Chan Luu Inc. v. N/A / veronique lenne
Claim Number: FA1209001464020
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is N/A / veronique lenne (“Respondent”), Gibraltar.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluushop.com>, registered with Cloud Group Limited.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2012; the National Arbitration Forum received payment on September 24, 2012.
On September 24, 2012, Cloud Group Limited confirmed by e-mail to the National Arbitration Forum that the <chanluushop.com> domain name is registered with Cloud Group Limited and that Respondent is the current registrant of the name. Cloud Group Limited has verified that Respondent is bound by the Cloud Group Limited 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 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@chanluushop.com. Also on September 25, 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 October 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the <chanluushop.com> domain name.
a. Complainant has rights in the CHAN LUU mark. The mark is used in connection with jewelry and accessories. Complainant is also the owner of United States Patent and Trademark Office (“USPTO”) registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).
b. The <chanluushop.com> domain name is confusingly similar to the CHAN LUU mark. The mark is incorporated into the domain name, changed only by the deletion of a space and addition of the generic term “shop” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <chanluushop.com> domain name.
c. Respondent is not commonly known by the disputed domain name. Complainant has not licensed Respondent to use the CHAN LUU mark, and Respondent does not have a relationship with Complainant that would legitimize its use of the mark.
d. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website where Respondent sells competing goods, including counterfeit versions of Complainant’s goods.
e. Respondent attempts to pass off the <chanluushop.com> domain name as being operated by or affiliated with Complainant. The layout of the <chanluushop.com> domain name resembles that of Complainant’s website, and the CHAN LUU mark is used repeatedly throughout the disputed domain name, including in a copyright notice which states, “Copyright © 2011 CHAN LUU Jewelry Powered by CHAN LUU.”
Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <chanluushop.com> domain name.
f. Respondent’s bad faith is evident under Policy ¶¶ 4(b)(iii) and 4(b)(iv). Respondent registered the confusingly similar domain name, included visual similarities with Complainant’s website, and sells competing goods at the <chanluushop.com> domain name in order to misdirect users searching for Complainant to Respondent’s website.
g. The <chanluushop.com> domain name is setup similarly to Complainant’s website and repeatedly uses the CHAN LUU mark. The disputed domain name allows Respondent to sell competing products in the jewelry industry, including counterfeit versions of Complainant’s products.
h. Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluushop.com> domain name. Respondent uses the CHAN LUU mark throughout the <chanluushop.com> domain name’s resolving website and the disputed domain name is modeled after Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Chan Luu Inc. has rights in the CHAN LUU mark. The mark is used in connection with jewelry and accessories. Complainant is also the owner of United States Patent and Trademark Office (“USPTO”) registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).
On April 23, 2012 Respondent, N/A / veronique lenne, registered the <chanluushop.com> domain name. The disputed domain name resolves to a website where Respondent sells competing goods, including counterfeit versions of Complainant’s goods.
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 owns rights in the CHAN LUU mark which is used in connection with jewelry and accessories. Complainant is the owner of the USPTO registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004). Complainant’s registration of the CHAN LUU mark with the USPTO is evidence of rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Complainant’s rights satisfy Policy ¶ 4(a)(i) despite the fact that Respondent lives in a country other than that where the mark is registered. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <chanluushop.com> domain name is confusingly similar to the CHAN LUU mark. The mark is incorporated into the domain name, changed only by the deletion of a space and addition of the generic term “shop” and the gTLD “.com.” In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that the addition of a generic term fails to distinguish a disputed domain name from the mark within it. In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that spaces and gTLDs do not impact a Policy ¶ 4(a)(i) determination. Therefore, the Panel finds that the <chanluushop.com> domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).
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).
Complainant has not licensed Respondent to use the CHAN LUU mark, and Respondent does not have a relationship with Complainant that would legitimize its use of the mark. The WHOIS record for the <chanluushop.com> domain name lists “N/A / veronique lenne” as the registrant. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), found that information such as WHOIS records and authorization, or lack thereof, is helpful in determining what the respondent is known as in the public market. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The <chanluushop.com> domain name resolves to a website where Respondent sells competing goods in the jewelry and accessories industry, including counterfeit versions of Complainant’s goods. Panels have found that the operation of a competing business and the sale of counterfeit goods via a disputed domain name do not grant a respondent rights or legitimate interests in the disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).).Therefore, the Panel finds that Respondent’s use of the <chanluushop.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and 4(c)(iii).
Respondent’s lack of rights and legitimate interests is further demonstrated by Respondent’s attempt to pass off the <chanluushop.com> domain name as being operated by or affiliated with Complainant. Complainant notes that the layout of the <chanluushop.com> domain name resembles that of Complainant’s website, and the CHAN LUU mark is used repeatedly throughout the disputed domain name, including in a copyright notice which states, “Copyright © 2011 CHAN LUU Jewelry Powered by CHAN LUU.” Panels have previously held that the attempt to pass off a disputed domain name as being owned or affiliated with a complainant is evidence of lack of rights and legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent’s attempt to pass off the <chanluushop.com> domain name as being run or associated with Complainant demonstrates that Respondent does not have rights or legitimate interests in the <chanluushop.com> domain name pursuant to Policy ¶ 4(a)(ii).
Respondent registered and uses the <chanluushop.com> domain name in bad faith under Policy ¶ 4(b)(iii). The disputed domain name resolves to a website that sells goods in competition with those that Complainant offers, including counterfeits of Complainant’s goods. According to Complainant, Respondent registered the confusingly similar domain name and includes visual similarities with Complainant’s website to misdirect users searching for Complainant to Respondent’s website. Therefore, the Panel finds that Respondent’s registration and use of the <chanluushop.com> domain name is a product of bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent’s bad faith is similarly clear under Policy ¶ 4(b)(iv). Respondent registered a confusingly similar domain name, includes visual similarities with Complainant’s website, and sells competing goods, including counterfeits of Complainant’s products, at the <chanluushop.com> domain name in order to misdirect users searching for Complainant to Respondent’s website. The Panel infers that Respondent commercially benefits from the sale of these products. Therefore, as Respondent intentionally attracts, for commercial gain, Internet users to the <chanluushop.com> domain name by creating a likelihood of confusion with the CHAN LUU mark, Respondent registered and uses the <chanluushop.com> domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant).
The <chanluushop.com> domain name is setup similarly to Complainant’s website and repeatedly uses the CHAN LUU mark, including a copyright notice which states, “Copyright © 2011 CHAN LUU Jewelry Powered by CHAN LUU.” Complainant states that the disputed domain name allows Respondent to sell competing products in the jewelry industry, including counterfeit versions of Complainant’s products. This constitutes passing off, which panels have found to demonstrate bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website). Therefore, the Panel finds that Respondent’s attempt to pass off the <chanluushop.com> domain name as being owned or affiliated with Complainant and the CHAN LUU mark indicates that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluushop.com> domain name. Respondent uses the CHAN LUU mark throughout the <chanluushop.com> domain name’s resolving website, the <chanluushop.com> domain name is confusingly similar to the CHAN LUU mark, and the disputed domain name is modeled after Complainant’s website. Actual knowledge of a mark prior to registration of a domain name incorporating that mark evidences bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluushop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 8, 2012
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