Chan Luu, LLC v. Wang Zihan
Claim Number: FA1611001704884
Complainant is Chan Luu, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Wang Zihan
(“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braceletchanluu.nu>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on November 29, 2016.
On December 2, 2016, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <braceletchanluu.nu> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2016 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@braceletchanluu.nu. Also on December 5, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant has rights in the trademark CHAN LUU, which it has used in commerce around the world, specifically in the fashion industry. Complainant has registered the mark with several governmental trademark authorities; namely with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029, registered Aug. 3, 2004) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349, registered Aug. 21, 2009). Respondent’s <braceletchanluu.nu> is confusingly similar because it incorporates the CHAN LUU mark entirely, minus the space, and adds the generic/descriptive term “bracelet” and the country-code top-level domain (“ccTLD”) “.nu” (for Niue, an island country in the South Pacific Ocean). Complainant’s offerings deal extensively in bracelets, adding to the potential for confusion.
ii) Respondent has no rights or legitimate interests in <braceletchanluu.nu>. Respondent is not commonly known by <braceletchanluu.nu>, and is not otherwise authorized to incorporate Complainant’s mark in any fashion. Further, Respondent is passing itself off as Complainant in a fraudulent scheme to cause confusion and sell counterfeit versions of Complainant’s goods. This use does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use.
iii) Respondent has registered and used <braceletchanluu.nu> in bad faith. Respondent’s attempted sale of counterfeit goods through passing itself off as Complainant shows that it has engaged in bad faith proscribed by Policy ¶ 4(b)(iv). Lastly, Respondent registered and used <braceletchanluu.nu> with actual knowledge of Complainant and its rights in the CHAN LUU mark because of the use made of the mark at the resolving website.
B. Respondent
Respondent did not submit a Response. The Panel notes that <braceletchanluu.nu> was registered on November 23, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 (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 argues it has rights in the trademark CHAN LUU, which it has used in commerce around the world, specifically in the fashion industry. Complainant claims it has registered the mark with several governmental trademark authorities; namely with the USPTO (e.g., Reg. No. 2,869,029, registered Aug. 3, 2004) and SAIC (e.g., Reg. No. 5,497,349, registered Aug. 21, 2009). Registrations with the USPTO and SAIC are adequate representations of Policy ¶ 4(a)(i) rights. See Guess? IP Holder L.P. and Guess?, Inc. v. zhou hong hai, FA 1610066 (Forum May 1, 2015) (determining that “Complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).”). Accordingly, the Panel determines that Complainant has rights in the CHAN LUU mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <braceletchanluu.nu> is confusingly similar because it incorporates the CHAN LUU mark entirely, minus the space, and adds the generic/descriptive term “bracelet” and the ccTLD “.nu” (for Niue, an island country in the South Pacific Ocean). Where a descriptive term and a ccTLD is added, confusing similarity may follow. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Complainant’s offerings deal extensively in bracelets, adding to the potential for confusion. As the Panel agrees that the alterations Respondent has made to the CHAN LUU mark are non-distinguishing, it concludes that confusing similarity exists 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 (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 (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 has no rights or legitimate interests in <braceletchanluu.nu>. Complainant asserts that Respondent is not commonly known by <braceletchanluu.nu>, and is not otherwise authorized to incorporate Complainant’s mark in any fashion. Where no response is on record for the panel’s consideration, WHOIS information is typically looked to as sufficient in creating a prima facie case under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel sees that the registrant of record is “Wang Zihan” and thus concludes that Respondent is not commonly known by <braceletchanluu.nu>.
Further, Complainant contends that Respondent is passing itself off as Complainant in a fraudulent scheme to cause confusion and sell counterfeit versions of Complainant’s goods. Where respondents incorporate the marks and similar elements of complainants’ web offerings, evidence of such use has been found to refute the rights and legitimate interests of those respondents. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides evidence that Respondent has attempted to sell counterfeit products of Complainant through arranging the resolving website to appear as though it is Complainant. Therefore, this Panel agrees that this use does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Complainant argues that Respondent has registered and used <braceletchanluu.nu> in bad faith. First Complainant contends that Respondent’s attempted sale of counterfeit goods through passing itself off as Complainant shows that it has engaged in bad faith proscribed by Policy ¶ 4(b)(iv). Attempted sale of counterfeit products is clear evidence of Policy ¶ 4(b)(iv) bad faith. See Affliction, Inc. v. Chinasupply, FA 1223521 (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). Accordingly, the Panel agrees that Complainant's Exhibit demonstrates that Respondent has intended to profit from Internet user confusion pursuant to the language of Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that Respondent registered and used <braceletchanluu.nu> with actual knowledge of Complainant and its rights in the CHAN LUU mark because of the use made of the mark at the resolving website. While actual knowledge is a nebulous concept, a totality of circumstances must be considered to make such a determination. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). The Panel notes that Complainant has provided evidence of its own website and Respondent’s and that, coupled with the full incorporation of the CHAN LUU mark in the at-issue domain name and on the resolving website, and thus infers that Respondent had actual knowledge and registered and used the disputed domain name in bad faith pursuant to 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 <braceletchanluu.nu> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 9, 2017
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