Nervous Tattoo, Inc. v. ms zhan c/o zhangmusi
Claim Number: FA0911001296050
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 <ed-hardyoutlet.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration
Forum electronically on November 24, 2009;
the National Arbitration Forum received a hard copy of the Complaint on November 25, 2009. The Complaint was submitted in both Chinese and
English.
On November 25, 2009, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <ed-hardyoutlet.com> domain name 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 December 4, 2009, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 24, 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@ed-hardyoutlet.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 31, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ed-hardyoutlet.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <ed-hardyoutlet.com> domain name.
3. Respondent registered and used the <ed-hardyoutlet.com> domain name 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 for use in connection with
luxury and cutting edge fashions.
Complainant is licensed to use and enforce several of the ED HARDY mark
registrations that Complainant’s licensor holds with the United States Patent
and Trademark Office (“USPTO”) (e.g.,
Reg. No. 3,135,603 issued August 29, 2006) and the State Intellectual Property
Office of the People’s Republic of
Respondent, ms zhan c/o zhangmusi, registered the <ed-hardyoutlet.com> domain name on June 26, 2009. The disputed domain name resolves to a website that sells products that directly compete with Complainant and 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 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 submission of registrations that Complainant’s licensor holds with
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,135,603 issued August 29, 2006) and the State
Intellectual Property Office of the People’s Republic of
The <ed-hardyoutlet.com> domain name contains Complainant’s entire ED HARDY mark, replacing the space within the mark with a hyphen, adds the generic term “outlet,” and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds, as previous panels have, that these alterations to Complainant’s mark do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that <ed-hardyoutlet.com> domain name is confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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).”). Although Respondent has not alleged that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
Respondent is listed in the WHOIS registrant information for
the <ed-hardyoutlet.com>
domain name as “ms zhan c/o zhangmusi,”
which does not indicate that Respondent is commonly known by the disputed domain name.
Respondent has not offered any evidence to suggest that Policy ¶
4(c)(ii) applies in this case. Moreover,
Complainant asserts that Respondent is not authorized to use the ED HARDY
mark. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); see also M. Shanken Commc’ns
v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent
was not commonly known by the <cigaraficionada.com> domain name under
Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the
record).
The disputed domain
name resolves to a website that offers competing products and offers
counterfeit versions of Complainant’s products.
The Panel finds that Respondent’s use of the <ed-hardyoutlet.com> domain name 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 Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”); see also Hewlett-Packard Co. v. Inversiones HP Milenium
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since registering the <ed-hardyoutlet.com>
domain name on June 26, 2009, the disputed domain name has resolved to the
aforementioned website. The Panel finds
that Respondent’s use of the disputed domain name in this manner disrupts
Complainant’s business. The Panel
further finds that such a disruption constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See Classic
Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb.
Forum Aug. 1, 2006) (finding that the respondent registered and used the
<classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶
4(b)(iii) by redirecting Internet users to the respondent’s competing website);
see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered
each of the disputed domain names in order to gain customers and to disrupt
Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
Moreover, the Panel finds that
Respondent’s use of the <ed-hardyoutlet.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name. The Panel
further finds that Respondent is commercially gaining from this likelihood of
confusion by selling competing and counterfeit products, which constitutes 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
Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith
registration and use pursuant to Policy ¶ 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 <ed-hardyoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 12, 2010
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