Chan Luu, Inc. v. Stefan Ciobanu
Claim Number: FA1204001441472
PARTIES
Complainant is Chan Luu, Inc. (“Complainant”), represented by Phyllis C. Simon of Christie, Parker & Hale, LLP, California, USA. Respondent is Stefan Ciobanu (“Respondent”), Moldova.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluubracelets.com>, registered with GoDaddy.com, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 30, 2012.
On April 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluubracelets.com> domain name(s) is/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 April 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 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@chanluubracelets.com. Also on April 30, 2012, 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 May 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant Chan Luu, Inc. (hereinafter referred to as “Complainant” or “Chan Luu”) owns incontestable United States Trademark Registration Nos. 3,028,982 and 2,869,029 for CHAN LUU, and United States Trademark Registration No. 3,314,816 for CHAN LUU (collectively, “the CHAN LUU Marks”). Complainant owns the exclusive rights to the CHAN LUU Marks and CHAN LUU trade name, which it uses in connection with goods and retail services related to jewelry and women’s clothing and accessories.
Respondent is engaged in cybersquatting and has registered the subject domain name, which is virtually identical to Complainant’s registered CHAN LUU Marks, and uses the domain name to misdirect consumers looking for Complainant’s goods and services to a commercial website that provides click-through services to other sites selling directly competing goods.
A. Complainant’s Company
Chan Luu, Inc. started in 1983 as a California company engaging in retail store services and goods in the field of clothing and accessories for women. As early as 1996, Chan Luu began designing and selling jewelry, including items incorporating precious metals, semi-precious stones and pearls. Since as early as 2006, Chan Luu has operated a website accessible at the domain name chanluu.com that provides information on the clothing, jewelry, handbags and accessories sold under the CHAN LUU Marks. The website also features retail store services for the Chan Luu products including clothing, jewelry, handbags and accessories.
B. Complainant’s Rights in the CHAN LUU Marks
Chan Luu owns a registered service mark for CHAN LUU, and two registered trademarks for CHAN LUU. These marks are incontestable.
In addition to these federal registrations, which carry the presumption of validity, Complainant has common law service mark and trademark rights in the CHAN LUU mark. Attached to this Complaint are several records showing use of the CHAN LUU Marks and trade name since at least 2002. In particular, these exhibits highlight the popularity of bracelets offered under the CHAN LUU Marks. Screen shots taken of Complainant’s website on a variety of dates show bracelets available for sale at chanluu.com.
C. The Subject Domain Name is Confusingly Similar to the CHAN LUU Marks in Which Complainant has Rights
To support a finding that the subject domain name is identical or confusingly similar to Complainant’s marks, all that is required is:
that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.
Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 296 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (holding JEWS FOR JESUS and jewsforjesus.org confusingly similar).
The subject domain name chanluubracelets.com is virtually identical and confusingly similar to Complainant’s registered CHAN LUU Marks. The domain name features Complainant’s entire CHAN LUU mark and adds the generic term “BRACELETS.” The addition of the ordinary descriptive or generic term “BRACELETS” fails to sufficiently distinguish the subject domain name from the Complainant’s marks pursuant to Policy ¶4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied).
In fact, the term “BRACELETS” is descriptive of one of Complainant’s signature lines of jewelry. Because Complainant’s mark is extensively used in connection with jewelry, and specifically wrap bracelets, the addition of the term “BRACELETS” further increases the confusing similarity of the subject domain names with Complainant’s mark. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark); Nintendo of America, Inc. v. Gray West International, D2000-1219 (WIPO Jan. 10, 2001) (holding that Respondent’s addition of “-games” to POKEMON did “nothing to reduce its confusing similarity with Nintendo’s POKEMON marks.”).
Likewise, the “.com” portion of the contested domain name is irrelevant to the confusingly similar analysis. See MPL Communications Ltd. v. Denny Hammerton, FA95633 (Nat. Arb. Forum Oct. 25, 2000) (finding that the domain name “paulmccartney.com” was confusingly similar to the famous name Paul McCartney). Thus, the addition of “.com” is insufficient to avoid a finding of confusing similarity between the disputed domain name and the CHAN LUU Marks.
Accordingly, both applicable case law and prior administrative proceedings support a finding that the subject domain name is confusingly similar to Complainant’s trademarks.
D. Respondent Has No Rights or Legitimate Interest in the Contested Domain Name
Respondent has no rights or legitimate interest in the “chanluubracelets.com” domain name. Under the Policy, once the Complainant asserts a prima facie case against the Respondent, the Respondent bears the burden of proving that it has rights or legitimate interests in the contested domain name pursuant to Policy ¶4(a)(ii). See G.D. Searle & Co. v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant has not licensed Respondent to use its marks, nor does Respondent have any legal relationship with Complainant that would entitle it to use Complainant’s marks. Respondent has no legitimate reason for using the CHAN LUU Marks as the dominant part of the subject domain name.
The Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the contested domain name. For instance, one circumstance that would support a respondent’s claim of rights or legitimate interest is detailed in Policy ¶4(c)(i). This paragraph describes the situation where “before any notice to respondent of the dispute,” respondent uses or prepares to use “the domain name in connection with a bona fide offering of goods or services.” However, when the page offers competing goods to those offered under the Complainant’s mark, and diverts Internet users seeking Complainant’s website to a website for Respondent, such use is not a bona fide offering of goods and services. See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”). A user at the website available at chanluubracelets.com can click on any of the photographs in the Widget and purchase the wrap bracelets from a third party website. Respondent presumably receives a commission for the purchase of goods through the Widget. The wrap bracelets available from the third party website are not Complainant’s goods, and are offered at a substantially lower cost than Complainant’s wrap bracelets. Respondent’s website shown further states that “[t]he Chan Luu bracelets sale is tremendously growing due to the extraordinary and fascinating designs of the bracelets.” Respondent’s acknowledgement of the popularity and unique nature of bracelets designed and sold by Complainant, coupled with click-through features to competing goods, indicates Respondent’s intent to divert Internet users seeking Complainant’s website to Respondent’s website at the subject domain name. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Accordingly, the circumstances described in Policy ¶4(c)(i) are not present.
A respondent’s claim of rights or legitimate interests may also be supported by Policy ¶4(c)(ii), which states that the party has “been commonly known by the domain name,” even if no trademark or service mark rights have been acquired. Respondent is not commonly known by the disputed domain name chanluubracelets.com or Chan Luu Bracelets. Respondent’s name is Stefan Ciobanu. Further, Complainant has not given Respondent permission to use its CHAN LUU mark. Respondent’s unauthorized use of the Complainant’s registered service mark and trademarks supports a lack of rights and legitimate interests in the domain name. See Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA0707001040087 (Nat. Arb. Forum Aug. 31 2007) (finding that Respondent was not commonly known by the disputed domain name because, in part, Respondent lacked authorization to use Complainant’s registered service mark); see also American Girl, LLV v. Geroge Rau, FA1002001308206 (Nat. Arb. Forum April 2, 2010) (finding that Respondent was not commonly known by the disputed domain name when Respondent was “not licensed or otherwise authorized to use” Complainant’s mark).
Another circumstance that would support a respondent’s claim of rights or legitimate interest is detailed in Policy ¶4(c)(iii) that states:
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 trademark or service mark at issue.
With respect to these circumstances, Respondent is making a plainly commercial use of the contested domain name that is confusingly similar to Complainant’s marks. Complainant’s incontestable federal Registration Nos. 2,869,029 and 3,028,982 and federal Registration No. 3,314,816 predate the September 2011 registration of the subject domain name. Exhibits N-P demonstrate that the domain name has been used to host a site using the CHAN LUU Marks and providing click-through services to website selling competing goods. Respondent was clearly aware of the popularity of Complainant’s goods and services at the time the subject domain name was registered. Furthermore, the only reason for Respondent to register the subject domain name was to misdirect users and to attempt to profit from users clicking on photographs via the Widget on the website and purchasing competing goods from a third party website. Respondent was clearly aware that any use of the domain name by Respondent would use the reputation and goodwill associated with Complainant’s marks to attract users to its website at the subject domain name. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website for its commercial gain). Accordingly the circumstances described in Policy ¶4(c)(iii) are also not present.
In view of Complainant’s well-known marks and established trademark rights, this commercial use by Respondent violates Complainant’s rights under Section 43(a) of the Lanham Act. Respondent’s use of the domain name chanluubracelets.com is “on or in connection with any goods or services,” and Respondent “uses in commerce any word, term, [or] name . . . , or any combination thereof . . . , which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” Lanham Act Section 43, 15 U.S.C. §1125; See Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum, Dec. 2, 2003) (finding that use of someone else’s well-known business name undermines any claims to a legitimate interest). It is well settled that misdirecting Internet traffic by using another party’s trademark is unlawful. Brookfield Communs., Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). The illegal registration and use of a domain name reflecting another’s trademark is not a protected use under the Policy. See Viacom International, Inc. et al. v. TVdot.net, Inc., D200-1253 (WIPO, January 16, 2001) (“[The] illegal use of another’s trademark cannot be considered a bona fide use.”) Accordingly, under the laws of the United States and guiding Policy decisions, Respondent cannot show any legitimate interest in the contested domain name.
E. Respondent Has Registered and Is Using the Contested Domain Name in Bad Faith
The Policy expressly details specific circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Policy ¶4(b). Any one of these express circumstances is sufficient to establish bad faith. A first circumstance applicable here is detailed in Policy ¶4(b)(iv), which states that
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
It is well settled that the registration and commercial use of a domain name that is identical or confusingly similar to Complainant’s mark to divert traffic to Complainant’s competitors satisfies the requirements of Policy ¶4(b)(iii). See Societe des Produits Nestle SA v. Mustafa Yakin / Moniker Privacy Services, D2008-0016 (WIPO, March 11, 2008) (“the fact that Respondent’s website at the subject domain name contains links to other websites offering competing products with those of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent.). The text of Respondent’s website at the subject domain name chanluubracelets.com includes the title “Chan Luu Bracelets Sale” and several other uses of the CHAN LUU Marks. Respondent’s website further includes a Widget that offers click-through features that allow a user to purchase competing goods from a third party, with Respondent presumably receiving a commission for the purchase of goods through the Widget. The only reason for Respondent’s registration of the subject domain name and subsequent hosting of a website at the domain name is to misdirect users and divert traffic to Complainant’s competitors. Accordingly, Respondent’s registration and use of the contested domain name, chanluubracelets.com, to offer click-through services for other websites offering competing goods and services satisfies the requirements of Policy ¶¶4(b)(iii) and (iv).
Respondent registered the chanluubracelets.com domain name with actual knowledge of Complainant’s rights in the CHAN LUU Marks by virtue of Respondent’s statements made on its website at the subject domain name, as shown in Exhibits N-P. See Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that a respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark evidenced that the disputed domain name was registered in bad faith).
Respondent also had constructive knowledge of Complainant’s rights in the CHAN LUU Marks due to Complainant’s prior registration of that marks with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct. 24, 2002); Orange Glo Int’l v. Blume, FA118313 (Nat. Arb. Forum Oct. 4, 2002).
Finally, it is settled law that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See Household International, Inc. v. Cyntom Enterprises, FA95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that the respondent registered well-known business name with hopes of attracting the complainant’s customers). In the present case, Respondent registered the domain name and used Complainant’s CHAN LUU Marks on the website, which is a clear infringement of Complainant’s marks. Because the CHAN LUU Marks are so obviously connected with Complainant, and because the domain name chanluubracelets.com so clearly references the Complainant’s marks, registration by Respondent, who has no connection with Complainant, suggests bad faith. Accordingly, a finding of bad faith is also supported on these grounds.
As Complainant has satisfied all three elements of the Policy, it requests the panel grant the requested remedy.
B. Respondent
Respondent failed to submit a Response in this proceeding, although the email traffic clearly demonstrated Respondent was aware of these proceedings.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Previous panels have held registration of a mark with the United States Patent & Trademark Office (“USPTO”) confers sufficient rights in the mark to the registrant. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”). This Panel follows that precedent and holds Complainant has adequately established its rights in the mark for the purposes of Policy ¶4(a)(i) even though Respondent operates in Moldova. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends the <chanluubracelets.com> domain name is confusingly similar to its CHAN LUU mark for the purposes of Policy ¶4(a)(i). The disputed domain name includes Complainant’s whole mark deleting the space between the words and adding the term “bracelets.” Complainant claims the term “bracelets” is descriptive of its jewelry business, specifically its line of “wrap” bracelet products. The Panel agrees the addition of a term which alludes to a complainant’s business cannot adequately distinguish a disputed name from the complainant’s mark under Policy ¶4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds the addition of a gTLD cannot adequately distinguish a disputed domain name under Policy ¶4(a)(i). See 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)). The Panel finds Respondent’s <chanluubracelets.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent is not commonly known by the <chanluubracelets.com> domain name for the purposes of Policy ¶4(c)(ii). Complainant has not licensed Respondent’s use of the CHAN LUU mark, and Respondent has no legitimate reason for using the mark as the dominant part of the disputed domain name. The WHOIS information identifies Respondent as “Stefan Ciobanu.” Given this information, there is no reason to find Respondent is commonly known by the disputed domain within the meaning of Policy ¶4(c)(ii), especially since Respondent has failed to submit any information to the contrary. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent’s use of the disputed domain name cannot qualify as a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). The Panel finds Respondent uses the disputed domain name to resolve to a website featuring links to third-party sites that offer to sell inexpensive counterfeit “knockoffs” of Complainant’s bracelets. This means Respondent’s site directly competes with Complainant’s business and disrupts Complainant’s business by selling counterfeit products. The Panel finds this does not constitute as a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent’s use of a domain name confusingly similar to Complainant’s CHAN LUU mark to divert Internet traffic to a site which advertises inexpensive counterfeit “knockoffs” of Complainant’s products disrupts Complainant’s business in bad faith under Policy ¶4(b)(iii). This Panel agrees and finds Respondent’s site enables visitors to purchase counterfeit products. Respondent is enabling third parties to wrongfully usurp sales from Complainant, which is adequate evidence of bad faith registration and use under Policy ¶4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Complainant argues Respondent’s registration of the confusingly similar <chanluubracelets.com> domain name was meant to deceive the public into believing the domain name is associated with Complainant, allowing Respondent to divert Internet traffic intended for Complainant. Complainant claims Respondent likely earns a commission on the bracelets sold at the third-party sites advertised on Respondent’s website. Respondent is intentionally creating confusion about Complainant’s affiliation with the site in order to generate a commercial gain. Palming off counterfeit goods quintessentially demonstrates bad faith registration and use under Policy ¶4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”).
Complainant claims Respondent had constructive knowledge of Complainant's rights in the mark when Respondent registered the disputed domain name. The Panel does not find constructive knowledge adequate to prove bad faith registration and use. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes Respondent registered the disputed domain name in bad faith according to Policy ¶4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶4(a)(iii).").
Complainant argues Respondent’s use of Complainant’s mark in advertising the bracelets sold at third-party sites indicate Respondent had actual knowledge of Complainant and its rights. This Panel holds registering and using a domain name to palm off inexpensive “knockoff” counterfeit products which compete with Complainant constitutes bad faith registration and use under Policy ¶4(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <chanluubracelets.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 4, 2012
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