Chan Luu, LLC. v. Hasoon Kim / Colonysurf
Claim Number: FA1610001697833
Complainant is Chan Luu, LLC. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Hasoon Kim / Colonysurf (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluu.shop>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2016; the Forum received payment on October 12, 2016.
On October 13, 2016, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <chanluu.shop> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 October 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2016 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@chanluu.shop. Also on October 21, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant, Chan Luu Inc., is in the business of designing and creating CHAN LUU branded products in the jewelry, fashion, and clothing business. Complainant uses the CHAN LUU mark in connection with this business and has rights in the mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029, registered Aug. 3, 2004). Respondent’s domain name <chanluu.shop> is confusingly similar to the CHAN LUU mark as the domain name merely differs from the mark through the addition of the TLD “.shop.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been licensed to use the CHAN LUU mark, does not have a relationship with Complainant, nor has been commonly known by the disputed domain name. Respondent’s failing to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s failure to make any use of the disputed domain name demonstrates Respondent’s bad faith. Further, Respondent would be unable to make a use of the disputed domain name that was not in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding be in the English language pursuant to UDRP Rule 11(a). The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied as Respondent’s disputed domain targets Complainant, a United States company and its mark, and the generic top-level domain (“gTLD”) “.shop” is an English word, and Respondent has failed to file any responsive pleadings. After considering the circumstances of the present case, the Panel finds that the proceeding should be in English.
Complainant is Chan Luu LLC, which list its address as Los Angeles, CA, USA. Complainant indicates that it began its business in 1995 and has used its CHAN LUU trademark for over 20 years in connection with jewelry, clothing, and accessories. Complainant operates showrooms in Los Angeles and New York City and additionally sells its products throughout the world via major retail stores. In addition to its claimed extensive common law rights, Complainant owns domestic and international registrations for its mark. Complainant also operates its own official website at <chanluu.com>.
Respondent is listed as Hasoon Kim / Colonysurf of Tokyo, Japan. Respondent’s registrar’s address is listed as the same. The Panel notes that the disputed domain name was created on or about September 24, 2016.
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(f), 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 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to have rights in the CHAN LUU mark based on registration of the mark with the “USPTO (e.g., Reg. No. 2,869,029, registered Aug. 3, 2004). Past panels have found that a complainant has rights in a mark based on registration of a mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the CHANN LUU mark.
Complainant next claims that Respondent’s domain name, <chanluu.shop>, is confusingly similar to the CHAN LUU mark in which Complainant asserts rights. The disputed domain name appears to differ from the CHAN LUU mark through the addition of the gTLD “.shop.” Prior panels have found that a domain name including a mark in its entirety and merely adding a gTLD does not alleviate confusing similarity. See Avaya Inc. v. Robert Bird, FA 1603045 (Forum Mar. 12, 2015) (“The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant’s offerings, and in the cases of <avaya.help>, and <avayaphone.systems>, the added gTLD adds to the confusion . . .”). The Panel here finds that Respondent’s disputed domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).
Respondent makes no contention with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 has met this burden.
Complainant claims that Respondent has not been licensed to use the CHAN LUU mark, has no relationship with Complainant, nor has been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name shows that Respondent identifies as, “Hasoon Kim,” of the organization, “Colonysurf,” which does not resemble the disputed domain name. Previous panels have held that a respondent is not commonly known by a disputed domain name, based on WHOIS information and a lack of relationship with a complainant. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel here finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next claims that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name does not appear to resolve to any active website. Prior panels have held that failing to make an active use of a disputed domain name that infringes on another’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (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).”). The Panel here finds that Respondent’s inactive use is not a permissible use within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts that Respondent’s failure to make any use of the disputed domain name demonstrates Respondent’s bad faith. As stated previously, Respondent’s domain name resolves to an inactive website that displays the message “This site can’t be reached.” Previous panels have found a respondent to have registered and used a domain name in bad faith where a respondent registered a domain name incorporating another’s mark and then failed to make any active use of the domain name. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). The Panel here finds that Respondent’s inactive use demonstrates bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluu.shop> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 28, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page