national arbitration forum

 

DECISION

 

Chan Luu, Inc. v. Danielle Dyke

Claim Number: FA1204001441467

 

PARTIES

Complainant is Chan Luu, Inc. (“Complainant”), represented by Phyllis C. Simon of Christie, Parker & Hale, LLP, California, USA.  Respondent is Danielle Dyke (“Respondent”), Alaska, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluu.us>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2012.

 

On April 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluu.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 1, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

1.     Respondent’s <chanluu.us> domain name is confusingly similar to Complainant’s CHAN LUU mark.

2.    Respondent does not have any rights or legitimate interests in the  <chanluu.us> domain name.

3.    Respondent registered or used the <chanluu.us> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CHAN LUU marks (e.g., Reg. No. 2,869,029 registered August 3, 2004).

2.    Complainant is a U.S. company that began in 1983, designing and distributing women’s clothing and accessories using the CHAN LUU mark on its merchandise.

3.    Respondent registered the <chanluu.us> domain name on March 7, 2012.

4.    The disputed domain name resolves to an empty web page.

5.    Respondent’s disputed domain name is identical or confusingly similar to Complainant’s CHAN LUU mark.

6.    Respondent is not commonly known by the disputed domain name and does not have license to use Complainant’s mark or have a legal relationship with Complainant to allow use of its mark.

7.    Respondent is not using the disputed domain name in a way related to a bona fide offering of goods and services or a legitimate noncommercial or fair use; hence, Respondent registered and has used the disputed domain name in bad faith.

 

DISCUSSION

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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant claims to own trademark registrations with the USPTO for its CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004). The panel in Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), stated that a complainant sufficiently established rights in its mark through registration with the USPTO. In SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007), the panel held that a trademark registration with the USPTO establishes a complainant’s rights in a mark pursuant to UDRP ¶ 4(a)(i). The Panel concludes that, under Policy ¶ 4(a)(i), Complainant’s registration of its CHAN LUU mark with the USPTO establishes rights in the mark.

 

Complainant alleges that the <chanluu.us> domain name is identical or confusingly similar to its CHAN LUU mark, and Complainant points out that the disputed domain name uses Complainant’s entire mark and adds the country-code top-level domain (“ccTLD”) “.us.” The Panel also notes that the disputed domain name does not include the spaces between words. In Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007), the panel held that the disputed domain name was identical to the complainant’s mark, and removed only the spaces separating the terms in the mark and adding the ccTLD “.us.” In Celgene Corp. v. Schenglu, FA 1143732 (Nat. Arb. Forum Apr. 4, 2008), the panel stated that the domain name is identical to the complainant’s mark when it used the entire mark in the domain name and included the ccTLD “.us.” The Panel finds that, for the purposes of Policy ¶ 4(a)(i), the disputed domain name is identical to Complainant’s CHAN LUU mark.

 

Rights or Legitimate Interests

 

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); 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.”).

 

The Panel notes that there is no evidence on the record supporting the conclusion that Respondent owns service marks or trademarks that incorporate <chanluu.us> domain name. The Panel determines that, without evidence demonstrating that Respondent owns rights in a mark that reflects the <chanluu.us> domain name,  Respondent does not possess any rights and legitimate interests in the domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sep. 2, 2007) (holding that, where the respondent has not come forward with evidence demonstrating it is an owner or beneficiary of a mark identical to the disputed domain name, then complainant has satisfied Policy ¶ 4(c)(i)).

 

Complainant alleges that Respondent is not commonly known by the <chanluu.us> domain name, and Complainant points out that the WHOIS information for Respondent identifies “Danielle Dyke” as the registrant. The Panel concludes that, based on the WHOIS information, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Softlayer Tech., Inc. v. Zwinkels, FA1232120 (Nat. Arb. Forum Dec. 19, 2008) (determining that the WHOIS information for the disputed domain name did not indicate that the respondent was commonly known by the domain name under Policy ¶ 4(c)(iii).

 

Complainant claims that it did not authorize Respondent to use its CHAN LUU mark for any purpose and that Respondent’s current passive use of the <chanluu.us> domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that, by failing to make an active use of the disputed domain name, Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Illycaffe S.P.A. v. Sergio, FA 1291791 (Nat. Arb. Forum Dec. 16, 2009), (finding that inactive use of a website does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).

 

Registration or Use in Bad Faith

 

Complainant alleges that Respondent’s failure to actively use the disputed domain name provides evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Complainant argues in its Policy ¶¶ 4(c)(ii) and (iv) paragraph that Respondent is “merely squatting” on the domain name and that any actual use would infringe on Complainant’s rights in its CHAN LUU mark. The Panel finds that failing to make definite use of the <chanluu.us> domain name constitutes registration and use of the domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).  Hence, the Panel finds that Respondent registered and used the domain name in bad faith.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chanluu.us> domain name be TRANSFERRED  from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 6, 2012

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page