Chan Luu Inc. v. agajbhkab jdvnj
Claim Number: FA1308001517436
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is agajbhkab jdvnj (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluusjapanese.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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2013; the National Arbitration Forum received payment on August 30, 2013.
On September 3, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluusjapanese.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 September 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@chanluusjapanese.com. Also on September 4, 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 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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
a) Complainant has rights in the CHAN LUU mark, used for over 17 years in connection with lines of jewelry, clothing, and accessories. Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered Aug. 2, 2004). See Complainant’s Exhibits E, F.
b) The <chanluusjapanese.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Respondent registered the <chanluusjapanese.com> domain name which merely tacks on the letter “s,” the geographic identifier “japanese,” and the generic top-level domain (“gTLD”) “.com.”
c) Respondent is not commonly known by the <chanluusjapanese.com> domain name. Complainant has not licensed Respondent to use the CHANN LUU mark and has no relationship with Respondent whatsoever which would entitle Respondent to use the mark. Without any Response from Respondent, Respondent can only be known by that which the WHOIS record lists as the domain name registrant, “agajbhkab jdvni.”
d) Respondent uses the <chanluusjapanese.com> domain name to sell counterfeit versions of Complainant’s products such as scarves and bracelets. See Complainant’s Exhibit H.
e) Respondent uses the domain name to market counterfeit CHAN LUU goods in direct competition with Complainant. This use is disruptive as it unlawfully misdirects Internet users searching for Complainant to Respondent’s website.
f) Respondent’s use of the domain name evidences that Respondent expects some consumers to believe that an affiliation exists between the website identified by that domain name and Complainant.
g) Respondent has attempted to pass off the <chanluusjapanese.com> domain name as being controlled by Complainant. Respondent’s website imitates Complainant’s website, including using the same layout and the CHAN LUU mark in the same font as Complainant uses.
h) Respondent registered the disputed domain name with constructive and actual knowledge of the CHAN LUU mark. Complainant has registrations world-wide for the CHAN LUU mark. Respondent sells counterfeit versions of Complainant’s goods and attempts to imitate Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <chanluusjapanese.com> domain name on March 18, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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 decides 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 contends that it has rights in the CHAN LUU mark, which it has used for over 17 years in connection with lines of jewelry, clothing, and accessories. Complainant provides the Panel with evidence that Complainant is the owner of registrations with the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered Aug. 2, 2004). See Complainant’s Exhibits E, F. Panels have found that registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <chanluusjapanese.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant notes that Respondent registered the <chanluusjapanese.com> domain name, which merely tacks on the letter “s,” the geographic identifier “japanese,” and the gTLD “.com.” The Panel notes that such changes have previously been found to be insufficient to negate confusing similarity. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also 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). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i), as past panels have also found the elimination of spaces between words in a mark to be inconsequential. 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)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 <chanluusjapanese.com> domain name. Complainant argues that it has not licensed Respondent to use the CHANN LUU mark and has no relationship with Respondent whatsoever which would entitle Respondent to use the mark. According to Complainant, without any Response from Respondent, Respondent can only be known by that which the WHOIS record lists as the domain name registrant, “agajbhkab jdvni.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent’s use of the disputed domain name is further evidence of a lack of rights and legitimate interests. Complainant notes that Respondent uses the <chanluusjapanese.com> domain name to sell counterfeit versions of Complainant’s products such as scarves and bracelets. See Complainant’s Exhibit H. In C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011), the panel held that the use of a domain name to sell counterfeit goods is not one which is protected by Policy ¶¶ 4(c)(i) or 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <chanluusjapanese.com> domain name 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 contends that Respondent uses the domain name to market counterfeit CHAN LUU goods in direct competition with Complainant. Complainant claims that this use is disruptive as it unlawfully misdirects Internet users searching for Complainant to Respondent’s website. Panels have held that the sale of counterfeit goods is evidence of bad faith as it seeks to derail customers of the complainant by diverting them to the respondent’s website, where competing goods are sold. See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and uses the <chanluusjapanese.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s use of the domain name evidences that Respondent expects some consumers to believe that an affiliation exists between the website identified by that domain name and Complainant. Complainant notes that Respondent uses the <chanluusjapanese.com> domain name to sell counterfeit versions of Complainant’s products. The Panel finds that Respondent is intentionally creating a likelihood of confusion so as to take commercial advantage of mistakes made as a result of Internet users. See CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)). Therefore, the Panel finds bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent has attempted to pass off the <chanluusjapanese.com> domain name as being controlled by Complainant. Complainant asserts that Respondent’s website imitates Complainant’s website, including using the same layout and the CHAN LUU mark in the same font as Complainant uses. The Panel agrees that Respondent attempted to increase association between the disputed domain name and Complainant’s genuine websites by replicating the look of the websites, and thus the Panel finds that Respondent registered and uses the <chanluusjapanese.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s actions constituted bad faith under Policy ¶ 4(a)(iii) where the respondent intended to pass off the disputed domain names and resolving website as being affiliated with the complainant’s mark).
Complainant contends that Respondent registered the disputed domain name with constructive and actual knowledge of the CHAN LUU mark. Complainant notes that it has registrations world-wide for the CHAN LUU mark and that Respondent sells counterfeit versions of Complainant’s goods and attempts to imitate Complainant’s website. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluusjapanese.com> domain name be TRANSFERRED from Respondent to Complainant .
Ho Hyun Nahm, Panelist
Dated: September 30, 2013
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