Chan Luu, Inc. v. Huangjshan
Claim Number: FA1205001444101
Complainant is Chan Luu, Inc. (“Complainant”), represented by Phyllis C. Simon of Christie, Parker & Hale, LLP, California, USA. Respondent is huangjshan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluusale.com>, registered with XIN NET TECHNOLOGY CORPORATION.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012. The Complaint was submitted in both English and Chinese.
On May 15, 2012, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <chanluusale.com> domain name is registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION 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 21, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 11, 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@chanluusale.com. Also on May 21, 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.
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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
Respondent’s <chanluusale.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CHAN LUU mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns trademarks registrations with the United States Patent and Trademark Office (“USPTO”) for its CHAN LUU mark (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004). See Exhibits B, C, and D. Complainant uses the CHAN LUU mark in its business as a women’s clothing and jewelry retailer. Complainant began its business in 1983 selling clothing and accessories, and developed further as a jewelry designer. In 2006, Complainant began operating an online retail store to sell its products under the CHAN LUU mark.
Respondent registered the <chanluusale.com> domain name in March 2012. Respondent uses the disputed domain name to host websites that offer products for sale that appear substantially similar to those marketed by Complainant, and the website itself looks similar to Complainant’s website. Respondent’s disputed domain name is confusingly similar to Complainant’s CHAN LUU mark, and Respondent does not have a legal relationship with Complainant that would allow it to use Complainant’s mark in a domain name. Respondent’s use of the disputed domain name is commercial, and Respondent attempts to profit by offering competing goods at the resolving website. Respondent had actual and constructive knowledge of Complainant’s rights in the CHAN LUU mark prior to registering the <chanluusale.com> domain name.
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 owns trademark registrations with the USPTO for its CHAN LUU mark (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004). In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panels concluded that registering a mark with the USPTO secures a complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). Accordingly, Complainant’s registrations with the USPTO satisfy Policy ¶ 4(a)(i) by establishing Complainant’s rights in the CHAN LUU mark. Under Policy ¶ 4(a)(i), Complainant is not required to register its CHAN LUU mark in the same country where Respondent resides and operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <chanluusale.com> domain name is confusingly similar to its CHAN LUU mark and points out that the domain name incorporates the entire CHAN LUU mark and attaches the generic word “sale.” Further, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to an analysis of confusing similarity. The disputed domain name eliminates the space between the two terms of the CHAN LUU mark. Removing a space between the words of a mark, adding a generic term, and adding a gTLD do not alter the <chanluusale.com> domain name does not sufficiently distinguish the disputed domain name from complainant’s CHAN LUU mark. Therefor, Respondent’s disputed domain name is confusingly similar to the CHAN LUU mark 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.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent lacks rights or legitimate interests in the <chanluusale.com> domain name because Complainant has not licensed Respondent to use its CHAN LUU mark and Respondent does not have a legal relationship with Complainant. Respondent is not commonly known by the <chanluusale.com> domain name, and the WHOIS information associated with the domain name registration identifies “Huangjshan” as the registrant. The WHOIS information and the absence of Complainant’s permission to use the CHAN LUU mark support a finding that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The resolving website features items for sale that compete with Complainant’s products and are sold at a substantially lower price than Complainant’s goods. This is not a use representing a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel in Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003), concluded that the respondent’s use of the complainant’s mark in the domain name and the resolving website, where the respondent sold products in competition with the complainant, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The panel in Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004), stated that, because both the complainant and the respondent offer credit card accounts for sale, the respondent’s use of the disputed domain names to offer services competing with those offered by the complainant is not legitimate because the respondent uses the complainant’s mark in a confusingly similar domain names to market its services. By selling products similar to Complainant’s at a lower price, Respondent is not using the disputed domain name to make 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 that Policy ¶ 4(a)(ii) has been established.
Respondent offers goods on its resolving website that compete with Complainant’s goods and such use demonstrates Respondent’s bad faith registration and use of the <chanluusale.com> domain name. The confusingly similar domain name resolves to a webpage which has several similarities to Complainant’s website and this serves to attract Internet users to Respondent’s site for Respondent’s commercial benefit. Respondent’s use of a confusingly similar domain name to attract Internet traffic to its website to offer goods in competition with Complainant for Respondent’s financial profit is evidence that Respondent’s registration and use of the disputed domain name is in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Respondent had actual and constructive knowledge of Complainant’s rights in the CHAN LUU mark when Respondent registered the <chanluusale.com> domain name. Complainant’s trademark registration with the USPTO serves to give Respondent constructive knowledge of Complainant’s rights in the mark. Respondent demonstrates its actual knowledge of Complainant’s rights in the CHAN LUU mark by its prominent use of the mark on the website and the similarity between resolving website and Complainant’s website. Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark, as evidenced by its use of the resolving webpage. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluusale.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 23, 2012
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