Chan Luu Inc. v. Mark Roman
Claim Number: FA1209001462035
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Mark Roman (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuboutique.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2012; the National Arbitration Forum received payment on September 10, 2012.
On September 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuboutique.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 September 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@chanluuboutique.com. Also on September 13, 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.
A timely Response was received and determined to be complete on September 26, 2012.
On October 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that:
a) It uses the CHAN LUU mark in connection with jewelry, clothing, and accessories. See Complainant’s Exhibits B-D.
b) It first began using the mark in 1995 and currently sells its products under the CHAN LUU mark throughout the world.
c) It is the holder of trademark registrations with trademark authorities around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029 registered August 3, 2004). See Complainant’s Exhibits E-F.
d) The <chanluuboutique.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.
e) The disputed domain name combines Complainant’s CHAN LUU mark with the generic, descriptive term “boutique” and the generic top-level domain (“gTLD”) “.com.”
f) Respondent is not commonly known by the <chanluuboutique.com> domain name.
g) Complainant did not license Respondent to use Complainant’s CHAN LUU mark and Respondent does not have a legal relationship with Complainant that would entitle Respondent to use Complainant’s mark.
h) The WHOIS information lists “Mark Roman” as the registrant of the <chanluuboutique.com> domain name.
i) Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
j) Respondent uses the <chanluuboutique.com> domain name to offer jewelry products that directly compete with Complainant’s jewelry products. Compare Complainant’s Exhibit G, with Complainant’s Exhibit H.
k) Respondent’s website visually resembles Complainant’s website and refers to a comparison of Complainant’s Exhibit G, with Complainant’s Exhibit H.
l) Respondent registered and uses the <chanluuboutique.com> domain name to attempt to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name.
m) Respondent uses the confusingly similar disputed domain name to offer directly competing products.
n) Respondent registered the <chanluuboutique.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark evidenced by the visual similarities between Complainant’s website and Respondent’s website.
o) Respondent also had constructive knowledge of Complainant’s rights in the mark due to Complainant’s trademark registrations with the USPTO.
B. Respondent
Respondent claims that:
a) Respondent is not the owner of the <chanluuboutique.com> domain name.
b) The entity that registered the <chanluuboutique.com> domain name improperly used Respondent’s personal information to register the domain name.
c) Respondent relinquishes all rights and ownership in the disputed domain name to Complainant.
Complainant uses the CHAN LUU mark in connection with jewelry, clothing, and accessories and is the holder of inter alia the following trademark registration with the USPTO: CHAN LUU, Reg. No. 2,869,029 registered August 3, 2004, used in connection with jewelry.
The disputed domain name was registered on July 15, 2012 and the WHOIS record lists Respondent as the registrant. The website linked to the disputed domain name offers goods for sale that are in direct competition with the goods offered by Complainant.
On September 26, 2012, Respondent claimed that it has been the victim of identity theft and that it agrees to transfer the domain name to Complainant.
Respondent contends that it has been the victim of identity theft. Respondent claims that it is not the owner of the disputed domain name and that the entity that holds the disputed domain name improperly used Respondent’s personal information. Some Panels have chosen to redact the personal information of a victim of identity theft from the decision to prevent the further victimization of the respondent. In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” However, in the present case, no party expressed the request to warrant the redaction of Respondent’s personal information from the Panel’s decision. Furthermore, the Panel is of the opinion that the mere mentioning of Respondent’s name and State would not necessarily victimize a respondent that has been victim of identity theft.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <chanluuboutique.com> domain name to Complainant. Respondent states that it is not the real owner of the disputed domain name and that the registrant improperly used Respondent’s personal information in connection with the domain name. As a result, in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel is of the opinion that a traditional UDRP analysis in not required and that it may order an immediate transfer of the <chanluuboutique.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
At the same time, the Panel takes into account that this “consent-to-transfer” approach may be a way for cybersquatters to avoid adverse findings against them. However, in the instant case, the Panel has no elements indicating that Respondent has any intention to avoid adverse findings against it. Respondent may well be the subject of identity theft. Therefore, the Panel considers it expedient and judicial to forego the traditional UDRP analysis and order the transfer of the disputed domain name.
In view of the above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuboutique.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: October 16, 2012
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