Nervous Tattoo, Inc. v. Julie Headon
Claim Number: FA1006001332455
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 <edhardygift.com>, registered with eNom, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2010.
On June 29, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <edhardygift.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@edhardygift.com by e-mail. Also on July 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edhardygift.com> domain name is confusingly similar to Complainant’s ED HARDY mark.
2. Respondent does not have any rights or legitimate interests in the <edhardygift.com> domain name.
3. Respondent registered and used the <edhardygift.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
Respondent, Julie Headon, registered the <edhardygift.com> domain name on May 8, 2009. Respondent’s disputed domain name resolves to a website that advertises and sells counterfeit or otherwise unauthorized goods of Complainant.
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 its ED HARDY mark under Policy ¶ 4(a)(i) through proof of its trademark registrations with the USPTO (e.g., Reg. No. 3,135,603 issued August 29, 2006). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the <edhardygift.com> domain name is confusingly similar to Complainant’s ED HARDY mark. Complainant argues that the disputed domain name contains its entire mark, absent the space between the terms of the mark, while adding the generic term “gift” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that such changes are not sufficient to render the domain name distinct from Complainant’s mark. The Panel agrees and finds that Respondent’s <edhardygift.com> domain name is confusingly similar to Complainant’s ED HARDY mark under Policy ¶ 4(a)(i). 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <edhardygift.com> domain name under Policy ¶ 4(a)(ii). Complainant must provide the Panel with a prima facie case in support of such allegations. Upon Complainant fulfilling its burden of proof, the burden will properly shift to Respondent to show that it does have rights and legitimate interests in the 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 that Complainant has produced a prima facie case to support its allegations that Respondent does not have rights and legitimate interests in the <edhardygift.com> domain name under Policy ¶ 4(c). Respondent has failed to submit a Response to Complainant’s allegations and has therefore failed to meet its burden of proof in these proceedings which allows the Panel to infer the Respondent does not possess rights and legitimate interests in the domain name. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). Nevertheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent possesses rights and legitimate interests in the <edhardygift.com> domain name under Policy ¶ 4(c).
Complainant alleges that it has not authorized Respondent to use its ED HARDY mark or to register a domain name incorporating such mark. Further, Complainant argues that Respondent, identified as “Julie Headon” in the WHOIS information for the <edhardygift.com> domain name, is not commonly known by the domain name or any variation of Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because the WHOIS information identifies the domain name registrant as “Julie Headon” and Respondent has failed to invoke any circumstances in which it is commonly known by the disputed domain name by failing to respond to these proceedings. See 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); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).
Complainant further alleges that Respondent lacks rights and legitimate interests in the <edhardygift.com> domain name based upon Respondent’s infringing use of the domain name. Complainant argues that Respondent is using the <edhardygift.com> domain name to advertise, display, and sell ED HARDY clothing and products, or counterfeits thereof, without authorization from Complainant, as well as other competing clothing products. Complainant contends that Respondent’s infringing use of its ED HARDY mark, both within the domain name and on Respondent’s website to sell unauthorized or counterfeit goods of Complainant, does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent does not have rights or legitimate interests in the <edhardygift.com> domain name because its use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent’s <edhardygift.com>
domain name resolves to a website that advertises and sells Complainant’s ED
HARDY clothing and accessories, or counterfeits thereof, without authorization
from Complainant. Complainant also
alleges that Respondent advertises and sells clothing and accessories of
Complainant’s competitors on its website.
The Panel infers that Respondent’s diversion of Internet users to its
website selling the unauthorized or counterfeit products of Complainant’s goods
has, and will, result in a disruption of Complainant’s business. Therefore, the Panel finds that Respondent
registered and is using the <edhardygift.com> domain name in bad
faith under Policy ¶ 4(b)(iii). See Fossil,
Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the
<fossilwatch.com> domain name from the respondent, a watch dealer not
otherwise authorized to sell the complainant’s goods, to the complainant); 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.”).
Complainant also argues that
Respondent registered and is using the <edhardygift.com>
domain name to intentionally attract Internet users to its resolving website
for commercial gain. Complainant has
alleged that Respondent is selling counterfeit and unauthorized products of
Complainant as well as the products of Complainant’s competitors. The Panel finds that Respondent’s
registration and use of the disputed domain name was made in bad faith pursuant
to Policy ¶ 4(b)(iv) where Respondent is using the confusingly similar <edhardygift.com>
domain name to sell Complainant’s products without authorization as well as the
products of Complainant’s competitors. 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 AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to
sell Complainant’s goods and services without Complainant's authority . . . is
bad faith use of a confusingly similar domain name.”).
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 <edhardygift.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 9, 2010
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