DECISION

Hawk Designs, Inc. v. Louie Baur

Claim Number:  FA0306000162056

PARTIES

Complainant is Hawk Designs, Inc., Huntington Beach, CA (“Complainant”), represented by Janie Dodge. Respondent is Louie Baur, Costa Mesa, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hawk-clothing.com>, registered with Network Solutions, Inc.

PANEL

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 6, 2003; the Forum received a hard copy of the Complaint on June 9, 2003.

On June 12, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <hawk-clothing.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2003 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@hawk-clothing.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <hawk-clothing.com> domain name is confusingly similar to Complainant’s TONY HAWK mark.

2. Respondent does not have any rights or legitimate interests in the <hawk-clothing.com> domain name.

3. Respondent registered and used the <hawk-clothing.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Hawk Designs, Inc., owns many tradmark registrations for the TONY HAWK mark worldwide, including on the Principal Register of the U. S. Patent and Trademark Office (Reg. No. 2,299,696, registered on December 14, 1999 in International Class 25 for various types of apparel). Respondent’s TONY HAWK mark denotes the carrer and products of skateboarder Tony Hawk, and is used, inter alia, to denote the clothing line started by Tony Hawk in 1998. That line of apparel is currently owned by Complainant, and has annual net sales of over $21 million. In connection with its sale of TONY HAWK apparel, Complainant operates an online buisness at the <hawkclothing.com> domain name.

Respondent, Louie Baur, registered the <hawk-clothing.com> domain name on March 14, 2002, and is not licensed or authorized to use Complainant’s TONY HAWK mark for any purpose. Respondent uses the disputed domain name to sell skateboard decks, clothing, and other skateboarding-related paraphernalia.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the TONY HAWK mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office.

Respondent’s <hawk-clothing.com> domain name is confusingly similar to Complainant’s TONY HAWK mark. The disputed domain name contains the HAWK portion of Complainant’s TONY HAWK mark and includes the generic word “clothing.” The dominant feature of the domain name is Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the Complainant’s business).

Accordingly, the Panel finds that the <hawk-clothing.com> domain name is confusingly similar to Complainant’s TONY HAWK mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

As Respondent did not respond to the Complaint, the Panel chooses to view as true the uncontested allegations within the Complaint, and will draw all appropriate inferences supported by Complainant’s exhibits. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the <hawk-clothing.com> domain name to sell products related to the sport of skateboarding. By using a domain name that is not only confusingly similar to Complainant’s TONY HAWK mark, but is also nearly identical to Complainant’s <hawkclothing.com> domain name, Respondent is competing with Complainant by utilizing the goodwill surrounding Complainant’s marks. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and cannot be a legitimate noncommerical or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

There is no evidence before the Panel to support the inference that Respondent, as an individual, business, or other organization, has been “commonly known by” the disputed domain name. On the contrary, Respondent’s WHOIS contact information, the fame of Complainant’s TONY HAWK mark, and the fact that Respondent is not licensed to use Complainant’s mark all support Complainant’s contention that Respondent cannot avail itself of the provisions of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <hawk-clothing.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <hawk-clothing.com> domain name in bad faith. Respondent uses the domain name to create a likelihood of confusion with Complainant’s TONY HAWK mark, and does so for commercial gain. Under these circumstances, Complainant’s uncontested allegations permit the inferrence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Respondent’s activities also run afoul of Policy ¶ (b)(iii), which provides for a finding of registration and use of a domain name in bad faith if Respondent is shown to have registered the domain name with the primary purpose of disrupting the business of a competitor. In the present dispute, Respondent’s registration of a domain name so strikingly similar to Complainant’s online shop, for the purpose of selling goods that compete with Complainant’s goods, is evidence that Respondent intended to disrupt Complainant’s business. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business)

The Panel thus finds that Respondent registered and used the <hawk-clothing.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <hawk-clothing.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                          

Judge Harold Kalina (Ret.), Panelist

Dated:  July 24, 2003

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