therefore
finds that the <londonedhardy.com>
domain name is confusingly similar to its ED HARDY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the <londonedhardy.com> domain name.
Once Complainant establishes 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 name 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 name
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 <londonedhardy.com>
domain name. However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶ 4(c). 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 its ED HARDY mark, and the WHOIS information identifies the registrant as “hl lu c/o shimisi.” The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <londonedhardy.com> domain name and has therefore not established rights or legitimate interests in the disputed domain name 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.”).
The <londonedhardy.com>
domain name resolves to a commercial website that offers counterfeits of
Complainant’s goods as well as the goods of Complainant’s competitors. The Panel finds that Respondent is using
Complainant’s marks to compete with Complainant, and that this use is not 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 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 has satisfied Policy ¶ 4(a)(ii).
Respondent registered the <londonedhardy.com>
domain name on July 19, 2009, nearly three years after Complainant registered
its ED HARDY mark in the United States and three and a half years after
Complainant registered its ED HARDY mark in Respondent’s native China. The website resolving from the <londonedhardy.com> domain name is a
commercial website 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 ED HARDY mark
to do so. The Panel finds this is 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 <londonedhardy.com>
domain name is confusingly similar to Complainant’s ED HARDY mark and 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 mark. 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 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 <londonedhardy.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 15, 2009
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