Chan Luu Inc. v. wengxinweng and xinhuimaoyi1
Claim Number: FA1305001499566
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is wengxinweng and xinhuimaoyi1 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluuitalias.com>, <chanluuonsale.com>, <chanluuonlinestore.com>, <discountchanluu.com>, <chanluunecklace.com>, <chanluumilano.com>, <chanluuonlineshop.com>, <chanluujewelrysale.com>, <chanluuonline.com>, and <chanluuprezzi.com>, registered with ENAME TECHNOLOGY CO., LTD.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2013; the National Arbitration Forum received payment on May 13, 2013. The Complaint was submitted in both Chinese and English.
On May 14, 2013, ENAME TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <chanluuitalias.com>, <chanluuonsale.com>, <chanluuonlinestore.com>, <discountchanluu.com>, <chanluunecklace.com>, <chanluumilano.com>, <chanluuonlineshop.com>, <chanluujewelrysale.com>, <chanluuonline.com>, and <chanluuprezzi.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 May 20, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 10, 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@chanluuitalias.com, postmaster@chanluuonsale.com, postmaster@chanluuonlinestore.com, postmaster@discountchanluu.com, postmaster@chanluunecklace.com, postmaster@chanluumilano.com, postmaster@chanluuonlineshop.com, postmaster@chanluujewelrysale.com, postmaster@chanluuonline.com, and postmaster@chanluuprezzi.com. Also on May 20, 2013, the Chinese language 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 June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. Pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Panel has issued 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 asserts trademark rights in CHAN LUU and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark CHAN LUU in connection with jewelry, clothing, and accessories.
2. Complainant owns, inter alia, United States Trademark Reg. No. 2,869,029, registered August 3, 2004 for the word mark CHAN LUU.
3. The disputed domain names were all registered in July 2012.
4. The domain name are either inactive or resolve/redirect to websites that offer goods sold in competition with Complainant’s goods.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in CHAN LUU (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
For the purposes of comparison of the disputed domain names with the trademark, the gTLD, “.com” can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Stripped out their gTLD, the domain names simply combine the trademark with either descriptive terms (online, onsale, onlinestore, onlineshop, discount, necklace, ,jewelrysale, or prezzi [i]) or geographic terms (italias, milano).
The trademark remains the dominant, distinctive part of the composite terms, the added matter doing little, if anything, to distinguish the terms from the trademark (see, for example, Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to the WESTFIELD trademark; see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) finding <novellsolutions.com> confusingly similar to the NOVELL mark; see finally, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Panel is satisfied that each of the disputed domain names is confusingly similar to Complainant’s trademark. Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of all of the disputed names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “wengxinweng” and “xinhuimaoyi1” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that (a) the domain name <chanluuitalias.com> direct Internet users to a website which sells goods in direct competition with Complainant; (b) the domain names <chanluuonsale.com> and <chanluuonlinestore.com> direct to websites claiming to have a connection with the well known retail competitor of Complainant, Abercrombie and Fitch; and (c) the domain names <discountchanluu.com>, <chanluunecklace.com>, <chanluumilano.com>, <chanluuonlineshop.com>, <chanluujewelrysale.com>, <chanluuonline.com>, and <chanluuprezzi.com> are not used in any meaningful way. That evidence does not support a finding that Respondent has rights or legitimate interests of any kind (see, for example, Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) holding that the respondent’s use of <ftdflowers4less.com> to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name; Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”; TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services;
Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is 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)).
Panel finds that Complainant has established a prima facie case for each domain name and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of all of the disputed domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
With regard to the following domain names, <chanluuitalias.com>, <chanluuonsale.com> and <chanluuonlinestore.com>, Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from the misuse of these domain names. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.
With regard to the remaining domain names, <discountchanluu.com>, <chanluunecklace.com>, <chanluumilano.com>, <chanluuonlineshop.com>, <chanluujewelrysale.com>, <chanluuonline.com>, and <chanluuprezzi.com> , Panel finds that Respondent’s actions come under paragraph 4(b)(iii) above. Albeit that there has been debate between panelists over the meaning to be given to the word “competitor” in paragraph 4(b)(iii), Panel is in this instance prepared to find that Respondent registered each of the abovereferenced seven domain names in bad faith because it acted primarily to disrupt Complainant’s business in one way or another.
Panel concludes that all of the domain names were registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuitalias.com>, <chanluuonsale.com>, <chanluuonlinestore.com>, <discountchanluu.com>, <chanluunecklace.com>, <chanluumilano.com>, <chanluuonlineshop.com>, <chanluujewelrysale.com>, <chanluuonline.com>, and <chanluuprezzi.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 2, 2013
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