Nervous Tattoo, Inc. v. eh
hardy petwear c/o west
Claim Number: FA1002001308681
PARTIES
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 <edhardypetwear.com>, registered with
Godaddy.com,
Inc.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 18, 2010; the
National Arbitration Forum received a hard copy of the Complaint on February 19, 2010.
On February 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <edhardypetwear.com> domain name is
registered with Godaddy.com, Inc. and
that the 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On February 22, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 15, 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@edhardypetwear.com by
e-mail.
Respondent's Response was received
on March
20, 2010. However, in
that the Response was received subsequent to the Response deadline of
March 15, 2010, the Response is considered deficient under ICANN Rule 5.
On March 23, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends among other things, that:
The trademarks are associated with the designs of Don Ed Hardy, a famous tattoo artist who is commonly referred to as the “Godfather of Tattoo.”
Using Hardy’s designs,
Hardy Way, LLC is the sole owner of the trademarks and has granted Complainant the exclusive right and license to design, manufacture, advertise, promote, sell, distribute and license to others the right to design, manufacture, advertise, promote, sell and distribute high quality apparel and various other products bearing the trademarks.
Complainant is also authorized to enforce the trademarks, and Complainant has registered various domain names in connection with the trademarks.
The disputed domain name is confusingly similar to the trademarks, as it incorporates the trademark ED HARDY in its entirety, while adding only a generic word.
Respondent is not authorized by Complainant to use the trademarks.
Respondent registered and uses the domain name to infringe Complainant’s rights in the trademarks and to trade off of Complainant’s goodwill.
Respondent uses the domain name to direct Internet users to its own store, which competes directly with the business of Complainant.
Respondent’s use of the domain name does not constitute a bona fide offering of goods or services.
Respondent is not and has not been commonly known by the domain name.
Respondent has no legitimate interest in the domain name.
Respondent is intentionally using the domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website, or of a product or service offered through the website.
Respondent knew of the trademarks before registering the domain name.
Respondent evidences bad faith in
its failure to cease and desist from wrongful use of the domain name after
being notified by Complainant of the unauthorized use.
B. Respondent
Respondent contends that:
“Respondent’s has none or any interest
in the Domain Names and Respondent’s are willfully transferring or surrendering
or dropping of the Domain Name Ed Hardy Pet Wear to Hardy Way, LLC….”
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course,
Complainant must prove each of the following to obtain from a Panel an order
that a domain name be transferred:
i.
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate
interests in respect of the domain name; and
iii. the domain name has been registered and is being
used in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Policy ¶ 3(a) provides for
the transfer of a domain name registration upon the written instructions of the
parties to a UDRP proceeding without the need for otherwise required findings
and conclusions (see Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum
DECISION
Respondent’s Response does not contest the material allegations of the
Complaint, and, in particular it does not contest Complainant’s request that the
disputed domain name be transferred to Complainant. Thus the parties have
effectively agreed in writing to a transfer of the subject domain name from
Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that the <edhardypetwear.com>
domain name be forthwith TRANSFERRED
from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 6, 2010
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