Nervous Tattoo, Inc. v. dehua liu d/b/a netease, ltd.
Claim Number: FA0911001294698
Complainant is Nervous
Tattoo, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <edhardyshop.us>, registered with Godaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 13, 2009; the Forum received a hard copy of the Complaint on October 19, 2009.
On November 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <edhardyshop.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 7, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edhardyshop.us> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardyshop.us> domain name.
3. Respondent registered and used the <edhardyshop.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nervous Tattoo, Inc., is licensed to act on
behalf of
Respondent registered the <edhardyshop.us> domain name on February 22, 2009. The disputed domain name resolves to a website offering products which compete with Complainant’s clothing products, as well as offering counterfeit versions of Complainant’s products.
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the ED HARDY mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,135,603 issued August 29, 2006) and with the CPTO(e.g., Reg. G907827 issued December 8, 2005). 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 UDRP ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends Respondent’s <edhardyshop.us> domain name is confusingly similar to Complainant’s ED HARDY mark. The disputed domain name contains Complainant’s ED HARDY mark, adds the generic term “shop,” and adds the country code top-level domain (“ccTLD”) “.us.” Previous panels have found the additions of a generic term and a ccTLD to a complainant’s mark fail to adequately distinguish a disputed domain name from a complainant’s mark. 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 Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Therefore, the Panel concludes Respondent’s <edhardyshop.us> domain name is confusingly similar to Complainant’s ED HARDY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <edhardyshop.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <edhardyshop.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <edhardyshop.us> domain name. Complainant asserts that Respondent is not authorized to use the <edhardyshop.us> domain name. The WHOIS information identifies Respondent as “dehua liu d/b/a netease, ltd.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <edhardyshop.us> domain name pursuant to Policy ¶ 4(c)(iii). 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 UDRP ¶ 4(c)(ii) does not apply); 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).
Respondent uses the <edhardyshop.us> domain name to resolve to a website offering
products which compete with Complainant’s clothing products, as well as
offering counterfeit versions of Complainant’s products. The Panel finds the use of a confusingly
similar disputed domain name for this purpose is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iv). See Hewlett-Packard Co. v. Inversiones
HP Milenium
The Panel finds Complainant has established Policy ¶ 4(a)(ii).
Respondent’s <edhardyshop.us> domain name resolves to a website containing
counterfeit versions of Complainant’s clothing products and products which
compete with Complainant. Internet users
interested in Complainant’s clothing and clothing accessories may instead
purchase counterfeit or competing clothing products because of Respondent’s
confusingly similar disputed domain name.
The Panel finds Respondent’s use of the <edhardyshop.us>
domain name disrupts Complainant’s clothing and accessories business, which
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See
Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21,
2006) (finding that the respondent registered and used the disputed domain
names in bad faith pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain
names to operate websites that compete with the complainant’s business); see
also Spark Networks PLC v. Houlihan, FA 653476
(Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of
a domain name substantially similar to the complainant’s AMERICAN SINGLES mark
in order to operate a competing online dating website supported a finding that
respondent registered and used the domain name to disrupt the complainant’s
business under UDRP ¶ 4(b)(iii)).
The Panel infers Respondent profits from the sale of counterfeit and competing clothing and clothing accessories on the websites resolving from the <edhardyshop.us> domain name. Internet users, searching for Complainant’s fashion products, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain names and resolving websites. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of these disputed domain names constitutes bad faith registration and use pursuant to 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 UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
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 <edhardyshop.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 16, 2009
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