Chan Luu Inc. v. li ning
Claim Number: FA1408001574726
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is li ning (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluukutujp.com>, <chanluuselljp.com>, and <chanluushowjp.com>, registered with GODADDY.COM, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2014; the National Arbitration Forum received payment on August 12, 2014.
On August 14, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluukutujp.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 August 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2014 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@chanluuoutletonlinejp.com, postmaster@japanchanluuoutlet.com, postmaster@chanluuonlineshopjp.com, postmaster@jpchanluushoponline.com, postmaster@chanluushopjponline.com, postmaster@chanluukutujp.com, postmaster@chanluuselljp.com, and postmaster@chanluushowjp.com. Also on August 14, 2014, 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 September 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the CHAN LUU mark to promote various fashion merchandise. Complainant has registered the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029, registered August 3, 2004). The <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluukutujp.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names are confusingly similar to the CHAN LUU mark in that they affix the generic top-level domain (“gTLD”) “.com” and various geographic and generic terms.
2. Respondent has no rights or legitimate interests in any of these domain names.
3. No evidence suggests Respondent has been commonly known as these domain names. Further, Respondent is using most of the disputed domain names to promote a competing business wherein counterfeit CHAN LUU goods are promoted. As to the <chanluuselljp.com> and <chanluushowjp.com> domain names, there is currently an error message that appears when the domain names are entered. As to the <chanluukutujp.com> domain name, no active use has been made.
4. Respondent registered and used the domain name in bad faith.
5. Respondent seeks to capitalize on the likelihood Internet users will be confused as to Complainant’s association with the chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names. Indeed, the web service company believed the <chanluuselljp.com> and <chanluushowjp.com> domain names to be so objectionable as to take down the content. As to the <chanluukutujp.com> domain name, bad faith can be inferred from the fact no active use has been made. Respondent had to have had notice of the CHAN LUU mark when registering and using all of these domain names.
6. The earliest date on which any of the domain names was registered is February 26, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain names are confusingly similar to Complainant’s CHAN LUU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluukutujp.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names, and that Respondent registered and uses the domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(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 has established that the CHAN LUU mark is used to promote various fashion merchandise. Complainant has registered the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant’s USPTO registration evidences Complainant’s rights in CHAN LUU within the meaning of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluukutujp.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names are confusingly similar to the CHAN LUU mark in that they affix the gTLD “.com” and various geographic and generic terms. Neither a gTLD nor a generic or geographic term sufficiently distinguish a domain name from a mark, even where spacing is removed from the trademark. See, e.g., Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD). Thus, the Panel concludes that Respondent’s domain names are all confusingly similar to Complainant’s trademark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The record shows that no evidence suggests Respondent has been commonly known by these domain names. Respondent has listed “li ning” as the registrant of record in the WHOIS information. The WHOIS information, combined with the lack of any evidence in the record establishing that the Respondent is commonly known by the domain names, requires that the Panel conclude Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003).
Complainant has shown that Respondent is using certain of the domain names to promote a competing business wherein counterfeit CHAN LUU goods are promoted. The evidence shows that <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com> domain names resolve to websites promoting counterfeit CHAN LUU goods. The Panel concludes that Respondent has no Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use for these domain names. 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).
Complainant also has shown that as to the <chanluuselljp.com> and <chanluushowjp.com> domain names, there is currently an error message that appears when the domain names are entered. Under these circumstances Respondent has not shown 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). Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)”).
Complainant finally has shown that as to the <chanluukutujp.com> domain name, no active use has been made. The Panel agrees that there is no Policy ¶ 4(c)(i) bona fide offering or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use when the domain name is not being used actively. See L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
First, Complainant has shown that Respondent seeks to capitalize on the likelihood Internet users will be confused as to Complainant’s association with the chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names. The use of these domain names to resolve to websites promoting the sale of counterfeit goods shows Policy ¶ 4(b)(iv) bad faith. See, e.g., 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); Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
As to the <chanluukutujp.com> domain name, bad faith can be inferred from the fact no active use has been made. 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).
Finally, the record shows that Respondent had actual notice of the CHAN LUU mark when registering and using all of these domain names. Due to Respondent’s decision to sell counterfeit CHAN LUU goods, the Panel concludes that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable for bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuoutletonlinejp.com>, <japanchanluuoutlet.com>, <chanluuonlineshopjp.com>, <jpchanluushoponline.com>, <chanluushopjponline.com>, <chanluukutujp.com>, <chanluuselljp.com>, and <chanluushowjp.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 15, 2014
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