national arbitration forum

 

DECISION

 

Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC v. liuhongjunliuhongjun c/o liuhongjun

Claim Number: FA0912001300551

 

PARTIES

Complainant is Nervous Tattoo, Inc. and Audigier Brand Management Group, LLC (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA.  Respondent is liuhongjunliuhongjun c/o liuhongjun (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <christianaudigierus.com> and <edhardyshop123.com>, registered with Xin Net Technology Corporation.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 28, 2009.

 

On December 28, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <christianaudigierus.com> and <edhardyshop123.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names.  Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2010 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@christianaudigierus.com and postmaster@edhardyshop123.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <christianaudigierus.com> domain name is confusingly similar to Complainant’s CHRISTIAN AUDIGIER mark.  Respondent’s <edhardyshop123.com> domain name is confusingly similar to Complainant’s ED HARDY mark

 

2.      Respondent does not have any rights or legitimate interests in the <christianaudigierus.com> and <edhardyshop123.com> domain names.

 

3.      Respondent registered and used the <christianaudigierus.com> and <edhardyshop123.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Audigier Brand Management Group, LLC and Nervous Tattoo, Inc., referred to collectively as Complainant, are affiliated companies manufacturing and selling clothing and accessories around the world.  Complainant holds several trademark registrations of the marks CHRISTIAN AUDIGIER (e.g., Reg. No. 3,348,997 issued Dec. 4, 2007) and ED HARDY (e.g., Reg. No. 3,135,603 issued Aug. 29, 2006) with the United States Patent and Trademark Office (“USPTO”).

 

Respondent, liuhongjunliuhongjun c/o liuhongjun, registered the <christianaudigierus.com> and <edhardyshop123.com> domain names on July 16, 2009 and July 17, 2009, respectively.  The disputed domain names resolve to commercial websites offering products that compete with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has provided evidence of the registration of its marks with the USPTO.  The Panel finds Complainant established rights in the CHRISTIAN AUDIGIER (e.g., Reg. No. 3,348,997 issued Dec. 4, 2007) and ED HARDY (e.g., Reg. No. 3,135,603 issued Aug. 29, 2006) marks under Policy ¶ 4(a)(i) through its registrations of these marks with the USPTO.   See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant contends that the <christianaudigierus.com> domain name is confusingly similar to its CHRISTIAN AUDIGIER mark.  The disputed domain name contains the mark in its entirety, omitting the space between the words of the mark, adding the geographic identifier “us,” and adding the generic top-level domain “.com.”  The Panel finds none of these alterations prevent a finding of confusing similarity under Policy ¶ 4(a)(i).  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)); see also 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.”) see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).

 

Complainant contends that the <edhardyshop123.com> domain name is confusingly similar to its ED HARDY mark.  This disputed domain name contains Complainant’s ED HARDY mark with the space omitted, the generic word “shop” added, the numerals “123” added,  and the gTLD “.com” added.  As Complainant’s mark remains the dominant portion of the disputed domain name, the Panel finds Respondent’s <edhardyshop123.com> domain name is confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc., supra; see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant claims Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Complainant has the initial burden of showing that Respondent does not have rights or legitimate interests in the disputed domain names.  Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).  The Panel finds Complainant has met its burden and in consideration of Respondent’s failure to submit a Response to these proceedings, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant asserts Respondent has no authorization from Complainant to use either of its CHRISTIAN AUDIGIER or ED HARDY marks. The WHOIS registration information fails to indicate any connection to the disputed domain names.  The Panel finds no evidence in the record suggesting that Respondent is commonly known by the either of the disputed domain names 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.”).

 

Respondent is using the disputed domain names to resolve to websites offering goods that compete with Complainant’s fashion products.  The Panel finds Respondent is using Complainant’s marks to compete with Complainant, which 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 Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that a respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by a complainant and thus was not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain names resolve to websites marketing fashion products that directly compete with Complainant.  The Panel finds Respondent is disrupting Complainant’s business by its use of the competing and confusingly similar disputed domain names.  The Panel finds Respondent has engaged in 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).”).

 

Respondent is using the confusingly similar disputed domain names to offer competitive goods.  Likely, Internet users may become confused as to Complainant’s affiliation with the disputed domain names and resulting websites.  Presumably Respondent is attempting to profit from this confusion through its sale of the competing goods.  The Panel finds Respondent’s attempt to profit from this confusion is evidence of 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 Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <christianaudigierus.com> and <edhardyshop123.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  February 12, 2010

 

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