Chan Luu Inc. v. big trade
Claim Number: FA1209001464057
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is big trade (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com>, registered with NameSilo, LLC.
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.
John J. Upchurch 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, NameSilo, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 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@chanluu-shop.com, postmaster@chanluujewels.com, and postmaster@chan-lulu.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 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <chanluu-shop.com>, <chanluujewels.com> and <chan-lulu.com> domain names are confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <chanluu-shop.com>, <chanluujewels.com> and <chan-lulu.com> domain names.
3. Respondent registered or used the <chanluu-shop.com>, <chanluujewels.com> and <chan-lulu.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the CHAN LUU mark. The mark is used in connection with jewelry and accessories. Complainant is also the owner of the United States Patent and Trademark Office (“USPTO”) trademark registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).
2. The <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names are confusingly similar to the CHAN LUU mark. The mark is changed in the domain names in the following ways:
a. The deletion of the space in the mark;
b. The addition of a hyphen;
c. The addition of a generic term;
d. The addition of one letter; and
e. The addition of the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names.
3. Respondent is not commonly known by the disputed domain names. Complainant has not licensed Respondent to use the CHAN LUU mark, and Respondent has not otherwise been given permission to use the mark. Additionally, the WHOIS record lists “big trade” as the domain name registrant.
4. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chanluu-shop.com> and <chan-lulu.com> domain names. The <chanluu-shop.com> and <chan-lulu.com> domain names resolve to websites where Respondent sells goods that directly compete with those that Complainant offers, including counterfeit versions of Complainant’s products.
5. Respondent’s ownership of the <chanluujewels.com> domain name does not give Respondent rights or legitimate interests in the disputed domain name. The <chanluujewels.com> domain name resolves to an inactive website.
6. Respondent attempts to pass off the <chanluu-shop.com> and <chan-lulu.com> domain names as being operated by or affiliated with Complainant. The layout of the <chanluu-shop.com> and <chan-lulu.com> domain names resemble 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.”
7. Respondent registered confusingly similar domain names, included visual similarities with Complainant’s website, and sells competing goods at the <chanluu-shop.com> and <chan-lulu.com> domain names in order to misdirect users searching for Complainant to Respondent’s website.
8. The <chanluu-shop.com> and <chan-lulu.com> domain names are set up similarly to Complainant’s website and repeatedly use 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.
9. The <chanluujewels.com> domain name is not being used, but rather inactively held by Respondent.
10. Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names. Respondent uses the CHAN LUU mark throughout the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names’ resolving websites and the disputed domain names are modeled after Complainant’s website.
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 asserts that it has rights in the CHAN LUU mark, which is used in connection with jewelry and accessories. Complainant argues that it is also the owner of the USPTO registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004). The Panel finds that Complainant’s registration of the CHAN LUU mark with the USPTO is evidence of rights in the mark under Policy ¶ 4(a)(i) despite Respondent being located outside of the United States. 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).”); see also 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 <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names are confusingly similar to the CHAN LUU mark. According to Complainant, the mark is changed in the domain names by some of the following: the deletion of the space in the mark; the addition of a hyphen; the addition of a generic term; the addition of one letter; and the addition of 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. Similarly, in Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003), the panel held that the addition of a single letter to a mark in a domain name failed to differentiate the disputed domain name from the mark with it. Finally, in U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that spaces, punctuation, and gTLDs do not impact a Policy ¶ 4(a)(i) determination. Therefore, the Panel finds that the <chanluu-shop.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 names 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.”).
Complainant contends that Respondent is not commonly known by the disputed domain names. Complainant notes that the WHOIS record for the disputed domain names lists “big trade” as the domain name registrant. Complainant argues that it has not licensed Respondent to use the CHAN LUU mark, and Respondent has not been given permission to use the mark. 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. Based on the information available and case precedent, the Panel finds that Respondent is not commonly known by the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chanluu-shop.com> and <chan-lulu.com> domain names. According to Complainant, the <chanluu-shop.com> and <chan-lulu.com> domain names resolve to websites where Respondent sells goods that directly compete with those that Complainant offers, including counterfeit versions of Complainant’s products. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011), 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. Therefore, the Panel finds that Respondent’s use of the <chanluu-shop.com> and <chan-lulu.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent’s ownership of the <chanluujewels.com> domain name does not give Respondent rights or legitimate interests in the disputed domain name. Complainant contends that the <chanluujewels.com> domain name resolves to an inactive website. Panels have previously held that the non-use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evidences a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent’s non-use of the <chanluujewels.com> domain name demonstrates Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant asserts that the layout of the <chanluu-shop.com> and <chan-lulu.com> domain names visually resembles Complainant’s website, and the CHAN LUU mark is used repeatedly throughout the disputed domain names, including in a copyright notice which states, “Copyright © 2011 CHAN LUU Jewelry Powered by CHAN LUU.” The Panel finds that Respondent attempts to pass off the <chanluu-shop.com> and <chan-lulu.com> domain names as being operated by or affiliated with Complainant, thus demonstrating its lack of rights and legitimate interests in the <chanluu-shop.com> and <chan-lulu.com> domain names pursuant to Policy ¶ 4(a)(ii). 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).
Complainant contends that Respondent registered and uses the <chanluu-shop.com> and <chan-lulu.com> domain names in bad faith. Complainant notes that the domain names resolve to websites that sell goods in competition with those that Complainant offers, including counterfeit versions of Complainant’s goods, in the jewelry and accessories industry. According to Complainant, Respondent registered the confusingly similar domain names and includes visual similarities with Complainant’s website to misdirect users searching for Complainant to Respondent’s website. The panels in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), and Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011), held that the registration and use of a disputed domain name to sell competing products, including counterfeit products, is disruptive to a complainant’s business. Therefore, the Panel finds that Respondent’s registration and use of the <chanluu-shop.com> and <chan-lulu.com> domain names indicates bad faith pursuant to Policy ¶ 4(b)(iii)as it is disruptive and competitive.
Complainant argues that Respondent’s bad faith regarding the <chanluu-shop.com> and <chan-lulu.com> domain names is similarly clear under Policy ¶ 4(b)(iv). Again, Complainant asserts that Panel that the domain names are confusingly similar to the CHAN LUU mark, include visual similarities with Complainant’s website, and sell competing goods, including counterfeit versions of Complainant’s products, at the <chanluu-shop.com> and <chan-lulu.com> domain names. Therefore, the Panel finds that Respondent registered and uses the <chanluu-shop.com> and <chan-lulu.com> domain names in an attempt to take commercial advantage of Internet users’ mistakes regarding the source of the domain names by creating a likelihood of confusion with the CHAN LUU mark 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).
Complainant next contends that the <chanluu-shop.com> and <chan-lulu.com> domain names are visual representations of Complainant’s website. Complainant asserts that the <chanluu-shop.com> and <chan-lulu.com> domain names repeatedly display the CHAN LUU mark, including in a copyright notice which states, “Copyright © 2011 CHAN LUU Jewelry Powered by CHAN LUU.” Complainant also argues that Respondent sells competing and counterfeit products in the jewelry industry via the <chanluu-shop.com> and <chan-lulu.com> domain names. Therefore, the Panel finds that Respondent is attempting to pass off the <chanluu-shop.com> and <chan-lulu.com> domain names as being owned or affiliated with Complainant and thus registered and uses these disputed domain names in bad faith under Policy ¶ 4(a)(iii). 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).
Complainant also contends that Respondent’s registration and non-use of the <chanluujewels.com> domain name evidences bad faith. Complainant notes that the <chanluujewels.com> domain name is not being used but rather is inactively held by Respondent. Panels have previously held that the non-use of a disputed domain name is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent registered and inactively holds the <chanluujewels.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names. Complainant contends that this prior knowledge is clearly demonstrated because Respondent uses the CHAN LUU mark throughout the <chanluu-shop.com> and <chan-lulu.com> domain names’ resolving websites, the disputed domain names are confusingly similar to the CHAN LUU mark, and the resolving websites for the <chanluu-shop.com> and <chan-lulu.com> domain names are modeled after Complainant’s website. Though some of the factors supporting actual knowledge are drawn from only the active <chanluu-shop.com> and <chan-lulu.com> domain names, the Panel notes that all three of the disputed domain names were registered on August 27, 2012 and thus that if Respondent had actual knowledge of the CHAN LUU mark in registering any of the domain names, it would have had knowledge for its registration of the other domain name also. Panels have held that having 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 the <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names in bad faith under 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 <chanluu-shop.com>, <chanluujewels.com>, and <chan-lulu.com> domain names be TRANSFERRED from Respondent6 to Complainant
John J. Upchurch, Panelist
Dated: November 8, 2012
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