Chan Luu Inc. v. Kelvin Smith
Claim Number: FA1307001509520
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Kelvin Smith (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuoutlets.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2013; the National Arbitration Forum received payment on July 12, 2013.
On July 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuoutlets.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@chanluuoutlets.com. Also on July 17, 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 August 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is the sole rights-holder of the CHAN LUU mark. Complainant has used the mark for over 17 years in connection with its line of jewelry, clothing, and accessories and has registered the CHAN LUU mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,869,029 registered August 3, 2004). Complainant also has trademark registrations with multiple other trademark registrations with agencies throughout the world.
Respondent registered the <chanluuoutlets.com> domain name. The domain name merely adds the descriptive term “outlets” to the CHAN LUU mark. The affixation of the generic top-level domain (“gTLD”) “.com” is of no relevance.
Respondent is not known by this domain name, but is known as “Kelvin Smith.” Respondent is not a licensee or authorized affiliate of Complainant. Respondent uses the <chanluuoutlets.com> domain name to host a website that resembles Complainant’s own website, for purposes of soliciting counterfeits of Complainant’s products.
Respondent registered and uses the <chanluuoutlets.com> domain name to sell counterfeit versions of Complainant’s products, a directly competitive use. Respondent uses Complainant’s CHAN LUU mark in selling these counterfeit goods, a sure sign that Respondent intends to pass itself off as Complainant in order to confuse Internet users into believing they are acquiring lawful CHAN LUU goods. Respondent had actual knowledge of Complainant’s rights when registering the infringing <chanluuoutlets.com> domain name, as Respondent affirmatively uses the entire CHAN LUU mark throughout the domain name’s websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its CHAN LUU mark.
Complainant’s trademark rights in CHAN LUU predate Respondent’s registration of the at-issue domain name.
The WHOIS information for the at-issue domain name identifies “Kelvin Smith” as the registrant.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain name addresses a website that somewhat resembles Complainant’s official website.
Respondent’s website offers competing jewelry products, as well as counterfeits of Complainant’s jewelry, for sale.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant established rights in the CHAN LUU mark under Policy ¶ 4(a)(i) through its registration of said mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
In forming the at issue domain name Respondent adds the descriptive term “outlets” to Complainant’s CHAN LUU mark less its space, and then appends the top level domain name “.com” thereto. The generic top-level domain (“gTLD”) “.com” and removal of the space between CHAN and LAU has no impact on the Panel’s analysis under Policy ¶4(a)(i). 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)). Further, the addition of the term “outlets” only enhances confusing similarity as “outlets” suggests a retail outlet where Internet users may purchase CHAN LUU goods. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel therefore concludes that Respondent’s <chanluuoutlets.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain names identifies the domain name registrant as “Kelvin Smith” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <chanluuoutlet.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the < chanluuoutlet.com > 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).
Respondent’s <chanluuoutlet.com> domain name addresses a website that resembles Complainant’s official website. Respondent’s website makes heavy usage of the CHAN LUU mark in promoting an array of goods that are similar to, or counterfeits of, the goods that Complainant sells under the CHAN LUU mark. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), (holding “that capitalizing on the well-known marks of [the complainant] by attracting internet users to [the respondent’s] disputed domain names where [the respondent sold] competing products of [the complainant was] not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent creates Internet user confusion by registering the confusingly similar disputed domain name and selling competing products on an addressed website resembling Complainant’s official website. These circumstances demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). 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).
Additionally, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluuoutlet.com> domain name. Respondent’s actual knowledge is evident from the similarities between the <chanluuoutlet.com> website and Complainant’s official website and by Respondent’s offering of competing and counterfeit products for sale on the offending website. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuoutlets.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 13, 2013
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