Chan Luu Inc. v. N/A and Nakashima Minami
Claim Number: FA1309001522010
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is N/A and Nakashima Minami (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addchanluujapan.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2013; the National Arbitration Forum received payment on September 30, 2013.
On October 2, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <addchanluujapan.com> domain name is registered with PDR LTD. d/b/aPUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.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 October 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@addchanluujapan.com. Also on October 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 October 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Respondent’s <addchanluujapan.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <addchanluujapan.com> domain name.
3. Respondent registered and uses the <addchanluujapan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its CHAN LUU mark to identify its fashion accessories, jewelry, clothing, and related consumer goods. Complainant has registered its CHAN LUU mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029 registered on August 3, 2004) and the Japan Patent Office (“JPO”) (Reg. No. 4,884,138 registered on July 29, 2005).
Respondent registered the <addchanluujapan.com> domain name on June 28, 2013, and uses it for the sale of counterfeit CHAN LUU 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 Panel finds that Complainant has established rights in its CHAN LUU mark through registration of the mark with the USPTO and with the JPO. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office”).
Respondent’s <addchanluujapan.com> domain name which merely adds the generic term “add” and the geographic term “japan” to the otherwise distinct CHAN LUU mark. The deletion of spaces and the addition of the gTLD “.com” are not significant changes to the mark. 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)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), where the panel found that geographic terms do not distinguish a domain name from a mark; see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding that mere generic terms are not sufficient to defeat the confusing similarity of a domain name.) Thus, the Panel finds that the <addchanluujapan.com> domain name is confusingly similar to the CHAN LUU mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent is not known by the <addchanluujapan.com> domain name, and is identified as “Nakashima Minami.” The Panel WHOIS information shows that “Nakashima Minami (yuantuolinhuo@gmail.com)” is the registrant of record. Complainant states that it has not licensed, authorized, or approved of Respondent’s use of the CHAN LUU mark in a domain name. Thus, the Panel finds that Respondent is not known by the <addchanluujapan.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent uses the disputed <addchanluujapan.com> domain name to offer counterfeit CHAN LUU goods, in competition with Complainant. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel found the sale of counterfeit goods to amount to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel finds that Respondent’s sale of counterfeit CHAN LUU goods demonstrates that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering, and Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s sale of counterfeit CHAN LUU goods is disruptive to Complainant’s legitimate business, clearly in bad faith. The panel in Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), found the sale of counterfeit goods in itself establishs bad faith commercial disruption. The Panel finds Respondent’s bad faith use and registration under Policy ¶ 4(b)(iii).
The Panel finds that Respondent’s offering of counterfeit goods through this domain name also constitutes Policy ¶ 4(b)(iv) bad faith by using the <addchanluujapan.com> domain name to confuse Complainant as a source or sponsor of the illegitimate goods sold through the domain name’s online store. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant argues that Respondent registered the <addchanluujapan.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark, claiming that this is clear through Respondent’s sale of counterfeit CHAN LUU goods, and the use of Complainant’s CHAN LUU mark on the domain name’s website. The Panel agrees and finds further evidence that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
The Panel finds that 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 <addchanluujapan.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 1, 2013
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