Chan Luu Inc. v. sguanmminglong / sguanm
Claim Number: FA1212001474664
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is sguanmminglong / sguanm (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <braceletschanluu.com>, <chanluustore.com>, <chanluushops.com>, <chanluusales.com>, <jewelrychanluu.com>, <chanluus.com>, <chanluufactory.com>, <chanluusbracelet.com>, <chanluuonlines.com>, and <chanluuonlinesale.com>, registered with ENAME TECHNOLOGY CO., LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2012; the National Arbitration Forum received payment on December 6, 2012.
On December 6, 2012, ENAME TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <braceletschanluu.com>, <chanluustore.com>, <chanluushops.com>, <chanluusales.com>, <jewelrychanluu.com>, <chanluus.com>, <chanluufactory.com>, <chanluusbracelet.com>, <chanluuonlines.com>, and <chanluuonlinesale.com> domain names are registered with ENAME TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the names. ENAME TECHNOLOGY CO., LTD. has verified that Respondent is bound by the ENAME TECHNOLOGY CO., LTD. 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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@braceletschanluu.com, postmaster@chanluustore.com, postmaster@chanluushops.com, postmaster@chanluusales.com, postmaster@jewelrychanluu.com, postmaster@chanluus.com, postmaster@chanluufactory.com, postmaster@chanluusbracelet.com, postmaster@chanluuonlines.com, and postmaster@chanluuonlinesale.com. Also on December 17, 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 January 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
A. Complainant
1. FACTUAL AND LEGAL GROUNDS SUPPORTING THE COMPLAINT
Complainant Chan Luu Inc. (“Complainant”) owns the exclusive rights to the trademark and trade name “CHAN LUU,” which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories.
Respondent registered ten domain names which predominantly include Complainant’s trademark and are confusingly similar to Complainant’s trademark. Moreover, nine of Respondent’s subject domain names do not resolve to any websites. The remaining domain name, chanluushops.com, redirects users to abercrombies-fr.com, where Respondent sells goods unrelated to Complainant’s CHAN LUU goods. Respondent is clearly engaged in cybersquatting and the subject domain names should be transferred to Complainant.
a) Complainant’s Company
Complainant established its CHAN LUU jewelry business in 1995 in Los Angeles, California. Complainant operates CHAN LUU showrooms in Los Angeles and New York City. Over the past 17 years, Chan Luu has expanded its business to include fashion accessories and clothing. Today, CHAN LUU products are sold around the world via major retail stores including Neiman Marcus, Saks Fifth Avenue, and Bergdorf Goodman in the U.S., Harvey Nichols in London, Mitsukoshi in Japan, and many other specialty stores around the world. Since as early as 2006, Complainant has operated a website accessible at chanluu.com, which provides information on the clothing, jewelry, handbags, and accessories sold under the CHAN LUU trademark. The website also features retail store services for the CHAN LUU products including clothing, jewelry, handbags, and accessories.
b) Complainant’s Rights In Its CHAN LUU Mark
Complainant has, through its extensive and continuous use of its CHAN LUU trademark, service mark, and trade name, created tremendous goodwill in its CHAN LUU mark (collectively the “CHAN LUU Mark”). Complainant’s use of its CHAN LUU Mark has been worldwide, with extensive sales in the United States, Japan, China, and Europe. Complainant’s extensive use of its CHAN LUU Mark is evidenced in the many newspaper articles and magazine articles. Complainant’s website, available at http://www.chanluu.com/v/pages/press/pages/cplus.html also provides an extensive collection of press coverage; each clickable magazine cover on the website links to a related article in the magazine (including photographs of the CHAN LUU products featured).
Complainant and its CHAN LUU goods have been extensively featured in editorials, and extensively discussed by established fashion bloggers. CHAN LUU products are frequently and prominently featured in professional photographs, and worn by many of the world’s most notable celebrities.
In addition to its extensive common law rights, Complainant also owns numerous trademark registrations for its CHAN LUU Mark around the world, including in Canada, China the European Community, Hong Kong, India, Japan, the Republic of Korea, Mexico, the United States, and Vietnam. A chart detailing Complainant’s trademark registrations for its CHAN LUU Mark is attached to this Complaint as Exhibit E. Complainant owns incontestable United States Trademark Registration Nos. 2,869,029 and 3,028,982 for CHAN LUU, and United States Trademark Registration No. 3,314,816 for CHAN LUU. Complainant also owns Chinese Trademark Registration No. 5,497,349 for CHAN LUU.[1]
c) The Subject Domain Names Are Confusingly Similar To Complainant’s CHAN LUU Mark
To support a finding that a subject domain name is identical or confusingly similar to a complainant’s mark, all that is required is:
that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.
Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 296 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (holding JEWS FOR JESUS and jewsforjesus.org confusingly similar).
Each of the subject domain names is confusingly similar to Complainant’s CHAN LUU Mark. Each domain name features Complainant’s entire CHAN LUU Mark as the dominant portion of the domain name, and merely adds a generic term (i.e., “store,” “shops,” “sales,” “factory,” or “online”), and/or a term descriptive of Complainant’s goods (i.e., “bracelet(s)” or “jewelry”), or an additional letter (i.e., “s”), and/or a geographic term (i.e., “us”) to Complainant’s CHAN LUU Mark. The addition of these terms or letters does not distinguish the subject domain names from Complainant’s CHAN LUU Mark pursuant to ¶4(a)(i) of the Policy.
The addition of a generic term to Complainant’s CHAN LUU Mark does not distinguish any of the subject domain names from Complainant’s mark pursuant to ¶4(a)(i) of the Policy. As the panel in International Business Machines Corporation v. Eminent Domain Licensing Enterprise explained, “[i]t has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark.” Int’l Bus. Mach. Corp. v. Eminent Domain Lic. Ent., D2012-0700 (WIPO Jun. 18, 2012) (finding ibimshop.com confusingly similar to the complainant’s IBM mark); see Dolce & Gabbana s.r.l. v. Zhifang Huang, D2012-0699 (WIPO May 23, 2012) (finding the domain name dolcegabbanastores.com confusingly similar to the complainant’s DOLCE & GABBANA mark); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY,” thus satisfying Policy ¶4(a)(i)).
The addition of a term descriptive of Complainant’s goods to Complainant’s CHAN LUU Mark does not distinguish any of the subject domain names from Complainant’s mark pursuant to ¶4(a)(i) of the Policy. In Parfums Christian Dior v. 1 Netpower, Inc., the panel found that domain names comprised of a trademark and the descriptive words “fashion” or “cosmetics” were confusingly similar under the Policy. Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000). See Bridgestone Corp. v. Vahid Chitsaz, FA 15367 (Nat. Arb. Forum Aug. 1, 2007) (finding that the addition of the related terms “tire” and “sale” to complainant’s BRIDGESTONE mark “do not negate any confusing similarity between the disputed domain name and the mark”).
Further, the mere addition of an extra letter to Complainant’s CHAN LUU Mark in the subject domain names does little to distinguish them from Complainant’s mark pursuant to the Policy. Common misspellings and/or typographical variations have consistently been found to satisfy the confusingly similar prong of ¶4(a)(i) of the Policy. AltaVista v. O.F.E.Z. et al., Case No. D2000-1160 (WIPO Feb. 28, 2001) (finding a misspelling or typographical variation of a well‑known mark to be “confusingly similar” to the complainant’s mark in violation of ¶4(a)(i)); Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, Case No. D2000-0330 (WIPO Jun. 7, 2000) (finding domain names brtannica.com, britannca.com, and britannica.com virtually identical and confusingly similar to complainant’s marks “BRITANNICA” and britannica.com).
Similarly, the mere addition of a single letter does little to distinguish the subject domain names from Complainant’s CHAN LUU Mark pursuant to ¶4(a)(i) of the Policy. It is well established that likelihood of confusion is not eliminated, or even necessarily reduced, by the addition of a letter to a complainant’s mark. See, e.g., 1-800-FLOWERS.COM, INC. v. Megan Baltimore, D2012-0270 (WIPO Apr. 2, 2012) (“The addition of the letter ‘i’, which is often used as part of the name for a business conducted over the Internet, does not serve to distinguish the Domain Name from Complainant’s mark.”).
Moreover, the addition of a geographic term to Complainant’s CHAN LUU Mark does not distinguish any of the subject domain names from Complainant’s mark pursuant to ¶4(a)(i) of the Policy. As the panel in Broadcom Corporation v. Ayers International Group, Inc. explained, the domain name broadcom-usa.com was confusingly similar to complainant’s BROADCOM trademark because it merely added the geographic term “USA” to the complainant’s mark. Broadcom Corp. v. Ayers Int’l Grp., Inc., FA112562 (Nat. Arb. Forum Jul. 24, 2002). See also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding common geographic qualifiers or generic nouns rarely differentiate a domain name comprising a mark(s) in which another party has rights).
Likewise, the addition of generic top-level domain (“gTLD”) names such as “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis. See Dermalogica, Inc. and The Int’l Dermal Inst., Inc. v. Andrew Porter and Zen Day Spa, FA 1155710 (Nat. Arb. Forum Apr. 14, 2008). Thus, the addition of “.com” is insufficient to avoid a finding of confusing similarity between the subject domain names and Complainant’s CHAN LUU Mark.
As detailed in the table below, all of the subject domain names include Complainant’s entire CHAN LUU Mark as the dominant portion of the domain name, and merely add a generic term (i.e., “store,” “shops,” “sale(s),” “factory,” or “online”), an otherwise generic term descriptive of Complainant’s goods (i.e., “bracelet(s)” or “jewelry”) or services (i.e., the sale of Complainant’s CHAN LUU goods), or an additional letter or letters (i.e., “s”), and/or a geographic term (i.e., “us”) to Complainant’s CHAN LUU Mark. With regards to the above mentioned generic terms found in some combination in nine of the ten subject domain names, these terms are merely descriptive of Complainant’s CHAN LUU goods or retailing services (i.e., the sale of its CHAN LUU goods). Because Complainant’s CHAN LUU Mark is extensively used in connection with the sale of bracelets, jewelry, clothing, and fashion accessories, the addition of these generic terms further increases the confusing similarity of the subject domain names with Complainant’s CHAN LUU Mark. Furthermore, the remaining subject domain name, chanluus.com, simply adds the letter “s” at the end of Complainant’s CHAN LUU Mark, merely pluralizing the CHAN LUU Mark and/or integrating the geographic term “U.S.,” short for United States, as part of the CHAN LUU Mark and, thus, doing little to distinguish the subject domain name from Complainant’s CHAN LUU Mark.
[Complainant provided a table listing each domain name and how it is confusingly similar to Complainant’s marks]
braceletschanluu.com Adds the generic term “bracelets,” descriptive of Complainant’s CHAN LUU goods to Complainant’s CHAN LUU Mark.
chanluustore.com Adds the generic term “store,” descriptive of Complainant’s retailing services (i.e., sale of its CHAN LUU goods) to Complainant’s CHAN LUU Mark.
chanluushops.com Adds the generic term “shops,” descriptive of Complainant’s retailing services (i.e., the sale of its CHAN LUU goods) to Complainant’s CHAN LUU Mark.
chanluusales.com Adds the generic term “sales,” descriptive of Complainant’s retailing services (i.e., the sale of its CHAN LUU goods) to Complainant’s CHAN LUU Mark.
jewelrychanluu.com Adds the generic term “jewelry,” descriptive of Complainant’s CHAN LUU goods to Complainant’s CHAN LUU Mark.
chanluus.com Adds a common misspelling and/or typographical variation with the letter “s,” which could merely represent a plural variation of Complainant’s CHAN LUU Mark, or an integration of the geographic term “us” (United States is Complainant’s largest market and home country) to Complainant’s CHAN LUU Mark.
chanluufactory.com Adds the generic term “factory,” descriptive of Complainant’s retailing services (i.e., the factory where it sells its CHAN LUU goods) to Complainant’s CHAN LUU Mark.
chanluusbracelet.com Adds the common misspelling and/or typographical variation with the letter “s,” which could merely represent a plural variation of Complainant’s CHAN LUU Mark, or an integration of the geographic term “us” (United States is Complainant’s largest market and home country), plus the generic term “bracelet,” descriptive of Complainant’s CHAN LUU goods to Complainant’s CHAN LUU Mark.
chanluuonlines.com Adds the generic term “online,” descriptive of Complainant’s services (i.e., the online sale of its CHAN LUU goods), plus the addition of the letter “s” at the end of “online,” a common misspelling and/or typographical variation of the word “online,” to Complainant’s CHAN LUU Mark.
chanluuonlinesale.com Adds the generic terms “online” and “sale,” descriptive of Complainant’s retailing services (i.e., the sale of its CHAN LUU goods online) to Complainant’s CHAN LUU Mark.
Accordingly, both applicable case law and prior administrative proceedings support a finding that the subject domain names are confusingly similar to Complainant’s CHAN LUU Mark.
d) Respondent Has No Rights Or Legitimate Interest In The Subject Domain Names
Respondent has no rights or legitimate interest in the subject domain names. Pursuant to ¶4(a)(ii) of the Policy, once a complainant asserts a prima facie case against a respondent, the respondent bears the burden of proving that it has rights or legitimate interests in the subject domain name. G.D. Searle & Co. v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant has not licensed Respondent to use its CHAN LUU Mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark. Respondent has no legitimate reason for using the CHAN LUU Mark as the dominant part of any of the subject domain names.
i) Respondent Is Not Making A Bona Fide Offering Of Goods Or Services At The Subject Domain Names
The Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the subject domain names. For instance, Respondent could have rights under ¶4(c)(i) of the Policy if “before any notice to respondent of the dispute,” Respondent uses or prepares to use “the domain name in connection with a bona fide offering of goods or services.”
However, when the disputed domain name does not even resolve to a website, such non-use demonstrates that the respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶4(c)(i). Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum Jul. 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrated that the respondent was 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)); NIC Industries, Inc. v. Abadaba S.A., FA 448503 (Nat. Arb. Forum Jul. 17, 2012) (finding that because Respondent was not making an active use of the disputed domain name, Respondent was not making a ¶4(c)(i) bona fide offering of goods or services or a ¶4(c)(iii) legitimate noncommercial or fair use of the domain name); Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to ¶4(c)(iii) of the Policy); Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in a domain name that did not resolve to a website, where respondent was also not commonly known by the domain name).
Here, nine of the ten subject domain names (braceletschanluu.com, chanluustore.com, chanluusales.com, jewelrychanluu.com, chanluus.com, chanluufactory.com, chanluusbracelet.com, chanluuonlines.com, and chanluuonlinesale.com) do not resolve to an active website.
The remaining domain name, chanluushops.com, redirects users to abercrombies-fr.com, where Respondent sells goods unrelated[2] to Complainant’s CHAN LUU goods. Redirecting Internet users from a domain name to an unrelated commercial website for commercial gain is not a bona fide offering of goods or services under ¶4(c)(i) of the Policy, or a legitimate noncommercial or fair use pursuant to ¶4(c)(iii) of the Policy. The Saint At Large, Inc. v. blackparty.com c/o Whois Privacy Service, FA 1334316 (Nat. Arb. Forum Aug. 17, 2010). See also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum Jun. 11, 2006) (finding no ¶4(c)(i) bona fide use where the subject domain name redirected Internet users to websites that were unrelated to the complainant’s mark); The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding no rights or legitimate interests where the subject domain name was redirecting Internet users to the respondent’s own website, which promoted the respondent’s books, but was unrelated to the complainant).
Here, the subject domain name chanluushops.com redirects Internet users to an unrelated commercial website at www.abercrombies-fr.com, for which Respondent receives a commercial benefit.
Accordingly, Respondent is not making a bona fide offering of goods or services at any of the subject domain names and therefore has no legitimate interest in any of the subject domain names under the circumstances described in ¶(4)(c)(i) of the Policy.
ii) Respondent Is Not Commonly Known By The Subject Domain Names
A respondent’s claim of rights or legitimate interests may also be supported by ¶4(c)(ii) of the Policy when the party has “been commonly known by the domain name,” even if no trademark or service mark rights have been acquired. In this case, Respondent is not commonly known by the subject domain name. Respondent’s name, as listed in the whois information for the subject domain names, is “sguanmminglong” and/or “sguanm.”
Further, Complainant has not given Respondent permission to use its CHAN LUU Mark. Respondent’s unauthorized use of Complainant’s registered service mark and trademarks supports a lack of rights and legitimate interests in the subject domain names. Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA 040087 (Nat. Arb. Forum Aug. 31, 2007) (respondent was not commonly known by the disputed domain name because, in part, respondent lacked authorization to use complainant’s registered service mark); see also American Girl, LLV v. George Rau, FA 308206 (Nat. Arb. Forum Apr. 2, 2010) (respondent was not commonly known by the disputed domain name when respondent was “not licensed or otherwise authorized to use” complainant’s mark). Accordingly, Respondent cannot defend under Policy ¶4(c)(ii) by claiming that Respondent is known by the subject domain names.
iii) Respondent Is Not Making Legitimate Noncommercial Or Fair Use Of The Subject Domain Names
Another circumstance that would support a respondent’s claim of rights or legitimate interest is detailed in ¶4(c)(iii) of the Policy, which states:
you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to these circumstances, as discussed above, Respondent is not making any use of the subject domain names braceletschanluu.com, chanluustore.com, chanluusales.com, jewelrychanluu.com, chanluus.com, chanluufactory.com, chanluusbracelet.com, chanluuonlines.com, or chanluuonlinesale.com. Further, regarding the domain name chanluushops.com, Respondent’s use is plainly commercial, as he redirected Internet users to his website at www.abercrombies-fr.com, which sells goods. Thus, Respondent’s use of the domain name chanluushops.com is clearly neither noncommercial, nor a fair use. Accordingly, none of the subject domain names are being used for a legitimate noncommercial or fair use as described in ¶4(c)(iii) of the Policy.
e) Respondent Has Registered And Is Using The Subject Domain Names In Bad Faith
The Policy expressly details specific circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” (Policy, ¶4(b)). Any one of these express circumstances is sufficient to establish bad faith. A first circumstance applicable here is detailed in ¶4(b)(iv) of the Policy, which states that
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It is well settled that the non-use of a domain name that is confusingly similar to a complainant’s mark constitutes use in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding the mere holding of an infringing domain name without active use satisfies the bad faith requirement of the Policy); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (finding non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); Michelin North America, Inc. v. Energie Media Group, FA 451882 (Nat. Arb. Forum Aug. 7, 2012) (finding registration and use in bad faith where respondent’s websites were inactive, and there was no evidence the domain names were being used for any other purpose).
Regarding the subject domain names braceletschanluu.com, chanluustore.com, chanluusales.com, jewelrychanluu.com, chanluus.com, chanluufactory.com, chanluusbracelet.com, chanluuonlines.com, and chanluuonlinesale.com, these domain names are confusingly similar to Complainant’s CHAN LUU Mark, and Respondent’s failure to make an active use of these domain names is evidence of Respondent’s bad faith under Policy ¶4(a)(iii).
Further, misappropriation of a complainant’s mark to “redirect Internet users to an unrelated website operated by Respondent or an unrelated website operated by a third-party, for Respondent’s commercial gain, is evidence that Respondent registered and used the [subject] domain name in bad faith under Policy ¶4(b)(iv).” The Saint At Large, Inc. v. blackparty.com c/o Whois Privacy Service, supra; see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding evidence of bad faith in registration of the subject domain name bigtex.net for the purpose of infringing on the complainant’s goodwill, and attracting users to the respondent’s own website); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent’s remaining subject domain name chanluushops.com is confusingly similar to Complainant’s CHAN LUU Mark, and Respondent’s act of redirecting this subject domain name to the unrelated third-party site at www.abercrombies-fr.com is evidence of registration and use in bad faith pursuant to ¶4(b)(iv) of the Policy. The only reason for Respondent’s registration of this confusingly similar domain name, and the redirecting of Internet users to the website hosted at www.abercrombies-fr.com is to unlawfully misdirect users searching for Complainant to this unrelated third-party website for Respondent’s own commercial gain. Accordingly, Respondent’s registration and use of this subject domain name satisfies the requirements of Policy ¶¶4(b)(iii) and (iv).
The registration of a confusingly similar domain name with constructive knowledge of Complainant’s Mark, without more, is evidence of bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii). Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002). Accordingly, Respondent registered all of the ten subject domain names with constructive knowledge of Complainant’s rights in the CHAN LUU Mark due to Complainant’s prior trademark registration of the CHAN LUU Mark throughout the world, and within Respondent’s own jurisdiction.
Moreover, the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See Household Int’l, Inc. v. Cyntom Enters., FA 096784 (Nat. Arb. Forum Nov. 7, 2000) (finding respondent’s registration of a well‑known business name with hopes of attracting complainant’s customers supports bad faith). Because the CHAN LUU Mark is so obviously connected with Complainant, and because the subject domain names so clearly reference Complainant’s CHAN LUU Mark, registration by Respondent, who has no connection with Complainant, strongly supports a finding of bad faith on these grounds.
Finally, the express circumstances detailed in the Policy are not an exhaustive list. The Policy states, in pertinent part, “the following circumstances, in particular but without limitation . . . . shall be evidence of [bad faith].” Here, Respondent’s bad faith is also evidenced by registration of numerous other domain names which are confusingly similar to well-known trademarks. For example, Respondent has registered domain names that are confusingly similar to other well-known marks including LONGCHAMP, COACH, BOSE, MONSTER BEATS, and LANCEL. Accordingly, a finding that Respondent registered and is using the subject domain names in this matter with bad faith is also supported.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 numerous trademark registrations to the CHAN LUU mark around the world, including registrations in the United States and China, and uses the mark in its business retailing jewelry and accessories. See, e.g., USPTO Reg. No. 2,869,029 registered on Aug. 3, 2004; see also SAIC Reg. No. 5,497,349 registered on Aug. 21, 2009. The Panel finds Complainant’s registration of its CHAN LUU mark in Respondent’s country of origin, China, satisfies Complainant’s showing under Policy ¶4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶4(a)(i)).
Complainant contends Respondent’s <braceletschanluu.com>, <chanluustore.com>, <chanluushops.com>, <chanluusales.com>, <jewelrychanluu.com>, <chanluus.com>, <chanluufactory.com>, <chanluusbracelet.com>, <chanluuonlines.com>, and <chanluuonlinesale.com> domain names are confusingly similar to Complainant’s CHAN LUU mark. Most of the domain names merely add a generic term or a term descriptive of Complainant’s CHAN LUU goods. The rest of the domain names merely add letters to the CHAN LUU mark. The Panel finds the addition of the terms “store,” “shops,” “onlines,” “factory,” and “onlinesale” to the various disputed domain names fails to adequately distinguish Respondent’s domain names from Complainant’s mark these are generic terms when compared to Complainant’s mark. 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). The addition of “bracelets,” “jewelry,” and “bracelet” in the remaining disputed domain names fails to adequately differentiate the domain name from the CHAN LUU mark because all of these words are merely descriptive of the kinds of products Complainant sells under its CHAN LUU mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). The Panel accepts Complainant’s argument the addition of the letter “s” to the CHAN LUU mark fails to adequately differentiate the domain name from the mark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)). All of the disputed domain names include the generic top-level domain name “.com,” but this addition is not considered in a Policy analysis because every domain name must have a TLD (either a gTLD or ccTLD). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). For these reasons, the Panel finds each of the disputed domain names are confusingly similar to Complainant’s CHAN LUU marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by any of the disputed domain names. Complainant notes the WHOIS information for all of the domain names lists “sguanmminglong” as a registrant of all of the domains, with several of the names listing “sguanmminglong / squanm” as the registrant. Complainant has not given Respondent permission to use the CHAN LUU MARK, and Respondent is not a licensee of Complainant. Previous panels have found the absence of relevant information linking a respondent to a disputed domain name illustrates the respondent is not commonly known by said domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). This Panel concurs and finds Respondent has never been known by any of these disputed domain names under Policy ¶4(c)(ii).
Complainant claims the <chanluushops.com> domain name resolves to the <abercrombies-fr.com> domain name where Respondent sells goods unrelated to Complainant’s CHAN LUU goods. Complainant argues the use of this confusingly similar domain name to resolve to a website where Respondent is selling unrelated commercial goods is not a bona fide offering of goods or services. This domain name resolves to a website that appears to pass itself off as the Abercrombie & Fitch company and the website sells a variety of women’s apparel. The Panel finds the use of a confusingly similar domain name to attract Internet users to Respondent’s unrelated products is not a bona fide offering of goods or services as intended under Policy ¶4(c)(i). U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Complainant points out the <braceletschanluu.com>, <chanluustore.com>, <chanluusales.com>, <jewelrychanluu.com>, <chanluus.com>, <chanluufactory.com>, <chanluusbracelet.com>, <chanluuonlines.com>, and <chanluuonlinesale.com> do not resolve to webpages. Complainant argues this “non-use” of the disputed domain names does not constitute a legitimate noncommercial or fair use or a bona fide offering of goods or services. The Panel finds Respondent’s failure to use these domain names does not give Respondent rights under either Policy ¶4(c)(i) or (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). While domain names can be used for a variety of other purposes, Respondent has not made that claim. The Panel finds Respondent is using the domain names without providing a Policy ¶4(c)(i) bona fide offering of goods or a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using the <chanluushops.com> domain name to resolve to a website selling unrelated goods. Complainant argues Respondent is hoping to redirect confused Internet users to the domain name in order to attract a commercial gain by choosing the confusingly similar domain name. Respondent’s use of the domain name illustrates bad faith use and registration because the domain name was chosen to given Internet users the false belief Complainant was affiliated with or endorsed the products sold on the disputed domain name. See 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). The Panel finds Respondent registered and is using the <chanluushops.com> domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant argues Respondent’s failure to use the remaining domain names indicates bad faith. The Policy does not limit a finding of bad faith to the examples listed in ¶4(b). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Complainant contends Respondent’s non-use of the <braceletschanluu.com>, <chanluustore.com>,<chanluusales.com>, <jewelrychanluu.com>, <chanluus.com>, <chanluufactory.com>, <chanluusbracelet.com>, <chanluuonlines.com>, <chanluuonlinesale.com> domain names constitutes registration and use in bad faith. These domain names resolve to blank webpages, error messages, and other content-less websites. The failure to use a domain name at all raises the refutable presumption of bad faith registration and use for this Panel.
Previous panels have found a respondent’s inactive use of a domain name after a period as short as three months constitutes bad faith use and registration. 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). This Panel concurs and Respondent has done nothing to rebut the presumption. Therefore, this Panel finds Respondent has registered and uses the domain names in bad faith under Policy ¶4(a)(iii).
The Panel finds Respondent had actual knowledge of Complainant’s mark and Complainant's rights due to the fame of the mark and the number of domain names Respondent registered. The Panel holds Respondent registered the ten disputed domain names in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <braceletschanluu.com>, <chanluustore.com>, <chanluushops.com>, <chanluusales.com>, <jewelrychanluu.com>, <chanluus.com>, <chanluufactory.com>, <chanluusbracelet.com>, <chanluuonlines.com>, <chanluuonlinesale.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 14, 2013
[1] Complainant notes that Respondent appears to list an address within China as Respondent’s address in the whois data for the subject domain name.
[2] It appears to Complainant Respondent is selling counterfeit ABERCROMBIE & FITCH goods at this website. However, whether those goods are authentic or not is irrelevant in this case.
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