Nervous Tattoo, Inc. v. Boom International Trade Comrany Limited
Claim Number: FA1002001306774
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 <edhardyguide.com>, registered with Xin Net Technology Corporation.
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 electronically on February 5, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2010. The Complaint was submitted in both Chinese and English.
On February 7, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <edhardyguide.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. 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 February 17, 2010, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 9, 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@edhardyguide.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
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 <edhardyguide.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardyguide.com> domain name.
3. Respondent registered and used the <edhardyguide.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent, Boom International Trade Comrany Limited, registered the <edhardyguide.com> domain name on November 18, 2008. Respondent’s disputed domain name resolves to a website offering goods for sale that either are or appear to be genuine ED HARDY goods.
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.
Complainant argues that Respondent’s <edhardyguide.com> domain name is confusingly similar to Complainant’s ED HARDY mark. Respondent’s disputed domain name incorporates Complainant’s ED HARDY mark in full, omits the spaces between the words, adds the generic term “guide,” and appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding the generic term “guide” to Complainant’s mark is insufficient to distinguish the disputed domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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 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). The deletion of spaces and the addition of a gTLD are necessary attributes of a domain name; therefore, the Panel finds those minor changes do not prevent confusing similarity between the disputed domain name and Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, the Panel finds that the disputed domain name <edhardyguide.com> is confusingly similar to Complainant’s ED HARDY mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to the requirements of Policy ¶ 4(c), Complainant must first make a prima facie case against Respondent, which then shifts the burden to Respondent to identify and defend any rights and legitimate interests in the disputed domain name. 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)). The Panel finds Complainant has adequately presented a prima facie case in these proceedings and that Respondent has failed to respond to the allegations against it. As a result, the Panel may assume the truth of Complainant’s allegations and conclude that Respondent lacks rights and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel elects, however, to consider the evidence presented in order to determine whether Respondent possesses any rights or legitimate interests in the disputed domain name.
Policy ¶ 4(c)(ii) requires a showing that Respondent is commonly known by the disputed domain name in order to demonstrate rights and legitimate interests in the disputed domain name. Complainant argues that Respondent is not authorized to use the ED HARDY mark. As further evidence against Respondent’s rights and legitimate interests in the disputed domain name, Complainant offers the evidence that the WHOIS information for the disputed domain name lists the registrant as “Boom International Trade Comrany Limited” and does not reflect that Respondent is commonly known by the disputed domain name. The Panel finds that where there is no evidence that Respondent is commonly known by or authorized to use the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name. 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 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).
Complainant also contests that Respondent has established
rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent’s disputed domain name resolves to a site selling goods that
either are or appear to be genuine ED HARDY goods. The Panel finds that using Complainant’s mark
in the disputed domain name in order to redirect customers to Respondent’s
website that sells Complainant’s goods without authorization 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).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain name redirects Complainant’s customers to Respondent’s website selling goods that are either similar or identical to Complainant’s goods or are counterfeit versions. As such, Respondent’s website offers competing goods without authorization and thereby disrupts Complainant’s business. Complainant’s business is further disrupted by Respondent’s actions because Internet users may be unaware that Respondent’s website is not affiliated with Complainant. The Panel finds that such disruption of Complainant’s business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); 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’s use of Complainant’s ED HARDY mark in the
disputed domain name clearly intends to attract Complainant’s customers. Once Internet users arrive at Respondent’s
website, they may be confused as to the affiliation of Respondent’s website,
believing they are at the genuine ED HARDY website. If the Internet users subsequently buy any
products from Respondent’s website, Respondent profits from its fraudulent
efforts to attract Complainant’s customers.
The Panel finds Respondent’s efforts to attract Complainant’s customers
for Respondent’s own commercial gain constitute bad faith registration and use
according to Policy ¶ 4(b)(iv). See 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); see also Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant).
The Panel finds 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 <edhardyguide.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 29, 2010
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