Nervous Tattoo, Inc. v. zhi chen c/o chen zhi and Cb liu c/o liu wen
Claim Number: FA0911001294677
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 <goedhardy.com>, <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardyin.com>, <edhardytee.com>, and <edhardy-store.com>, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2009. The Complaint was submitted in both Chinese and English.
On November 17, 2009, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <goedhardy.com>, <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardyin.com>, <edhardytee.com>, and <edhardy-store.com> domain names are 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 25, 2009, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@goedhardy.com, postmaster@clothing-edhardy.com, postmaster@edhardy-edhardy.com, postmaster@edhardyin.com, postmaster@edhardytee.com, postmaster@edhardy-store.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 23, 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 <goedhardy.com>, <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardyin.com>, <edhardytee.com>, and <edhardy-store.com> domain names are confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <goedhardy.com>, <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardyin.com>, <edhardytee.com>, and <edhardy-store.com> domain names.
3. Respondent registered and used the <goedhardy.com>, <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardyin.com>, <edhardytee.com>, and <edhardy-store.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is a designer of fashionable clothing and accessories. Complainant has a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ED HARDY mark (Reg. No. 3,135,603 issued August 29, 2006).
Respondent registered the disputed domain names on or after November 12, 2008. Respondent’s <goedhardy.com>, <clothing-edhardy.com>, and <edhardy-store.com> domain names resolve to websites offering the sale of both competing and counterfeit clothing products. In addition, Respondent’s <edhardy-edhardy.com>, <edhardyin.com>, and <edhardytee.com> domain names resolve to inactive websites.
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 for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 3,135,603 issued August 29, 2006). See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction).
Complainant argues that Respondent’s disputed domain names
are confusingly similar to Complainant’s ED HARDY mark pursuant to Policy ¶ 4(a)(i). Each of
Respondent’s disputed domain names contains the ED HARDY mark in its
entirety. Respondent’s <goedhardy.com> and <edhardyin.com>
domain names add the generic terms “go” and “in” respectively. The Panel finds that the addition of the
generic terms “go” and “in” fail to create a distinguishing characteristic
within the disputed domain names. See Warner Bros.
Entm’t Inc. v. Rana, FA 304696 (Nat. Arb.
Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also
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). Respondent’s <edhardy-edhardy.com> domain name merely repeats
Complainant’s ED HARDY mark two times.
The Panel finds that a disputed domain name that contains Complainant’s
mark creates a confusing similarity between the disputed domain name and
Complainant’s mark. See Treeforms, Inc. v. Cayne
Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18,
2000) (finding that confusion would result when Internet users, intending to
access the complainant’s website, think that an affiliation of some sort exists
between the complainant and the respondent, when in fact, no such relationship
would exist); see also Oki Data Ams.,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks”). Respondent’s <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardytee.com>,
and <edhardy-store.com> domain names contain a generic term
relating to Complainant’s business. The
Panel finds that the terms, when added to Complainant’s ED HARDY mark in the
disputed domain names, create a confusing similarity between Complainant’s mark
and the disputed domain name because the terms have an obvious relationship to
Complainant’s offering of clothing products.
See Kohler
Co. v. Curley, FA 890812 (Nat. Arb.
Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security”
to the complainant’s VANCE mark, which described the complainant’s business,
the respondent “very significantly increased” the likelihood of confusion with
the complainant’s mark). Lastly,
Respondent’s <edhardy-edhardy.com>, <clothing-edhardy.com>,
<edhardy-edhardy.com>, and <edhardy-store.com> domain
names contain a hyphen and all of Respondent’s disputed domain names contain
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of punctuation marks such as
hyphens and the addition of a gTLD are irrelevant in distinguishing a disputed
domain name from a registered mark. See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the disputed domain names. Once a prima facie case has been established by Complainant, the burden
then shifts to Respondent to demonstrate its rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c). The Panel finds that Complainant has
adequately established a prima facie
case in these proceedings. Since
Respondent has failed to respond to the allegations against it, the Panel may
assume that Respondent lacks any rights or legitimate interests in the disputed
domain names. See Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to
show it does have rights or legitimate interests.”); see also Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by any of the disputed domain
names under Policy ¶ 4(c)(ii). The pertinent WHOIS information for the
disputed domain name identifies the registrant as “zhi chen
c/o chen zhi and Cb liu c/o liu wen,” and there is no other evidence in the
record to suggest that Respondent is otherwise commonly known by the disputed domain names. Thus, the Panel concludes that Respondent is
not commonly known by any of 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
Coppertown Drive-Thru Sys., LLC v.
Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s use of the <goedhardy.com>, <clothing-edhardy.com>,
and <edhardy-store.com> domain names are both commercial
and competitive with Complainant.
Respondent’s disputed
domain names resolve to websites offering clothing products in direct
competition with Complainant. In
addition, Complainant provides evidence that Respondent is using the <goedhardy.com>, <clothing-edhardy.com>,
and <edhardy-store.com> domain names to offer counterfeit
versions of Complainant’s products. The Panel finds that
Respondent’s use of the disputed domain names is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to 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
In addition, Respondent has failed to make an active use of the <edhardy-edhardy.com>, <edhardyin.com>, and <edhardytee.com> domain names. There is no evidence on record that Respondent has used or intends to use the disputed domain names in any manner. As a result, the Panel finds that Respondent has not made a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <goedhardy.com>, <clothing-edhardy.com>, and <edhardy-store.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).
Respondent’s use of the <goedhardy.com>, <clothing-edhardy.com>, and <edhardy-store.com> domain names to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s ED HARDY mark and profiting by offering products in direct competition with Complainant is further evidence of bad faith registration and use. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the <goedhardy.com>, <clothing-edhardy.com>, and <edhardy-store.com> domain names constitute bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Also, Complainant alleges that Respondent is using the <goedhardy.com>, <clothing-edhardy.com>,
and <edhardy-store.com> domain names to offer counterfeit
versions of Complainant’s goods. The
Panel finds that Respondent’s activities in selling counterfeit goods is
further evidence of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). 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 Utensilerie
Assoc. S.p.A. v. C & M, D2003-0159
(WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products,
together with the domain name may create the (incorrect) impression that
Respondent is either the exclusive distributor or a subsidiary of Complainant,
or at the very least that Complainant has approved its use of the domain
name.”).
Lastly, Respondent has registered the <edhardy-edhardy.com>, <edhardyin.com>, and <edhardytee.com> domain names but has failed to make an active use of them. The Panel finds that such non-use consitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that ¶ 4(a)(iii) has been satisfied.
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 <goedhardy.com>, <clothing-edhardy.com>, <edhardy-edhardy.com>, <edhardyin.com>, <edhardytee.com>, and <edhardy-store.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 6, 2010
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