Chan Luu Inc. v. sdf sdf / sd fsdfs dfsdf
Claim Number: FA1311001529763
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is sdf sdf / sd fsdfs dfsdf (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <storechanluujp.com>, <shopchanluujp.com>, and <storechanluujapan.com>, registered with HiChina Zhicheng Technology Limited.
The domain name at issue is <jpchanluushop.com>, registered with BizCN.com, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2013; the National Arbitration Forum received payment on November 13, 2013. The Complaint was submitted in both Chinese and English.
On November 14, 2013, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <storechanluujp.com>, <shopchanluujp.com>, and <storechanluujapan.com> domain names are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 November 15, 2013, BizCN.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jpchanluushop.com> domain name is registered with BizCN.com, Inc. and that Respondent is the current registrant of the name. BizCN.com, Inc. has verified that Respondent is bound by the BizCN.com, Inc. 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 November 22, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 12, 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@storechanluujp.com, postmaster@shopchanluujp.com, postmaster@storechanluujapan.com, and postmaster@jpchanluushop.com. Also on November 22, 2013, the Chinese language 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 December 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
a. Complainant, Chan Luu Inc., owns exclusive rights to the trademark CHAN LUU, which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, fashion accessories, and clothing.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant is also the owner of trademark registrations with China’s State Intellectual Property Office (“SIPO”) for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009).
c. The subject domain names <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> are confusingly similar to Complainant’s CHAN LUU mark. The domain names feature Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely add the terms “store,” “shop,” “jp,” and “japan” to Complainant’s CHAN LUU mark. Lastly, the addition of the generic top-level domain (“gTLD”) “.com” to portions of the subject domain names is irrelevant to the confusingly similar analysis.
d. Respondent has no rights or legitimate interests in the subject domain names.
i. Respondent is not commonly known by the subject domain names.
ii. Respondent uses the subject domain names <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items.
iii. Respondent excessively uses Complainant’s CHAN LUU mark throughout its websites.
e. Respondent has registered and is using the subject domain names in bad faith.
i. Respondent uses the subject domain names to sell counterfeit CHAN LUU goods.
ii. Respondent’s websites at the subject domain names display Complainant’s CHAN LUU mark.
iii. Respondent registered the subject domain names with actual knowledge of Complainant’s rights in the CHAN LUU mark as evidenced by Respondent’s explicit use of the CHAN LUU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Chan Luu Inc. which list its address as Los Angeles, CA, USA. Complainant indicates that it began its business in 1995 and has used its CHAN LUU trademark for over 17 years in connection with jewelry, clothing, and accessories. Complainant operates showrooms in Los Angeles and New York City and additionally sells its products throughout the world via major retail stores. Complainant also operates its own official website at <chanluu.com>.
Respondent is identified as sdf sdf and sdf fsdfs dfsdf of Hong Kong, China. Respondent’s registrar’s address is listed a Beijing, China. Respondent registered the <storechanluujp.com> domain name on September 22, 2013; the <shopchanluujp.com> domain name on September 12, 2013; the <storechanluujapan.com> domain name on October 8, 2013; and the <jpchanluushop.com> domain name on October 23, 2013.
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.”).
Complainant contends that it owns exclusive rights to the trademark CHAN LUU, which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, fashion accessories, and clothing. Complainant asserts that it is the owner of trademark registrations with the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). See Complainant’s Exhibit E. Complainant alleges that it is also the owner of trademark registrations with China’s SIPO for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009). See Complainant’s Exhibit D. The Panel notes that Respondent appears to reside and operate in China. The Panel finds that Complainant’s registration of the CHAN LUU mark with the USPTO and China’s SIPO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names are confusingly similar to Complainant’s CHAN LUU mark. Complainant contends that the disputed domain names feature Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely add the terms “store,” “shop,” “jp,” and “japan” to Complainant’s CHAN LUU mark. The Panel finds that Respondent’s generic or geographical terms do not distinguish the domain names from Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); 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).
The Panel notes that Respondent removes the space in Complainant’s CHAN LUU mark for the disputed domain names. Complainant contends that the addition of the gTLD “.com” to portions of the subject domain names is irrelevant to the confusingly similar analysis. The Panel finds that Respondent’s omission of a space and inclusion of a gTLD does not differentiate the disputed domain names from Complainant’s CHAN LUU mark 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)). The Panel finds that Respondent’s <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names are confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names. Complainant argues that Respondent’s name, as listed in the WHOIS information for the subject domain names, is “sdf sdf” and “sd fsdfs dfsdf.” See Complainant’s Exhibit A. Complainant further claims that it has not given Respondent permission to use its CHAN LUU mark. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. The Panel here finds that Respondent is not commonly known by the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. The Panel notes that Respondent uses its disputed domain names to provide competing and counterfeit jewelry and accessories, which it sells through its disputed domain names. See Complainant’s Exhibit H. The Panel finds that Respondent is not using the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is 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).”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Complainant claims that Respondent excessively uses Complainant’s CHAN LUU mark throughout its websites. Complainant argues that Respondent prominently displays Complainant’s CHAN LUU mark both at the top of the subject websites and in the same distinctive orange color and confusingly similar front used by Complainant. See Complainant’s Exhibit H. The Panel finds that Respondent is using the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names in an attempt to pass itself off as Complainant, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent uses the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names to sell counterfeit CHAN LUU goods. The Panel again notes that Respondent is using the disputed domain names to provide competing and/or counterfeit jewelry and accessories. See Exhibit H. Previous panels have held that a respondent’s use of a disputed domain name to sell competing or counterfeit goods typically disrupts a complainant’s business, showing bad faith under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). The Panel here finds that Respondent’s use of the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names disrupts Complainant’s legitimate business, showing bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent uses the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names to sell counterfeit CHAN LUU goods. The Panel again notes that Respondent uses the disputed domain names to sell competing and counterfeit jewelry and accessories in the screenshots Complainant provides in its Exhibit H. The Panel further finds that Respondent has registered and is using the disputed domain names in bad faith 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); see also 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’s websites at the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names display Complainant’s CHAN LUU mark. Complainant alleges that Respondent displays Complainant’s CHAN LUU mark at the top of the subject websites in the same distinctive orange color and in the same confusingly similar front used by Complainant. See Complainant’s Exhibit H. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” The Panel here finds that Respondent’s attempt to pass itself off as Complainant evidences bad faith use and registration under Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <storechanluujp.com>, <shopchanluujp.com>, <storechanluujapan.com>, and <jpchanluushop.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 2, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page