Chan Luu Inc. v. hao nian
Claim Number: FA1307001512653
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, United States. Respondent is hao nian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuinjapan.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 31, 2013; the National Arbitration Forum received payment on July 31, 2013.
On August 1, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuinjapan.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 August 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@chanluuinjapan.com. Also on August 2, 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 September 16, 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, Chan Luu Inc., uses its CHAN LUU mark in connection with the production and sale of jewelry, clothing, and accessories. Since Complainant established its business in 1995, Complainant has attained international notoriety and popularity, and makes extensive sales in the United States, Japan, China, and Europe. Complainant also owns the domain name <chanluu.com>.
Complainant has interests in the CHAN LUU mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant also owns rights in the CHAN LUU mark through registrations with the Chinese State Adminstration of Industry and Commerce (“SAIC”) (e.g., Reg. No. 4,187,845, registered February 10, 2006) and the Ministry of Economy, Trade and Industry (“METI”) in Japan (e.g., Reg. No. 4,884,138, registered July 29, 2005).
Respondent’s <chanluuinjapan.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i), because it incorporates the CHAN LUU mark in its entirety and merely adds the generic term “in” and the geographic term “Japan.”
Respondent does not have Complainant’s permission to use its CHAN LUU mark in a domain name. Moreover, Respondent is not commonly known as <chanluuinjapan.com>, because the WHOIS information identifies the registrant as “hao nian,” and Respondent has not submitted any evidence that tends to show it is commonly known as <chanluuinjapan.com>. Respondent’s use of the <chanluuinjapan.com> domain name is not protected as a bona fide offering of goods and services or a legitimate noncommercial or fair use, because the disputed domain name does not resolve to an active website, and such an inactive holding of a domain name is not protected under the Policy.
Respondent’s non-use of the <chanluuinjapan.com> domain name is evidence of bad faith under Policy ¶ 4(b)(iv), because the domain name takes advantage of Complainant’s internationally well-known CHAN LUU mark, and Respondent could not have registered the domain name in question for any non-infringing use. The Panel thus infers that Respondent registered the domain name for its own commercial gain; it need not wait until Respondent actually makes use of the domain name.
Respondent’s actual knowledge of Complainant’s CHAN LUU mark can be inferred due to the extreme popularity of the name around the world, and the fact that the disputed domain name incorporates the mark in its entirety and merely adds the terms “in” and “Japan.”
Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii), because the <chanluuinjapan.com> domain name resolves to an inactive website.
Respondent registered the disputed domain name on February 20, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO, SAIC and METI registrations for the 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 “hao nian” as the registrant.
Respondent is not authorized to use Complainant’s trademark.
Respondent has made no active use of the domain name whatsoever.
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 shows it has rights in the CHAN LUU mark via its several trademark registrations with various international trademark agencies, including the USPTO, SAIC, and METI. Any one of such registrations is sufficient for Complainant to establish rights in its CHAN LUU mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (finding that the complainant’s various trademark registrations with agencies around the world, including with the USPTO, serve to secure its rights in the claimed mark under the Policy).
The <chanluuinjapan.com> domain name incorporates Complainant’s entire CHAN LUU mark less its space, adds the generic term “in,” adds the geographic term “Japan” and appends the necessary top level domain name, here “.com,” thereto. Despite the resulting differences between the mark and the at-issue domain name, the domain name is nevertheless confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (concluding that “it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore…the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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 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 affirmative 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 and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “hao nian.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the domain name despite the contrary WHOIS indication. The Panel therefore concludes that Respondent is not commonly known by the <chanluuinjapan.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).
Furthermore, Respondent has made no active use of the domain name whatsoever. Failing to use the at-issue domain name suggests neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
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 is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
Respondent’s <chanluu-jp.com> domain name was designed to be, and is, confusingly similar to Complainant’s trademark thus suggesting registration in bad faith under Policy ¶ 4(b)(iv). Notably, the domain name creates a likelihood of confusion with Complainant’s CHAN LUU mark, and it is unlikely, without more, that Respondent registered the domain name for any use other than its own improper commercial gain. However, the evidence here, although suggestive, is not compelling since Respondent’s future use of the domain name, if any, is speculative. On the other hand, Respondent has failed to submit a Response, and thus has not presented any evidence of its intent to make an active good faith use of the domain name in the future. The inert nature of the domain name and Respondent’s failure to respond to the Complainant, thereby admitting Complainant’s claims by its silence, together show Respondent’s bad faith under Policy ¶4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that “Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”)
Finally, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluuinjapan.com> domain name. Respondent’s prior knowledge of the CHAN LUU mark is inferred from the mark’s notoriety as well as from Respondent’s inclusion of the entire CHAN LUU mark followed by the “in” + “japan” terms in the domain name. The “in”+”japan” terms suggest Complainant’s operations in Japan, a country where Complainant in fact conducts business and owns a registered trademark in CHAN LUU. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant 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).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuinjapan.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 18, 2013
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