Chan Luu Inc. v. greedka greedka
Claim Number: FA1312001534235
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is greedka greedka (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluubraceletonsale.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 12, 2013, GODADDY.COM, LLC confirmed by e-mail to the Nat-ional Arbitration Forum that the <chanluubraceletonsale.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current regis-trant 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 December 12, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 2, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@chanluubraceletonsale.com. Also on December 12, 2013, the Written Notice of the Complaint, notifying Respond-ent of the e-mail addresses served and the deadline for a Response, was trans-mitted to Respondent via post and fax, to all entities and persons listed on Re-spondent’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 3, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 owns exclusive rights to the trademark CHAN LUU, which it has used for over 17 years in connection with the marketing of its widely known lines of jewelry, clothing and accessories.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for the CHAN LUU trademark (including Registry No. 2,869,029, registered August 3, 2004).
Respondent registered the <chanluubraceletonsale.com> domain name on Nov-ember 11, 2013.
The domain name is confusingly similar to Complainant’s CHAN LUU mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed Respondent to use the CHAN LUU mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent uses the domain name to sell goods directly competing with Com-plainant’s CHAN LUU goods, including counterfeit CHAN LUU goods.
The website resolving from the domain name prominently displays Complainant’s CHAN LUU trademark.
Respondent’s employment of the domain name creates a likelihood of confusion among Internet users and disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the CHAN LUU mark when it registered the subject domain name.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the CHAN LUU trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <chanluubraceletonsale.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. The domain name con-tains the entire CHAN LUU mark, with the space between the terms of the mark removed, and merely adding the term “bracelet” and phrase “on sale,” which de-scribe aspects of Complainant’s business, plus the generic Top-Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> do-main name confusingly similar to a UDRP Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
See also 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 of the mark of another and the addition to it of a gTLD do not establish distinct-iveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name, and that Complainant has not given Respondent permission to use its CHAN LUU mark. Moreover, the WHOIS information for the domain name identifies the registrant on as “greedka greedka,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the <chanluubraceletonsale.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for ex-ample, Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (con-cluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as pro-vided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not author-ized that respondent to register a domain name containing its registered mark).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <chanluubraceletonsale.com> domain name to sell goods directly competing with Complainant’s CHAN LUU goods, including count-erfeit CHAN LUU goods, and that Respondent does so by displaying Complain-ant’s CHAN LUU mark prominently on its resolving website. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding, under Policy ¶¶ 4(c)(i) and (iii), that a respondent’s use of a dis-puted domain name to redirect Internet users to a financial services website which competed with the business of a UDRP complainant, was not a bona fide offering of goods or services); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding, under Policy ¶¶ 4(c)(i) and (iii), no rights or legitimate interests in a contested domain name where a respondent sold counterfeit versions of a UDRP complainant’s products in competition with that complainant’s business).
The panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the contested <chanluubraceletonsale.com> domain name to sell both the products of Com-plainant’s commercial competitors and counterfeit CHAN LUU goods, and that this employment of the domain name disrupts Complainant’s business. This use of the domain name stands as evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See Dating-Direct.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that a UDRP complainant’s business was dis-rupted by a respondent’s registration and use in bad faith of a disputed domain name for the purpose of selling counterfeit products).
We are also convinced by the evidence that Respondent’s use of the disputed <chanluubraceletonsale.com> domain name, which is confusingly similar to Complainant’s CHAN LUU trademark, to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name and resolving website demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respond-ent engaged in bad faith registration and use of domain names that were ident-ical or confusingly similar to the mark of a UDRP complainant to redirect Internet users to a website offering services similar to those offered by that complainant); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding, under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name where a respondent attempted to gain commercially by creating confusion among Internet users as to the possibility of a UDRP complainant’s connection with the resolving website, which it used to sell counterfeit products).
Finally under this head of the Policy, we find from the evidence that Respondent knew of Complainant and its rights in the CHAN LUU trademark when it regis-tered the <chanluubraceletonsale.com> domain name. This is independent proof of bad faith in the registration of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sep-tember 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Thus the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <chanluubraceletonsale.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 8, 2014
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