Chan Luu, Inc. v. arga nemo
Claim Number: FA1204001441470
Complainant is Chan Luu, Inc. (“Complainant”), represented by Phyllis C. Simon of Christie, Parker & Hale, LLP, California, USA. Respondent is arga nemo (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluubraceletssale.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 30, 2012.
On April 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluubraceletssale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 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@chanluubraceletssale.com. Also on April 30, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 (the "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 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
Complainant made the following contentions.
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 2,869,029 registered August 3, 2004).
2. Complainant’s business began in 1983 as a women’s clothing and accessories store and grew into the industry of jewelry design. It has operated as an online retail store since 2006.
3. Respondent registered the <chanluubraceletssale.com> domain name on March 7, 2012. See Exhibit A. the disputed domain name resolves to a website that offers jewelry, clothing, and accessories that are “substantially similar or identical” to the products sold by Complainant. See Exhibit N.
4. The resolving websites are laid out in a style very similar to Complainant’s website and Respondent’s website competes with Complainant’s business.
5. The disputed domain name is confusingly similar to Complainant’s CHAN LUU mark.
6. Respondent is not commonly known by the disputed domain name and it does not have permission to use the domain name in any way.
7. Respondent has no rights or legitimate interests in the disputed domain name.
8. The disputed domain name was registered and used in bad faith.
9. Respondent makes a commercial use of the disputed domain name and profits from the reputation and goodwill connected with Complainant’s mark.
10. Respondent had actual and constructive knowledge of Complainant’s rights in the CHAN LUU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that began business in 1983 as a women’s clothing and accessories store and developed into a successful business in jewelry design and related fields. It has operated as an online retail store since 2006.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for CHAN LUU (e.g., Reg. No 2,869,029 registered August 3, 2004).
3. On March 7, 2012, Respondent registered the <chanluubraceletssale.com> domain name which resolves to a website that offers items of jewelry, clothing, and accessories that are “substantially similar or identical” to the products sold by Complainant and displayed in a style very similar to Complainant’s website, so that Respondent’s website competes with Complainant’s business.
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.
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 first question that arises is whether Complainant has rights to a trademark or service mark. Complainant claims to have trademark rights in its CHAN LUU mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. Reg. No 2,869,029 registered August 3, 2004). The Panel determines that, due to Complainant’s trademark registrations, Complainant owns rights in its CHAN LUU mark pursuant to Policy ¶ 4(a) (i). See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a) (i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the CHAN LUU mark.
Complainant alleges that the <chanluubraceletssale.com> domain name is identical or confusingly similar to the CHAN LUU mark and asserts that the domain name features the entire mark, with the addition of the generic term “bracelets” and “sale.” The Panel also notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com” and removes the spaces between the words of the mark. The Panel finds that the term “bracelet” is descriptive in relation to Complainant’s business. The Panel concludes that, removing spaces between words of a mark and adding a descriptive and generic term, as well as the gTLD “.com,” to a mark render the <chanluubraceletssale.com> domain name confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a) (i). See Goldfish Card Servs. Ltd. v. Connolly, FA 1000020 (Nat. Arb. Forum July 11, 2007) (finding the <goldfishcreditcard.com> domain name confusingly similar to the complainant’s GOLDFISH mark because of the addition of the terms “credit” and “card,” which had an obvious connection to the complainant’s mark); see also Victoria’s Secret Stores Brand Mgmt. v. Open Water Enters. Ltd. v. FA 1264419 (Nat. Arb. Forum June 29, 2009) (concluding that eliminating spaces between words do not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHAN LUU trademark and to use it in its domain name, creating the likelihood that internet users would assume that it was an official domain name of Complainant referring to the sale of bracelets by Complainant and that , if used, the domain name would lead to an official website of Complainant dealing with that subject;
(b) Respondent has then used the domain name to resolve to a website that offers jewelry, clothing and accessories that are “substantially similar or identical” to the products sold by Complainant;
(c) Respondent has clearly engaged in these activities without the consent or authority of Complainant;
(d) Complainant also alleges that Respondent is not commonly known by the <chanluubraceletssale.com> domain name, does not have authority to use the CHAN LUU mark and does not have a legal relationship with Complainant that would allow Respondent to use the mark. Complainant asserts that Respondent’s name is “Arga Nemo,” which the Panel notes is the name identified in the WHOIS information as the domain name registrant. See Exhibit A. The Panel concludes that Respondent is not commonly known as <chanluubraceletssale.com> based on the WHOIS information for the disputed domain name, for the purposes of Policy ¶ 4(c) (ii). See Hit Factory Entm’t v. Dixon, FA 1060842 (Nat. Arb. Forum Oct. 1, 2007) (holding that the respondent is not commonly known by the disputed domain name because the WHOIS information did not indicate that the respondent was commonly known by the domain name and the respondent had not been authorized to use the complainant’s mark for any purpose); see also Solstice Mktg. Corp. v. Salkovitz, FA 1040087 (Nat. Arb. Forum Aug. 31, 2007) (stating that because the respondent did not have authorization to use the complainant’s mark, the respondent lacked rights and legitimate interests in the domain names at issue).
(e) Complainant also argues that Respondent uses the disputed domain name to sell jewelry, clothing, and accessories that are “substantially similar or identical” to the items Complainant sells. Complainant submits evidence that the website is laid out in a way so as to imitate Complainant’s website, such as using the same colors and graphics that Complainant uses on its website. See Exhibit K and Exhibits N – P. The Panel accepts that evidence .The Panel finds that using a domain name to offer goods that are identical or similar to those sold by Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c) (iii) and the Panel so finds on the facts in this proceeding. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and, thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Diners Club Int’l Ltd. v. Car In Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (stating that use of a domain name to market goods or services that directly compete with those that the third party offers is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that Complainant registered and has used the disputed domain name in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent profits from sale of the goods it offers at its website and that Respondent registered the confusingly similar domain name for the purpose of misdirecting users to its own site. The panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), held that the respondent’s use of the domain name to host a website offering similar services to those offered by the complainant is likely to confuse Internet users into believing the complainant sponsored the services offered at the resolving website. In Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), the panel concluded that the respondent violated Policy ¶ 4(b)(iv) when it displayed the complainant’s mark on its corresponding website and offered identical services as those complainant offered. The Panel finds that Respondent’s use of the confusingly similar <chanluubraceletssale.com> domain name to host a website that attracts consumers for the purposes of making a financial profit demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant alleges that Respondent had actual and constructive notice of Complainant’s rights in the CHAN LUU mark. Complainant argues that its registration of the mark with the USPTO gives Respondent constructive knowledge and, further, that Respondent’s use of the domain name to host a website similar in style and layout to Complainant’s website demonstrates that Respondent had actual knowledge of Complainant’s rights. The panel in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), held that, where the link between the complainant’s mark and the content on the respondent’s web page was obvious, the respondent must have had knowledge of the complainant’s mark at the time it registered the domain name. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the <chanluubraceletssale.com> domain name in bad faith pursuant to Policy ¶ 4(a) (iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the CHAN LUU mark and in view of the conduct described above that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluubraceletssale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 26, 2012
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