Chan Luu Inc. v. wangting lu and lu wangting
Claim Number: FA1312001533528
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is wangting lu and lu wangting (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapchanluusalejp.com> and <chanluusalesjapan.com>, registered with HiChina Zhicheng Technology Limited.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013. The Complaint was submitted in both English and Chinese.
On December 9, 2013, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <cheapchanluusalejp.com> and <chanluusalesjapan.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 December 16, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 6, 2014 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@cheapchanluusalejp.com and postmaster@chanluusalesjapan.com. Also on December 16, 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 January 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Language of the Proceedings
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the CHAN LUU mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029, registered August 3, 2004).
2. Complainant owns the CHAN LUU mark through numerous trademark registrations world-wide, including registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,350, registered on September 7, 2009).
3. Complainant uses the CHAN LUU mark in connection with jewelry, clothing, and accessories. Complainant established its jewelry business in 1995, and now has gained international recognition with sales in stores like Bloomingdales, Saks Fifth Avenue, and Isetan.
4. Complainant has used the website <chanluu.com> since 2006.
5. The disputed domain names <cheapchanluusalejp.com> and <chanluusalesjapan.com> are confusingly similar to Complainant’s CHAN LUU mark.
6. The <cheapchanluusalejp.com> domain name incorporates Complainant’s mark in full with the addition of the terms “cheap,” “sale,” and “jp.” The additional terms do not sufficiently distinguish the mark from the domain name as the terms “cheap” and “sale” are descriptive of Complainant’s retail services and therefore serve to increase the confusing similarity of the disputed domain names with Complainant’s mark. Further, the term “jp” is a well-recognized abbreviation for Japan, and such geographic terms are similarly insufficient to distinguish the disputed domain name from the mark. The elimination of spaces and affixation a generic top-level domain (“gTLD”) is irrelevant for the purpose of the confusing similarity analysis.
7. The <chanluusalesjapan.com> domain name incorporates Complainant’s CHAN LUU mark with the addition the terms “sales” and “japan.” Again, the term “sales” is descriptive of Complainant’s retail services, and the term “japan” is a geographic term. Therefore, the material additions made to Complainant’s CHAN LUU mark in the resulting <chanluusalesjapan.com> domain name are insufficient to differentiate the disputed domain name from the mark.
8. Respondent has no rights of legitimate interests in the disputed domain names. Respondent is not commonly known by the subject domain names as the WHOIS record indicates that “wangting lu / lu wangting” is the registrant of the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use the mark.
9. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
10. Respondent uses the <cheapchanluusalejp.com> domain name to sell goods that directly compete with Complainant’s CHAN LUU goods, including counterfeit versions of Complainant’s own products.
11. The disputed domain name <chanluusalesjapan.com> does not resolve to an active website.
12. Respondent is using the <cheapchanluusalejp.com> domain name in bad faith as Respondent sells counterfeit goods through the domain name, which disrupts Complainant’s business.
13. Respondent’s bad faith is further demonstrated by Respondent’s use of a confusingly similar domain name, <cheapchanluusalejp.com>, to redirect users to a website that displays Complainant’s CHAN LUU mark and offers goods that are in direct competition with Complainant’s goods.
14. Similarly, Respondent is attempting to pass itself off as Complainant. The <cheapchanluusalejp.com> domain name resolves to a website that imitates Complainant’s own website and displays Complainant’s CHAN LUU mark throughout.
15. Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when Respondent registered the <cheapchanluusalejp.com> domain name.
16. Respondent’s failure to make an active use of the <chanluusalesjapan.com> domain name constitutes bad faith.
17. Respondent registered the <cheapchanluusalejp.com> domain name on October 26, 2013, and the <chanluusalesjapan.com> domain name on October 31, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., owns the CHAN LUU mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant owns the CHAN LUU mark through numerous trademark registrations world-wide, including registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,350, registered on September 7, 2009). Complainant uses the CHAN LUU mark in connection with jewelry, clothing, and accessories. Complainant has gained international recognition in its jewelry business.
Respondent, wangting lu and lu wangting, registered the <cheapchanluusalejp.com> domain name on October 26, 2013, and the <chanluusalesjapan.com> domain name on October 31, 2013. Respondent uses the <cheapchanluusalejp.com> domain name to sell goods that directly compete with Complainant’s CHAN LUU goods, including counterfeit versions of Complainant’s own products. Similarly, Respondent is attempting to pass itself off as Complainant. The <cheapchanluusalejp.com> domain name resolves to a website that imitates Complainant’s website and displays Complainant’s CHAN LUU mark. The disputed domain name <chanluusalesjapan.com> does not resolve to an active website.
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 owns the CHAN LUU mark under Policy ¶ 4(a)(i) through numerous trademark registrations world-wide, including registrations with the USPTO and SAIC. 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 . . .”).
The disputed domain names <cheapchanluusalejp.com> and <chanluusalesjapan.com> are confusingly similar to Complainant’s CHAN LUU mark. The disputed domain names incorporate Complainant’s mark in full with the addition of modifying terms such as “cheap” and “japan.” The additional terms do not sufficiently distinguish the domain names from the mark as the terms “cheap,” “sale,” and “sales” are descriptive of Complainant’s retail services and increase the confusing similarity of the disputed domain names with Complainant’s mark. The term “jp” is a well-recognized abbreviation for Japan. Geographic terms are similarly insufficient to distinguish the disputed domain name from the mark. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002)(“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). Furthermore, the elimination of spaces and affixation a gTLD is irrelevant for the purpose of the confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007)(“spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.”). The Panel finds that the <cheapchanluusalejp.com> and <chanluusalesjapan.com> domain names are confusingly similar to Complainant’s CHAN LUU mark pursuant to 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.
Respondent has no rights of legitimate interests in the disputed domain names. Respondent is not commonly known by the subject domain names under Policy ¶ 4(c)(ii). The WHOIS record indicates that “wangting lu / lu wangting” is the registrant of the disputed domain names. Further, Complainant has not licensed or otherwise authorized Respondent to use the mark. 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 is not using the <cheapchanluusalejp.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii). Respondent uses the <cheapchanluusalejp.com> domain name to sell goods that directly compete with Complainant’s CHAN LUU goods, including counterfeit versions of Complainant’s own products. See 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).
Respondent is not using the <chanluusalesjapan.com> domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the domain name does not resolve to an active website. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent registered and is using the <cheapchanluusalejp.com> domain name in bad faith under Policy ¶ 4(b)(iii) as Respondent sells counterfeit goods through the domain name, which disrupts Complainant’s business. See 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).
Respondent’s use of a confusingly similar domain name, <cheapchanluusalejp.com>, to redirect users to a website that displays Complainant’s CHAN LUU mark and offers goods in competition with Complainant’s goods is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008)(finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Similarly, Respondent is attempting to pass itself off as Complainant which is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). The <cheapchanluusalejp.com> domain name resolves to a website that imitates Complainant’s own website and displays Complainant’s CHAN LUU mark. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002)(“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent’s failure to make active use of the <chanluusalesjapan.com> domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007)(respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent registered the <chanluusalesjapan.com> domain name in October, 2013, and has failed to make an active use of the confusingly similar domain name.
Also, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when Respondent registered the disputed domain names. Therefore, Respondent registered the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapchanluusalejp.com> and <chanluusalesjapan.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 28, 2014
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