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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

John Hardy Limited v. hardyjewelrycom

Case No. D2006-0644

 

1. The Parties

The Complainant is John Hardy Limited, New York, United States of America, represented by Schiff Hardin LLP, United States of America.

The Respondent is hardyjewelrycom, Taipei, Taiwan, Province of China.

 

2. The Domain Name and Registrar

The disputed domain name <hardyjewelry.com> is registered with WebNIC.cc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 24, 2006, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On May 25, 2006, WebNIC.cc transmitted by email to the Center its verification response indicating that the registrant is not the Respondent as mentioned on the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 29, 2006.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 5, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a prominent designer and manufacturer of high-quality jewelry products in a number of countries.

The Complainant states that it is the owner of numerous trademarks and has provided a list of trademarks among which include:

- Australian wording trademark JOHN HARDY n° 102381 filed on December 23, 2005 for goods in classes 14 and 20.

- Community figurative trademark JOHN HARDY n° 00873653 filed on June 29, 1998 for goods in class 14.

- Indonesian figurative trademark JOHN HARDY n° 390105 filed on July 23, 1996 for goods in class 14.

- Malaysian figurative trademark JOHN HARDY n° 451793 filed on January 27, 1999 for services in class 35.

- Suisse wording trademark JOHN HARDY n° 447893 filed on July 17, 1997 for goods in class 14.

- American figurative trademark JOHN HARDY n° 1,864,617 filed on November 29, 1994 for goods in classes 11 and 18.

The disputed domain name <hardyjewelry.com> was registered on November 4, 2005, with WebNIC.cc and is currently being held by the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant considers that the addition of a generic term, “jewelry”, with the suffix “.com” to a distinctive element of its JOHN HARDY trademark is insufficient to avoid a finding of confusing similarity.

Complainant claims that Respondent has no rights or legitimate interest on the disputed domain name as it has been granted no license by or has any other affiliation with Complainant.

Complainant contends that Respondent is using the disputed domain name in bad faith as it attempts to attract, for financial gain, Internet users to the registrant’s website or other on-line location by creating a likelihood of confusion with the JOHN HARDY trademark.

Furthermore, the Complainant considers that Respondent attempts to harm Complainant’s image as it describes Hardy’s Jewelry as being made with “stainless steel”.

B. Respondent

The Respondent defaulted as it did not file a Response to the Complaint.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The Panel did not find any official document provided by the Complainant which indicates that Complainant owns JOHN HARDY trademarks. A mere list of trademarks attached on Annex 7 is not sufficient to prove the Complainant’s right.

Further to the trademark information provided in the Complaint. However, the Panel has carried out its own research which verified that the Complainant has registered at least one JOHN HARDY trademark.

The Panel found that the Complainant owns the following trademark:

- Community figurative trademark JOHN HARDY n° 00873653 filed on June 29, 1998 for goods on class 14.

Consequently, the Panel is satisfied that the Complainant owns trademark rights related to the mark JOHN HARDY.

The first element that the Complainant must establish is that the domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the word “hardy” with the mere addition of the descriptive term “jewelry”.

The most distinctive feature of the Complainant’s registered trademark is the word “Hardy”, and this distinctive part of the trademark is incorporated in its entirety in the disputed domain name. Furthermore, the Media file joined by the Complainant on Annex 4 has demonstrated that the Media is accustomed to use the term Hardy’s Jewelry to designate the Complainant’s products.

It is well established that when a domain name incorporates a registered trademark, with the addition of a descriptive term, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

There have been many UDRP decisions involving domain names where a suffix has been added to a trademark, or a name closely resembling a trademark. These suffixes have included the name of a product associated with the trademark (for example, <guinessbeer.com>, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020), a service associated with the trademark (for example, <christiesauction.com>, Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075), complementary qualities to those associated with the trademark (for example, <viagraconfidential.com>, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870), and many examples of descriptive terms of business organization or modes of distribution (for example, <harrodsdepartmentstores.com> and <harrodsstores.com>, Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456; <armaniboutique.com>, GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424).

The comparison between the disputed domain name and the Complainant’s trademark reveals the following:

- <hardyjewelry.com> is composed of the relevant part hardy of the Complainant’s trademark JOHN HARDY combined with the generic term “jewelry”.

- The domain name includes the “.com” suffix.

Considering the first point, the Panel finds that the domain name clearly relates to the JOHN HARDY trademark, as in the disputed domain name the generic term “jewelry” is just an addition to the distinctive part “hardy” of the Complainant’s trademark JOHN HARDY.

Moreover, such a generic term is clearly related to the Complainant’s activity. Thus, consumers and Internet users will in all probability be confused and misled into thinking that the domain name at issue belongs to the Complainant, due to the inclusion of a known trademark combined with a generic term clearly linked with the Complainant’s activities. The abovementioned approach has been taken in many UDRP decisions such as Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 and Auchan v. Cantucci Commerciak Corp, WIPO Case No. D2005-1195.

The second difference between the trademark JOHN HARDY and the domain name is the inclusion of the “.com” suffix. Such an inclusion is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account in evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172).

As a consequence, the Panel considers that the domain name is confusingly similar to the trademark JOHN HARDY owned by the Complainant. Therefore, the Panel considers that the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a Respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel accepts the Complainant’s contention is of the opinion that there is no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark under any circumstance.

Having regard to the circumstances of this case and the material provided in the Complaint, the Panel finds that Respondent does not show use or preparations for use in connection with a bona fide offering of goods and services. The disputed domain name pointes to a website indicating that Respondent is the company “Hardy Jewelry” but there is no element which could be examined to verify the reel existence of this company (for example, a physical address).

Furthermore, several UDRP decisions have established that, once the Complainant has filed the Complaint and made a prima facie showing of the Responsent's lack of rights or legitimate interests,, the burden is then on the Respondent to prove its right and legitimate interest in the name (see for example, Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949, and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753). For the reasons outlined above, the Panel finds that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this.

For the reasons outlined above, the Panel finds that the Respondent has no rights or legitimate interests in said domain name. Consequently, the Panel considers that the condition set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the Respondent attempts to attract for financial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the Complainant’s trademark. The Panel did not find any evidence showing that the Respondent attempted to attract Internet users to other online location although nothing that this is not obligatory for a find or undo paragraph (iv).

On balance the Panel accepts the Complaiant's argument as plausible. The Respondent appears to offer for sale on its website a range of jewelry items. The Complainant and owner of the JOHN HARDY mark has for many years prior to the registration of the disputed domain name sold jewelry in numerous countries around the world. The Complainant has also nter alia adduced evidence of correspondence with the Respondent which suggests to the Panel that the Respondent was aware of the commercial potential of the Complainant's mark in seeking to market its jewelry internationally. In sum, the Repondent appears to have registered the domain name with the intention of attracting financial gain through increased sales of its jewelry around the world by creating a likelihood of confusion with the Complainant's mark and jewelry products sold by the Complainant.

The Panel is also of the opinion that it is unlikely that the domain name has been chosen only by chance, without having in mind the well known trademark and the trade name of the Complainant. Besides, it is in the Panel’s view highly unlikely to be a coincidence that the Respondent has combined Complainant’s trademark with Complainant’s activity.

Furthermore, it has been established in certain circumstances that when a domain name incorporates a registered mark comprised of a coined or fanciful term (which is the case for JOHN HARDY and the distinctive element “hardy”), no other action, aside from registering the domain name, is required for demonstrating bad faith. This is based upon the premise that “it would be difficult, perhaps impossible, for Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. The Panel finds an analogous situation in the circumstances of this case, considering that Complainant’s name appears to be well-known and that Respondent, at the time of registering the distinctive element of the Complainant’s name as a domain name, would in all probability have known the Complainant and been familiar with the commercial potential of Complainant’s trademark.

Therefore, the Panel finds that the domain name was registered in bad faith.

In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith, it is necessary to prove besides that the domain name is used in bad faith.

The fact that the domain name <Hardyjewelry.com> was registered by the Respondent, and is now being used apparently to sell jewelry, indicates that the Respondent was and is aware of the Complainant's jewelry business, its reputation in that field and its rights in the JOHN HARDY mark. The use of the disputed domain name to sell jewelry indicates that the Respondent is aware of the prospect for confusion with the Complainant's mark and jewelry business.

The website at the disputed domain name does not appear to contain any disclaimers noting a lack of affiliation or endorsement of the website by the Complainant. In the circumstances it is reasonable to infer that the Respondent is using the disputed domain name to free-ride on the Complainant's mark with intent to profiting commercially from increased sales of its jewelry products.

The Panel agrees with the Complainant’s contention in that the Respondent does appear to have attempted to tarnish the Complainant’s reputation. Hardy jewelries are described on the website at the disputed domain name as being made with “stanless steel”. In fact, Complainant’s reputation depends in significant parts on its luxury high-end jewelry wich are made with 18 or 22Kgold and /or sterling silver.

The Respondent’s conduct in this respect also suggests evidence of bad faith use (see for example Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644).

For all the foregoing reasons, the Panel finds that the domain name is used in bad faith.

As a result, the Panel finds that the conditions set out in Paragraph 4(a)(iii) of the Policy have been met by the Complainant.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hardyjewelry.com>, be transferred to the Complainant.

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Nathalie Dreyfus
Sole Panelist

Dated: July 19, 2006