Chan Luu Inc. v. Wode and wo de
Claim Number: FA1211001470063
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Wode / wo de (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusalebraceletsm.com>, <chanluuusonlinesale.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com>, registered with Fastdomain, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2012; the National Arbitration Forum received payment on November 6, 2012.
On November 8, 2012, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusalebraceletsm.com>, <chanluuusonlinesale.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names are registered with Fastdomain, Inc. and that Respondent is the current registrant of the names. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2012, 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@chanluuwrapbraceletsz.com, postmaster@chanluusaledeal.com, postmaster@chanluusalebraceletsm.com, postmaster@chanluuusonlinesale.com, postmaster@chanluusaletime.com, postmaster@chanluubraceletsdz.com, and postmaster@chanluudeals.com. Also on November 13, 2012, 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 December 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 issues 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.
A. Complainant
Complainant established its jewelry business in 1995 under the CHAN LUU name, and has since expanded to sell fashion accessories and clothing, which it distributes to retail stores around the world. Complainant owns the website found at <chanluu.com>, which provides consumers with information on products sold under its CHAN LUU mark. Complainant has used the CHAN LUU mark continuously since its creation and has developed significant goodwill in the mark, which it perpetuates through prominent exposure in editorials, fashion blogs, magazines, and other press coverage. Complainant owns the CHAN LUU mark and has several trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,869,029 registered August 3, 2004). Complainant also owns a trademark registration with the Hong Kong Intellectual Property Department (“HKIPD”) for the CHAN LUU mark (Reg. No. 300,657,973 registered June 13, 2006). Complainant owns numerous other trademark registrations globally for the CHAN LUU mark, including with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA744858 registered August 6, 2009), and the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 956,358 registered September 28, 2006).
Respondent registered the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusalebraceletsm.com>, <chanluuusonlinesale.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names. Each of the disputed domain names is confusingly similar to Complainant’s CHAN LUU mark. The <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names resolve to websites selling goods in direct competition with Complainant’s business, and the websites are visually similar to Complainant’s website. The <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names do not resolve to any website at all. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of any of the domain names, nor is Respondent commonly known by the domain names. Respondent registered the disputed domain names in bad faith, by using at least some of the domain names to compete commercially with Complainant’s business, and using other domain names to link to websites that are not in service. Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names, and constructive knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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 claims to own rights in the CHAN LUU mark through its numerous trademark registrations with various international agencies, such as the USPTO (e.g., 2,869,029 registered August 3, 2004), HKIPD (Reg. No. 300,657,973 registered June 13, 2006), the CIPO (Reg. No. TMA744858 registered August 6, 2009), and the MIIP (e.g., Reg. No. 956,358 registered September 28, 2006). The Panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), stated that the complainant had satisfied the Policy through its many trademark registrations with government agencies around the world. The Panel finds that Complainant’s rights in its CHAN LUU mark are secured by its various global trademark registrations, for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusalebraceletsm.com>, <chanluuusonlinesale.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names are confusingly similar to its CHAN LUU mark. Complainant claims that each of the domain names includes a generic term (“sale,” “online,” or “deal”), descriptive term (“wrap bracelets” or “bracelets”), or geographic term (“us”) and that the <chanluuwrapbraceletsz.com>, <chanluusalebraceletsm.com>, and <chanluubraceletsdz.com> domain names contain a misspelling of the descriptive term “bracelets.” The Panel also notes that each of the domain names includes Complainant’s CHAN LUU mark without the space between the words in the mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that by using the Complainant’s CHAN LUU mark without the spaces, and including a generic, descriptive, or geographic term, as well as a gTLD, renders each of the disputed domain names confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to 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 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.”); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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); 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 contends that Respondent is not commonly known by any of the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusalebraceletsm.com>, <chanluuusonlinesale.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names, based on the WHOIS information, which identifies “Wode and wo de” as the registrant. Further, Complainant asserts that Respondent lacks permission to use the CHAN LUU mark in any way. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), determined that the respondent was not commonly known by the disputed domain names when the WHOIS information did not support such a finding, and the complainant claimed that the respondent was not authorized to register a domain name using the complainant’s registered mark. The Panel determines that Respondent’s lack of authority to register a domain name using the CHAN LUU mark, as well as the WHOIS information, demonstrate that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant makes the assertion that Respondent uses the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names to maintain a website that attempts to visually copy the content found at Complainant’s website and to make sales for counterfeit versions of Complainant’s goods. Complainant alleges that Respondent designed the corresponding websites to look similar to Complainant’s, by its prominent use of the CHAN LUU mark at each website and using the same orange color and font used by Complainant at its own website. The Panel finds that by using the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names to attempt to pass itself off as Complainant’s website and to sell counterfeit items using the CHAN LUU mark, Respondent does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant contends that Respondent does not make an active use of the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names, arguing that each domain name does not even resolve to a website and such non-use is evidence that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of those domain names. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel concluded that the respondent’s failure to use the disputed domain name demonstrated that the respondent was not using the domain names in a way to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s failure to create a webpage to correspond with the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names demonstrates that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends that Respondent registered and uses the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names in bad faith by its attempt to redirect Internet users to its website to make sales in competition with Complainant’s business. Complainant alleges in its Policy ¶ 4(a)(ii) section that Respondent sells counterfeit items using the CHAN LUU mark at the websites corresponding with the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names. The panel in Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), stated that the complainant’s business was disrupted by the respondent’s use of the disputed domain name for the purpose of selling counterfeit products. The Panel determines that Respondent’s registration and use of the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names is in bad faith pursuant to Policy ¶ 4(b)(iii) as demonstrated by its attempt to disrupt Complainant’s business by selling counterfeit products at the resolving websites.
Complainant makes the argument that Respondent’s use of the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names is in bad faith because the confusingly similar domain names redirect Internet users to Respondent’s website, which offers competing goods in direct competition with Complainant’s business. The Panel finds that Complainant’s contention in its Policy ¶ 4(a)(ii) section that the goods sold at Respondent’s resolving website are counterfeit also serves to demonstrate that Respondent registered and uses the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names in bad faith under Policy ¶ 4(b)(iv) by making a commercial profit from Internet consumers confused by the domain name’s association with Complainant and attracted to resolving website. 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).
Complainant asserts in its Policy ¶ 4(a)(ii) section that Respondent attempts to pass itself off as Complainant by establishing websites at the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names that are designed to imitate Complainant’s website by using a substantially similar color scheme and font, as well as using Complainant’s CHAN LUU mark at the homepages. The Panel determines that Respondent’s deliberate attempt to design its website to look identical to that of Complainant’s is evidence of Respondent’s bad faith registration and use of the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names under Policy ¶ 4(a)(iii). 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.”).
Previous panels have found that the factors listed in Policy ¶ 4(b) describe criteria under which a respondent’s bad faith be found but that those factors are not exclusive to a finding of bad faith. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). The Panel determines that additional circumstances support the finding of bad faith under Policy ¶ 4(a)(iii).
Complainant states in its Policy ¶ 4(a)(ii) section that the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names fail to resolve to any websites at all. The Panel observes that Complainant provides evidence that show screenshots from the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names that display an “error” message when attempting to access the webpages associated with the domain names. The Panel finds that by failing to create and maintain a website corresponding to each of the domain names, Respondent registered and uses the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the 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).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names, as demonstrated by Respondent’s “explicit and excessive” use of the mark at the resolving websites. Complainant further contends that Respondent had constructive knowledge of all of the domain names at issue in this matter due to Complainant’s existing trademark registrations of the CHAN LUU mark at the time Respondent registered the domain names. The Panel concludes that constructive knowledge alone does not suffice to demonstrate bad faith registration pursuant to Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). The Panel infers that Respondent’s actual knowledge of Complainant’s CHAN LUU mark in regards to the <chanluusalebraceletsm.com> and <chanluuusonlinesale.com> domain names also applies to Respondent’s actual knowledge at the time it registered the <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names, since all the disputed domain names were registered on the same day. The Panel therefore concludes that Respondent’s actual knowledge of Complainant’s CHAN LUU mark at the time it registered each of the disputed domain names provides evidence of Respondent’s bad faith registration 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 has proven this element.
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 <chanluuwrapbraceletsz.com>, <chanluusaledeal.com>, <chanluusalebraceletsm.com>, <chanluuusonlinesale.com>, <chanluusaletime.com>, <chanluubraceletsdz.com>, and <chanluudeals.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 19, 2012
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