Chan Luu Inc. v. xiao zeng and x iaozeng
Claim Number: FA1301001482948
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is xiao zeng and x iaozeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, <chanluusalejp.com>, and <chanluuonlinejp.com>, registered with Shanghai Yovole Networks, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2013; the National Arbitration Forum received payment on January 30, 2013.
The registrar, Shanghai Yovole Networks, Inc. did not respond to repeated requests to lock the domain name and verify necessary information. On February 12, 2013, the Forum reported this delinquency to ICANN and proceeded to commence the case.
On February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@chanluujapans.com, postmaster@chanluusjapan.com, postmaster@chanluuoutletjp.com, postmaster@chanluusalejp.com, postmaster@chanluuonlinejp.com. Also on February 12, 2013, 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.
On February 16, 2013, Shanghai Yovole Networks, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, <chanluusalejp.com>, and <chanluuonlinejp.com> domain names are registered with Shanghai Yovole Networks, Inc. and that Respondent is the current registrant of the names. Shanghai Yovole Networks, Inc. has verified that Respondent is bound by the Shanghai Yovole Networks, 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”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., owns trademark registrations in the CHAN LUU mark with the United States Patent & Trademark Office (“USPTO”), see Reg. No. 2,869, 029 registered on August 3, 2004, and with the Chinese State Administration for Industry and Commerce (“SAIC”), see Reg. No. 5,497,349 registered on Aug. 21, 2009.
Respondent, xiao zeng and x iaozeng, registered all of the domain names on December 1, 2012. Respondent’s <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, and <chanluusalejp.com> domain names each resolve to websites that purport to sell goods in direct competition with Complainant’s business. Respondent’s <chanluuonlinejp.com> domain name resolves to an inactive website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Both of the listed Respondents appear to have identical names, albeit spaced differently. Therefore, the Panel finds that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant has rights in the CHAN LUU mark by way of its trademark registrations. The registration of a mark with multiple trademark agencies is sufficient evidence of rights under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant next contends that each domain name is confusingly similar to Complainant’s CHAN LUU mark. All of the domain names take the entire CHAN LUU mark and add letters such as “s,” generic terms, geographic terms descriptive of Japan (“japan” and “jp”), terms descriptive of Complainant’s business, and the gTLD “.com.” Respondent removed the spacing from the CHAN LUU mark, although neither the deletion of spacing nor the addition of a gTLD are relevant in this proceeding. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, <chanluusalejp.com>, and <chanluuonlinejp.com> domain names all merely combine the mark with descriptors of the country Japan, along with generic terms such as “outlet,” “sale,” and “online,” and in some instances an extraneous letter “s.” Therefore, the domain names are all confusing similar to the CHAN LUU mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); 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)); 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)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant alleges that Respondent is not commonly known by the <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, <chanluusalejp.com>, and <chanluuonlinejp.com> domain names. The WHOIS information for all of the domain names lists “xiao zeng” or “x iaozeng” as the registrant. Complainant alleges that it has not otherwise permitted or authorized the use of its mark in Respondent’s domain names. The Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent is not providing a bona fide offering or legitimate noncommercial or fair use of the <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, and <chanluusalejp.com> domain names because they each resolve to websites that purport to sell goods in direct competition with Complainant’s business. Complainant claims that the Respondent makes excessive use of the CHAN LUU mark in offering these goods to the public. The Panel notes that each of the <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, and <chanluusalejp.com> domain names resolve to websites that promote goods similar to Complainant’s goods, where Respondent offers all of these goods under the CHAN LUU mark. Whether Respondent intended to use Complainant’s marks in running a competing business, or whether Respondent sought to outright sell counterfeits of Complainant’s goods, neither use is a Policy ¶ 4(c)(i) bona fide offering of goods and services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See 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); G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
Complainant also asserts that Respondent is not using the <chanluuonlinejp.com> domain name in furtherance of a bona fide offering of goods or services, or a legitimate noncommercial or fair use, because the domain name resolves to an inactive website. The Panel notes that the domain name appears to resolve to nothing other than the web browser’s error message. Respondent’s failure to make any active use of this confusingly similar domain name illustrates that there is no Policy ¶ 4(c)(i) bona fide offering of goods and services, nor is an inactive holding a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”).
Complainant alleges that Respondent has registered and is using the <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, and <chanluusalejp.com> domain names in a bad faith attempt to confuse Internet users. Complainant again asserts that Respondent is using the CHAN LUU mark to offer goods that are in direct competition, and likely counterfeits of, Complainant’s goods. The Panel finds Policy ¶ 4(b)(iv) bad faith registration and use. 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); MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when registering all of these domain names. Respondent’s sale of counterfeit products allows the Panel to infer that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluujapans.com>, <chanluusjapan.com>, <chanluuoutletjp.com>, <chanluusalejp.com>, and <chanluuonlinejp.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 3, 2013
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