Chan Luu Inc. v. wuhanmaoyi / huang wu han
Claim Number: FA1209001463591
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is wuhanmaoyi / huang wu han (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fakechanluusale.com> and <salechanluuuwrapbracelet.com>, registered with Guangdong Jinwanbang Technology Investment Co. Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2012; the National Arbitration Forum received payment on September 20, 2012.
After numerous requests, the Registrar, Guangdong Jinwanbang Technology Investment Co. Ltd., has not confirmed to the National Arbitration Forum that the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names are registered with Guangdong Jinwanbang Technology Investment Co. Ltd. or that Respondent is the current registrant of the names. Guangdong Jinwanbang Technology Investment Co. Ltd.’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On October 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@fakechanluusale.com, postmaster@salechanluuuwrapbracelet.com. Also on October 3, 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 November 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names are confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names.
3. Respondent registered and used the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns trademark registrations for the CHAN LUU mark, including registration with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349 registered August 21, 2009).
Complainant has used the CHAN LUU mark in connection with jewelry, clothing, and accessories for over seventeen years.
Respondent registered the <fakechanluusale.com> domain name on August 11, 2012 and the <salechanluuuwrapbracelet.com> domain name on August 23, 2012, and uses them to resolve to websites offering goods that compete with those offered under Complainant’s mark.
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.”).
Complainant’s registration of the CHAN LUU mark with the Chinese trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names each combine Complainant’s entire mark with the generic terms “fake,” “sale,” “wrap,” or “bracelet.” The <salechanluuuwrapbracelet.com> domain name also contains an additional letter “u.” These additions do not distinguish the disputed domain names from Complainant’s mark, which constitutes the dominant portion of the names. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).
The Panel also notes that each disputed domain name removes the space between terms in Complainant’s mark while affixing the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not distinguish the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i)). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names are confusingly similar to Complainant’s CHAN LUU mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant alleges that Respondent is not commonly known by the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names, and states that it has not given Respondent permission to use its CHAN LUU mark. The WHOIS information identifies the domain name registrant as “wuhanmaoyi / huang wu han,” which the Panel finds bears no resemblance to either disputed domain name. Thus, the Panel finds that Respondent is not commonly known by either disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent’s use of the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names to offer competing goods under Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Past panels have found that a respondent’s use of a confusingly similar domain name to divert Internet users to its own competing commercial website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Accordingly, the Panel finds that Respondent’s use of the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence of other domain names registered by Respondent containing other famous marks. Complainant argues that these registrations support a finding of bad faith in the instant case, because they illustrate a pattern of bad faith registration. The Panel notes, however, that the other domain names provided by Complainant have not been the subject of UDRP proceedings, and thus have not been found to have been registered in bad faith under Policy ¶ 4(a)(iii). Accordingly, the Panel declines to use these other domain name registrations as evidence of a pattern of bad faith registration in the instant case.
Respondent’s selection of confusingly similar domain names demonstrates an intent to deceive or mislead consumers as to Complainant’s affiliation with the resolving websites and an intent to benefit from the goodwill that Complainant’s mark has garnered. The Panel assumes that Respondent generates a commercial gain through the sale of the goods featured on its websites. Previous panels have found bad faith where a Respondent attempts to commercially benefit from creating such confusion. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). Accordingly, the Panel finds that Respondent’s registration and use of the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names exhibits bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent's offering of products similar to Complainant's own products, coupled with Respondent’s use of Complainant’s CHAN LUU mark at the resolving websites, indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fakechanluusale.com> and <salechanluuuwrapbracelet.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 6, 2012
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