Chan Luu Inc. v. Carolyn Hampton
Claim Number: FA1303001488331
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Carolyn Hampton (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluuaustralia.com> and <chanluufrance.com>, registered with CSL COMPUTER SERVICE LANGENBACH GMBH D/B/A JOKER.COM.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 5, 2013, CSL COMPUTER SERVICE LANGENBACH GMBH D/B/A JOKER.COM confirmed by e-mail to the National Arbitration Forum that the <chanluuaustralia.com> and <chanluufrance.com> domain names are registered with CSL COMPUTER SERVICE LANGENBACH GMBH D/B/A JOKER.COM and that Respondent is the current registrant of the names. CSL COMPUTER SERVICE LANGENBACH GMBH D/B/A JOKER.COM has verified that Respondent is bound by the CSL COMPUTER SERVICE LANGENBACH GMBH D/B/A JOKER.COM 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 March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2013 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@chanluuaustralia.com, postmaster@chanluufrance.com. Also on March 6, 2013, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant made the following contentions.
1. Complainant is a well-known provider of jewelry, clothing and accessories.
2. Complainant owns several trademark registrations for CHAN LUU including Trademark Reg. No. 3,028,982 registered with the United States Patent and Trademark Office (“USPTO”) on December 13, 2005.
3. The disputed domain names are confusingly similar to the CHAN LUU trademarks as they reproduce the entire CHAN LUU mark and add only the generic Top Level Domain “.com” and the geographic indicators “australia” and “france “respectively.
4. Respondent has no rights or legitimate interests in the domain names as they are used to sell goods in competition with the goods of Respondent including counterfeit goods.
5. Moreover, Respondent is not known by the domain names, had no permission or authority to use Complainant’s trademarks in its domain names and has not made a non-commercial or fair use of the domain names.
6. The domain names were registered and have been used in bad faith as the facts show an intention to mislead and Respondent is using the domain names to sell goods in competition with Complainant including counterfeit goods, Respondent had actual knowledge of the trademark when registering the domain names and Respondent’s registration of confusingly similar domain names shows bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a well-known provider of jewelry, clothing and accessories.
2. Complainant owns several trademark registrations for CHAN LUU including Trademark Reg. No. 3,028,982 registered with the United States Patent and Trademark Office (“USPTO”) on December 13, 2005.
3. The domain names were registered by Respondent on July 3, 2012 and have been used to resolve to websites selling goods in competition with Complainant including counterfeit 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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has adduced evidence to the effect that it has registered trademarks for CHAN LUU with USPTO and also internationally, including Trademark Reg. No. 3,028,982 registered with USPTO”) on December 13, 2005. The Panel accepts that evidence. Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the CHAN LUU mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the CHAN LUU mark. First, the Panel notes that the disputed domain names include the generic top-level domain (“gTLD”) “.com”, but it is now well established that the top level domain cannot negate a finding of confusion similarity that otherwise exists, as it does in the present case. Moreover the domain names consist of the CHAN LUU mark in its entirety with the only addition being the words ”australia” and “ france”, clearly referring to those two countries. The addition of those words does not negate confusing similarity as it has long been accepted that the internet user would simply assume that a domain name with such an addition referred to the trademark owner and its activities in the country so designated. Accordingly, the Panel finds that each of the domain names is confusingly similar to the CHAN LUU trademark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis) andTicketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), (holding that the addition of a geographic term fails to distinguish a mark from the domain name into which it is incorporated).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. Arab. 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. Gerber, FA 780200 (Nat. Arab. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHAN LUU trademark and to use it in its domain names, adding additional words that are geographic indicators designating two countries and thus giving the false impression by the construction of the domain names that they are official domain names of Complainant dealing with its business in each of those countries and that they will lead to official websites dealing with Complainant’s business in those countries;
(b) Respondent has then used the domain name to resolve to websites selling goods in competition with those of Complainant including counterfeit goods;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant claims that Respondent is not commonly known by the domain names. Having regard to the whole of the evidence and the likelihood of the situation as contended for by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. 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);
(e)Complainant also argues that Respondent has not made a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Complainant argues and the Panel accepts that the domain name has been used to promote goods and services in competition with those of Complainant including counterfeit goods. As the Panel agrees with Complainant’s submissions regarding the use of the domain names, it finds that such use of the domain names is not a Policy ¶ 4(c) (i) bona fide offering of goods and services, nor is it a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See e.g., Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (finding that when a respondent used the domain name <gretschdrum.com> to link to products that competed with those of the Complainant, "[t]he competitive nature of Respondent's use of [the domain name] renders this use neither bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the [domain name] under Policy4(c)(iii)")).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that the facts show an intention to mislead and that Respondent is using the domain names to sell goods in competition with Complainant. There is no doubt that the evidence supports that contention and the Panel so finds. See Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011)(finding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith); Fred W: Gretsch Enterprises; Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (respondent acted in bad faith by using Complainant's mark to divert confused customers to websites selling competitors' products).
Secondly, such conduct must particularly be bad faith where, as Complainant submits, Respondent has registered and is using a domain name to sell counterfeit goods; see Chan Luu Inc. v. Li Yong Ze, FA 1463461 (Nat. Arb. Forum, Nov.2, 2012).
Thirdly, Complainant also submits that Respondent had actual knowledge of the trademark when registering the domain names. In view of the fame of Complainant’s mark and in view of the use of it made by Respondent, without permission, the Panel concludes that Respondent must have had actual knowledge of the mark at the time of the registration of the domain names and that they were thus registered in bad faith; see Assoc.Materials, Inc. v. Perura Wells, Inc. FA154121 (Nat. Arb. Forum, May 23, 2003 (respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark evidenced that the disputed domain name was registered in bad faith).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the CHAN LUU mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuaustralia.com> and <chanluufrance.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 8, 2013
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