Chan Luu Inc. v. hurry cater
Claim Number: FA1211001473620
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is hurry cater (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluukan.com>, registered with eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 30, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluukan.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@chanluukan.com. Also on December 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 January 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant provides jewelry, handbags, clothing, and accessories under the CHAN LUU mark.
2. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).
3. The <chanluukan.com> domain name is confusingly similar to Complainant’s mark.
4. Respondent is not commonly known by the disputed domain name.
5. Respondent uses the <chanluukan.com> domain name to operate a website which sells counterfeit versions of Complainant’s CHAN LUU-branded products.
6. Respondent has designed its website to visually resemble Complainant’s own <chanluu.jp> site, including making use of photographs taken from Complainant’s own site and “excessive” use of Complainant’s mark, distinctive shade of orange, and distinctive font throughout Respondent’s site.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluukan.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 claims rights in the CHAN LUU mark based on its registration of the mark with numerous federal trademark authorities, including the USPTO (e.g., Reg. No. 2,869,029 registered August 3, 2004). Complainant’s registration of the CHAN LUU mark with a trademark authority such as the USPTO is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant urges that Respondent’s <chanluukan.com> domain name is confusingly similar to its CHAN LUU mark under Policy ¶ 4(a)(i). The disputed domain name includes Complainant’s mark, the generic term “kan,” and the generic top-level domain (“gTLD”) “.com.” Complainant states that “kan” is a Japanese term which approximately translates to an emotion, feeling, or sense. Adding a generic term like “kan” is not sufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The affixation of a gTLD has no effect on the determination of whether a domain name is confusingly similar to Complainant’s mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Finally, the Panel notes that the disputed domain name omits the space between the words in Complainant’s mark. However, this change is also insignificant. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s <chanluukan.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known by the <chanluukan.com> domain name for the purposes of Policy ¶ 4(c)(ii), and that Complainant has not given Respondent permission to use the CHAN LUU mark. The WHOIS information identifies the domain name registrant as “hurry cater.” Respondent has failed to submit any evidence to suggest that it is in fact commonly known as the <chanluukan.com> domain name. Absent such evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent uses the <chanluukan.com> domain name to operate a website which sells counterfeit versions of Complainant’s CHAN LUU-branded products. Complainant further contends that Respondent has designed its website to visually resemble Complainant’s own <chanluu.jp> site, including making use of photographs taken from Complainant’s own site and “excessive” use of Complainant’s mark, distinctive shade of orange, and distinctive font throughout Respondent’s site. The Panel finds that Respondent is using the <chanluukan.com> domain name to host a commercial website, substantially similar to that of Complainant, which sells goods directly competitive with the goods sold by Complainant. Accordingly, Respondent’s use of the <chanluukan.com> domain name does not constitute 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). 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the disputed domain name in connection with the sale of what appear to be counterfeit versions of Complainant’s goods demonstrates registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s operation at a confusingly similar website which resolves from the domain name, coupled with the substantial visual similarity of Respondent’s site to Complainant’s <chanluu.jp> site, increases the likelihood that visitors to Respondent’s website will have originally intended to visit a website legitimately operated by or associated with Complainant. Presumably, when some of these misdirected visitors inevitably purchase products from Respondent’s site, it comes at the direct cost of Complainant’s business, which would have earned the sale but for the existence of Respondent’s site. In this way, Respondent’s business is in competition with Complainant. In view of the evidence in the record, the Panel concludes that Respondent’s registration and use of the <chanluukan.com> domain name constitute bad faith disruption under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant also alleges that Respondent’s registration and use of the <chanluukan.com> domain name exhibits bad faith pursuant to Policy ¶ 4(b)(iv), claiming that the only reason for Respondent’s registration and use of the disputed domain is to “unlawfully misdirect users searching for Complainant to Respondent’s website.” Respondent’s selection of a confusingly similar domain name, as well as the conspicuous aesthetic similarity of the resolving site to Complainant’s site, demonstrate Respondent’s intent to deceive or mislead consumers as to Complainant’s affiliation with Respondent’s site. The Panel infers that Respondent seeks to leverage this implied affiliation to usurp a portion of Complainant’s goodwill in order to increase sales at Respondent’s site. Respondent’s registration and use of the <chanluukan.com> domain name in this manner exhibits improper attraction for commercial gain, which constitutes bad faith pursuant to 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).
Complainant asserts that Respondent’s “explicit and excessive use” of Complainant’s CHAN LUU mark on the website resolving from the disputed domain name evidences Respondent’s actual knowledge of Complainant’s rights in the CHAN LUU mark at the time Respondent registered the <chanluukan.com> domain name. The Panel finds that Respondent had actual knowledge of Complainant’s mark and therefore finds that Respondent registered the <chanluukan.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds 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 <chanluukan.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 14, 2013
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