Hardy Way, LLC v. Caky Guo
Claim Number: FA1512001650975
Complainant is Hardy Way, LLC (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Caky Guo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <donedhardy.us> and <donedhardyshop.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2015; the Forum received payment on December 4, 2015.
On December 4, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <donedhardy.us> and <donedhardyshop.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2015 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@donedhardy.us, and postmaster@donedhardyshop.us. Also on December 7, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the DON ED HARDY mark to identify with its alternative clothing line. Complainant has registered the DON ED HARDY mark with many international governmental intellectual property entities, including with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,124,710, registered Aug. 1, 2006), which demonstrates its rights in the mark. See Compl., at Attached Ex. E. The <donedhardy.us> and <donedhardyshop.us> domain names are confusingly similar to the DON ED HARDY mark as the domain names incorporate the mark entirely, while eliminating spacing between words of the mark, and merely adding the generic term “shop,” along with the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <donedhardy.us> and <donedhardyshop.us> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to register any variant of DON ED HARDY in a domain name per Policy ¶ 4(c)(iii). Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain names, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain names, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and (iv), respectively. Instead, the disputed domain names resolve to websites which purport to be Complainant for the purpose of advertising and selling “Ed Hardy official merchandise.” See Compl., at Attached Exs. H, I (resolving websites).
Respondent registered or has used the disputed domain name in bad faith.
Respondent has used the disputed domain to intentionally disrupt Complainant’s business by offering a website which purports to offer official Ed Hardy merchandise through <donedhardy.us> and <donedhardyshop.us>. Id. Additionally, Respondent’s promotion of such merchandise through the <donedhardy.us> and <donedhardyshop.us> domain names evince Policy ¶ 4(b)(iv) bad faith because Respondent benefits from the goodwill associated with the DON ED HARDY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <donedhardy.us> and <donedhardyshop.us> domain names were registered on September 18, 2009 and September 8, 2009, respectively.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark, that the Respondent lacks any rights or legitimate interests in or to the disputed domain names, and that the Respondent engaged in bad faith use and registration of the disputed domain names.
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."
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark. Complainant uses the DON ED HARDY mark to identify its alternative clothing line. Complainant’s demonstrated registrations adequately establishes its interests in and to the trademark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <donedhardy.us> and <donedhardyshop.us> domain names are confusingly similar to the DON ED HARDY mark as the domain names incorporate the mark entirely, while eliminating spacing between words of the mark, and merely adding the generic term “shop,” along with the “.us” ccTLD. Such alterations are insufficient in distinguishing a domain from a mark for the purposes of Policy ¶ 4(a)(i).
Therefore, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s registered trademark.
Respondent also lacks any rights or legitimate interests in or to the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to register any variant of DON ED HARDY in a domain name per Policy ¶ 4(c)(iii). The available WHOIS information does not indicate the Respondent is commonly known by the disputed domain names. Therefore, the Panel concludes that the Respondent is not commonly known by the disputed domain names.
Respondent is apparently not making a bona fide offering of goods or services via the disputed domain names, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead, the disputed domain names seem to resolve to a website which intends to offer for sale Complainant’s goods. See Compl., at Attached Exs. H, I (stating on “About Ed Hardy” page that “Ed Hardy official merchandise” is sold). As there is no evidence to the contrary, the Panel concludes that the Respondent has been passing itself off as Complainant for commercial gain.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain names.
Respondent has used and registered the disputed domain names in bad faith. Complainant contends that the Respondent has used the disputed domain to intentionally disrupt Complainant’s business by offering a website which purports to offer official Ed Hardy merchandise through <donedhardy.us> and <donedhardyshop.us>. Complainant’s Attached Exhibits H and I seem to show Respondent’s utilization of the disputed domain names in an unauthorized effort to sell Complainant’s merchandise, or merchandise which directly competes with Complainant. Such use is indicative of bad faith use and registration.
Therefore, this Panel finds that Respondent has registered and used the disputed domain names to disrupt Complainant’s business as per Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s promotion of such merchandise through the <donedhardy.us> and <donedhardyshop.us> domain names evince Policy ¶ 4(b)(iv) bad faith because Respondent benefits from the goodwill associated with the DON ED HARDY mark. Such intentional trading off of the goodwill of Complainant indicates that the Respondent knew or should have known of Complainant’s interests in and to the registered trademark.
Therefore, the Panel find that Respondent has attracted Internet users for commercial gain per Policy ¶ 4(b)(iv), and did so with actual knowledge. As such, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <donedhardy.us> and <donedhardyshop.us> domain names TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 2, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page