national arbitration forum

 

DECISION

 

Chan Luu, Inc. v. Lin Hui / inhui l

Claim Number: FA1204001441495

 

PARTIES

Complainant is Chan Luu, Inc. (“Complainant”), represented by Phyllis C. Simon of Christie, Parker & Hale, LLP, California, USA.  Respondent is Lin Hui / inhui l (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluu-wrapbracelet.com>, registered with Shanghai Yovole Networks Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 30, 2012. The Complaint was submitted in both English and Chinese.

 

On May 4, 2012, Shanghai Yovole Networks Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluu-wrapbracelet.com> domain name is registered with Shanghai Yovole Networks Inc. and that Respondent is the current registrant of the name.  Shanghai Yovole Networks Inc. has verified that Respondent is bound by the Shanghai Yovole Networks Inc. 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 11, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 31, 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@chanluu-wrapbracelet.com.  Also on May 11, 2012, 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 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

Pursuant to Rule 11(a), the 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.

 

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-wrapbracelet.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.

 

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

 

3.    Respondent registered and used the <chanluu-wrapbracelet.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant has rights in the CHAN LUU mark which it uses in connection with goods and retail services related to jewelry and women’s clothing and accessories.  Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).

 

The <chanluu-wrapbracelet.com> domain name resolves to a website selling goods in direct competition with Complainant.

 

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant submits evidence of its trademark registrations through the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).  Therefore, the Panel finds that Complainant has rights in the CHAN LUU mark under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Respondent’s <chanluu-wrapbracelet.com> domain name is confusingly similar to the CHAN LUU mark.  The deletion of the space in Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.com” are required changes to all domain names and are irrelevant to the determination of confusing similarity under Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  The Panel finds that Respondent’s addition of a hyphen and the descriptive terms “wrap” and “bracelet” fail to make the <chanluu-wrapbracelet.com> domain name distinct from the CHAN LUU mark.  See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).  Therefore, the Panel finds that Respondent’s <chanluu-wrapbracelet.com> domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).

 

Complainant asserts that Respondent is not commonly known by the <chanluu-wrapbracelet.com> domain name.  Complainant states that it has not given Respondent permission to use the CHAN LUU mark.  The WHOIS record lists “Lin Hui / inhui l” as the registrant of the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <chanluu-wrapbracelet.com> domain name according to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Complainant contends that Respondent’s use of the <chanluu-wrapbracelet.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  Complainant asserts that the <chanluu-wrapbracelet.com> domain name resolves to a website selling goods that compete with those that Complainant offers under the CHAN LUU mark.  Previous panels have found that the use of a disputed domain name to sell competitive products is not a use that provides the respondent with rights or legitimate interests in the disputed domain name.  See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).  Thus, the Panel finds that Respondent’s use of the <chanluu-wrapbracelet.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The <chanluu-wrapbracelet.com> domain name resolves to a website that sells goods that directly compete with those that Complainant offers under the CHAN LUU mark, which demonstrates bad faith under Policy ¶ 4(b)(iii). Previous panels have held that the registration and use of a disputed domain name is done in bad faith where the disputed domain name operates to sell competing products because this use is disruptive to complainant’s business.  See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).  Therefore, the Panel finds that the <chanluu-wrapbracelet.com> domain name is disruptive to Complainant’s business, bad faith pursuant to Policy ¶ 4(b)(iii).

 

The <chanluu-wrapbracelet.com> domain name was registered and is used in order to take commercial advantage of Internet users’ confusion when they are diverted to the <chanluu-wrapbracelet.com> domain name.  Respondent no doubt profits from the resulting sale of competing goods.  Therefore, the Panel finds that Respondent attracts, for commercial gain, Internet users to the <chanluu-wrapbracelet.com> domain name by creating confusion as to the source of the <chanluu-wrapbracelet.com> domain name, evidence of bad faith under Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Finally, Complainant contends that Respondent had constructive and actual knowledge of Complainant’s rights in the CHAN LUU mark prior to registering the <chanluu-wrapbracelet.com> domain name.  Complainant’s trademark registrations give Respondent constructive knowledge and Respondent’s registration of a confusingly similar domain name and particularly the use of the CHAN LUU mark are evidence of actual knowledge.  Previous panels have held that, while constructive knowledge is insufficient for a finding of bad faith, a panel may find bad faith where the respondent had actual knowledge of the complainant’s rights in the infringed-upon mark.  See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).  The Panel finds that Respondent registered and is using the <chanluu-wrapbracelet.com> domain name in bad faith under Policy ¶ 4(a)(iii) due to its actual knowledge of Complainant’s rights in the CHAN LUU mark prior to the registration and use of the <chanluu-wrapbracelet.com> domain name.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

Sandra J. Franklin, Panelist

Dated:  June 12, 2012

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page