Chan Luu Inc. v. catcat juan
Claim Number: FA1207001454092
Complainant is Chan Luu Inc. (“Complainant”), represented by Shaun P. Lee of Christie, Parker & Hale, LLP, California, USA. Respondent is catcat juan (“Respondent”), Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his 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 July 18, 2012; the National Arbitration Forum received payment on July 19, 2012.
On July 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names 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 July 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@chanluujewelrynecklaces.com, postmaster@chanluuscarf.com, postmaster@chanluuwrap.com, postmaster@chanluujewelrynecklaces.info, postmaster@chanluuscarf.info, postmaster@chanluuwrap.info. Also on July 20, 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 August 13, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant Chan Luu Inc. (hereinafter referred to as “Complainant” or “Chan Luu”) owns the exclusive rights to the mark and trade name “CHAN LUU,” which it uses in connection with its successful and widely known lines of jewelry, clothing, accessories, and services. Complainant 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”).
Respondent is engaged in cybersquatting. In May 2012, Respondent registered the subject domain names chanluujewelrynecklaces.com, chanluujewelrynecklaces.info, chanluuscarf.com, chanluuscarf.info, chanluuwrap.com, and chanluuwrap.info, which are virtually identical to Complainant’s registered CHAN LUU Marks. Respondent operates websites where he unlawfully sells counterfeit goods at domain names that are confusingly similar to the CHAN LUU Marks. to consumers who are misdirected to his websites when those consumers are looking for Complainant’s goods and services.
As such, the subject domain names must be transferred to the complainant.
A. Complainant’s Company
Chan Luu Inc. is a California company that has sold field of clothing and accessories for women in retail stores for over 30 years. 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 has Rights in the CHAN LUU Marks
Chan Luu has common law service mark and trademark rights in the CHAN LUU Marks developed through extensive use since 1983. Chan Luu operates and sells goods worldwide.
As examples, newspaper articles showing that the CHAN LUU Marks have acquired distinctiveness and are known to be associated with necklaces and bracelets have been provided to the Panel. Screenshots of archived and current versions of the chanluu.com website, showing the use of the CHAN LUU marks in connection with the sale of jewelry and apparel have been provided to the Panel.
In addition to the common law rights, Chan Luu owns a registered service mark for CHAN LUU, and two registered trademarks for CHAN LUU. The certificate of registration for each of these marks, incontestable Registration Nos. 2,869,029 and 3,028,982, were provided to the Panel.
C. The Subject Domain Names are Confusingly Similar to the CHAN LUU Marks in Which Complainant has Rights
To support a finding that a 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 names chanluujewelrynecklaces.com, chanluuscarf.com, and chanluuwrap.com (the subject “.com domain names”) and chanluujewelrynecklaces.info, chanluuscarf.info, and chanluuwrap.info (the subject “.info domain names”) are virtually identical and confusingly similar to Complainant’s registered CHAN LUU Marks. Each of the subject domain names features Complainant’s entire CHAN LUU mark and adds the generic terms “jewelry” and “necklaces,” “scarf,” or “wrap.” The addition of the ordinary descriptive or generic terms “jewelry” and “necklaces,” “scarf,” or “wrap” fails to sufficiently distinguish the subject domain names from the Complainant’s marks pursuant to Policy ¶4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“[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 addition, the terms “jewelry” and “necklaces” are descriptive of Complainant’s product lines (i.e., jewelry and apparel) on which the CHAN LUU Marks are used. Because Complainant’s mark is extensively used in connection with jewelry (including necklaces and wrap bracelets) and fashion accessories (including scarves), the addition of the terms “jewelry” and “necklaces” further increases the confusing similarity of the chanluujewelrynecklaces.com and chanluujewelrynecklaces.info domain names with Complainant’s CHAN LUU Marks. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (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.”).
For similar reasons, the addition of the generic terms “scarf” and “wrap” also further increases the confusing similarity of the subject chanluuscarf.com, chanluuscarf.info, chanluuwrap.com, and chanluuwrap.info domain names with the Complainant’s CHAN LUU Marks.
Likewise, the addition of the generic top-level domain (“gTLD”) name “.com” and “.info” portions of the subject domain names are irrelevant to the confusingly similar analysis. See Dermalogica, Inc. and The International Dermal Institute, Inc. v. Andrew Porter and Zen Day Spa, FA1155710 (Nat. Arb. Forum Apr. 14, 2008) (the addition of the gTLD “.com” is not relevant in determining whether a disputed domain name is confusingly similar to a mark because a gTLD is a required part of every domain name). Thus, the addition of “.com” or “.info” is insufficient to avoid a finding of confusing similarity between the subject domain names and the CHAN LUU Marks.
Accordingly, both applicable case law and prior administrative proceedings support a finding that the subject domain names are confusingly similar to Complainant’s trademarks.
D. Respondent Has No Rights or Legitimate Interest in the Subject Domain Names
Respondent has no rights or legitimate interest in the subject domain names. 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 subject domain names pursuant to Policy ¶4(a)(ii). See G.D. Searle & Co. v. Martin Mktg., FA118277 (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 names.
1. Respondent is not making a bona fide offering of goods and services at the subject domain names
The Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the subject domain names. For instance, Respondent could have rights under ¶4(c)(i) of the Policy if “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, FA338427 (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 subject 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.”).
However, Respondent does not have rights under ¶4(c)(i) of the Policy because Respondent is offering competing goods under the mark at the subject .com domain names (chanluujewelrynecklaces.com, chanluuscarf.com, and chanluuwrap.com) in an attempt to divert Internet users seeking Complainant’s website to Respondent’s websites.
Screen captures taken on June 15, 2012, June 21, 2012, and June 22, 2012 showing Respondent’s use of the subject domain names have been provided to the Panel. The layouts of the Complainant’s site and chanluujewelrynecklaces.com are very similar, as both feature the CHAN LUU Mark in capital letters, both include a site index at the top of the page and categories of goods along the left side of the page, both show a larger image above a grid of items available for sale. The websites at the chanluuscarf.com and chanluuwrap.com domains have substantially the same layout and design as chanluujewelrynecklaces.com.
A user at the websites available at chanluujewelrynecklaces.com, chanluuscraf.com, and chanluuwrap.com can purchase jewelry and apparel from the websites.
Chanluujewelrynecklaces.com offers for sale jewelry that is substantially similar or identical to the jewelry offered for sale by Complainant. In addition, the layout of the web pages are very similar, as both feature the CHAN LUU Mark in capital letters, both include a site index at the top of the page, both feature images of beaded jewelry, and both use identical language to name the particular piece of jewelry shown (“Jet Swarovski Crystal and Skull Necklace”).
Furthermore, necklaces offered for sale at Respondent’s website at the chanluujewelrynecklaces.com domain name are identical to those offered for sale by Complainant.
Similarly, a scarf offered for sale at Respondent’s website at the chanluuscarf.com domain name that is identical to the scarf offered by Complainant.
A wrap bracelet offered for sale at Respondent’s website at the chanluuwrap.com domain name is identical to the wrap bracelet offered by Complainant.
The necklaces, scarves, and wrap bracelets available from the Respondent’s websites at the subject .com domain names are not Complainant’s goods, and are offered at a substantially lower prices than Complainant’s goods.
As such, Respondent’s offer for sale of competing goods on the websites at the subject .com domain names, coupled with the similar look of Respondent’s websites at the subject .com domain names and Complainant’s website, indicates Respondent’s intent to divert Internet users seeking Complainant’s website to Respondent’s websites. See Ameritrade Holdings Corp. v. Polanski, FA102715 (Nat. Arb. Forum Jan. 11, 2002) (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, Respondent is not making a bona fide offering of goods and services at the subject .com domain names and therefore has no legitimate interest in the subject .com domain names under the circumstances described in Policy ¶4(c)(i).
In addition, Respondent does not have a legitimate interest in the subject .info domain names (chanluujewelrynecklaces.info, chanluuscarf.info, and chanluuwrap.info) because, at the time this complaint was filed, the subject .info domain names resolved to GoDaddy.com parking pages. A passive holding of a domain name is evidence that Respondent has not made 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 First Capital Group of Texas v. Shanahan LTD, FA198540 (Nat. Arb. Forum July 28, 2008) (Respondent’s failure to make an active use of the disputed domain name is evidence of no bona fide offering of goods and services and no legitimate noncommercial or fair use); Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA434145 (Nat. Arb. Forum Apr. 20, 2005) (inactive use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain name).
Because Respondent is merely squatting on the .info domain names, Respondent is not making a bona fide offering of goods and services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use or under Policy ¶4(c)(iv) at the subject .info domain names.
2. Respondent is not commonly known by the subject domain names
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 subject domain names chanluujewelrynecklaces.com, chanluuscarf.com, chanluuwrap.com, chanluujewelrynecklaces.info, chanluuscarf.info, and chanluuwrap.info or Chan Luu Jewelry Necklaces, Chan Luu Scarf, or Chan Luu Wrap. Respondent’s name, as listed in the WHOIS information for the subject domain names, is “catcat juan.”
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 subject domain names. See Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA040087 (Nat. Arb. Forum Aug. 31 2007) (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. George Rau, FA308206 (Nat. Arb. Forum April 2, 2010) (Respondent was not commonly known by the disputed domain name when Respondent was “not licensed or otherwise authorized to use” Complainant’s mark).
Accordingly, Respondent cannot defend under Policy ¶4(c)(ii) by claiming that they are known by the subject domain names.
3. Respondent is not making legitimate noncommercial or fair use of the subject domain names
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 plainly making commercial use of the subject domain names in ways that are 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 May 2012 registration of the subject domain names.
As discussed above, the subject .com domain names have been used to host websites using the CHAN LUU Marks and selling competing goods. In addition, as discussed above, the subject .info domain names merely direct to GoDaddy.com parking pages. As such, Respondent is clearly not making a legitimate noncommercial or fair use of the domain names. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA154119 (Nat. Arb. Forum May 12, 2003) (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); see also First Capital Group of Texas v. Shanahan LTD, FA198540 (Nat. Arb. Forum July 28, 2008); Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA434145 (Nat. Arb. Forum Apr. 20, 2005). Accordingly, the circumstances described in Policy ¶¶4(c)(ii) or 4(c)(iv) are not present.
E. Respondent Has Registered and Is Using the Subject Domain Names 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.).
Respondent’s websites at the subject .com domain names, includes several uses of the CHAN LUU Marks and many similarities with Complainant’s website at chanluu.com. Respondent’s websites further allow a user to purchase competing goods, with Respondent presumably profiting from the purchase of goods through the website at the subject .com domain names. The only reason for Respondent’s registration of the subject .com domain names and subsequent hosting of a website at the subject .com domain names is to misdirect users and divert traffic to Complainant’s competitors. Accordingly, Respondent’s registration and use of the contested .com domain names—chanluujewelrynecklaces.com, chanluuscarf.com, and chanluuwrap.com—to offer competing goods and services satisfies the requirements of Policy ¶¶4(b)(iii) and (iv).
Respondent registered the chanluujewelrynecklaces.com, chanluuscarf.com, and chanluuwrap.com domain names with actual knowledge of Complainant’s rights in the CHAN LUU Marks by virtue of Respondent’s website at the subject domain names. See Associated Materials, Inc. v. Perma Well, Inc., FA154121 (Nat. Arb. Forum May 23, 2003) (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).
Respondent has failed to make active use of the subject .info domain names (chanluujewelrynecklaces.info, chanluuscarf.info, and chanluuwrap.info), which is evidence of bad faith pursuant to Policy ¶4(a)(iii). See First Capital Group of Texas v. Shanahan LTD, FA198540 (Nat. Arb. Forum July 28, 2008) (Respondent’s failure to make an active use of the disputed domain name is evidence bad faith registration and use of the disputed domain name); see also American Broadcasting Companies, Inc. v. Sech, FA893427 (Nat. Arb. Forum Feb. 28, 2007) (Respondent’s failure to use the disputed domain name is evidence of bad faith registration of the domain name).
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 subject .info domain names 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 names chanluujewelrynecklaces.com, chanluuscarf.com, chanluuwrap.com, chanluujewelrynecklaces.info, chanluuscarf.info, and chanluuwrap.info so clearly reference 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.
(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.”).
Complainant contends it has rights in the CHAN LUU mark, which it uses in connection with jewelry, clothing, accessories, and services. Complainant provided the Panel with evidence of its ownership of the USPTO trademark registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029). Panels have found that registration of a mark, regardless of the location of the parties, is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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). This Panel agrees and finds Complainant has rights in the CHAN LUU mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names are confusingly similar to the CHAN LUU mark. Respondent’s deletion of spaces and addition of a generic top-level domain (“gTLD”) in each domain name is irrelevant to a Policy ¶4(a)(i) analysis. 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)). Respondent’s addition of one or more generic terms to each domain name fails to adequately differentiate the disputed domain names from the CHAN LUU mark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶4(a)(i)). Therefore, this Panel finds Respondent’s <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names are confusingly similar to the CHAN LUU mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
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.”).
Complainant asserts Respondent is not commonly known by the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names. Complainant claims it has not licensed Respondent to use the CHAN LUU mark and does not have any legal relationship with Respondent that would entitle it use the mark. The WHOIS record lists “catcat juan” as the domain name registrant. Based upon this uncontested information, the Panel finds Respondent is not commonly known by the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names pursuant to Policy ¶4(c)(ii). 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).
Complainant claims Respondent’s use of the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, and <chanluuwrap.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant notes that the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, and <chanluuwrap.com> domain names resolve to websites which sell competing goods in the jewelry and accessories industry. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held that the use of a disputed domain name to offer competing products does not give the respondent rights or legitimate interests in the domain name. Therefore, the Panel finds Respondent’s use of the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, and <chanluuwrap.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii).
Complainant claims Respondent’s use of the <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names does not give Respondent rights or legitimate interests. The <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names resolve to parked websites. The Panel presumes the parked websites display a variety of competing and/or noncompeting links. This Panel believes a respondent cannot acquire rights to a mark solely by not actively using a domain name. Therefore, the Panel finds Respondent’s use of the <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names 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. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names in bad faith. Complainant claims the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, and <chanluuwrap.com> domain names resolve to websites which offer for sale goods and services which directly compete with those that Complainant offers, such as jewelry and accessories. In fact, these web sites offer counterfeit copies of Complainant’s goods, not just competing goods. According to Complainant, the <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names resolve to parked websites. The Panel infers these websites display various links to competing and/or noncompeting goods and services. Complainant claims Respondent registered and uses the disputed domain names to allow Respondent to profit from the misdirection of users from Complainant’s website to Respondent websites. Based upon this evidence, the Panel finds Respondent attempted to attract, for commercial gain, Internet users to the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names by creating a likelihood of confusion. The panel finds Respondent registered and is using the <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names in bad faith under Policy ¶4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)).
While it seems almost tautological, selling counterfeit copies of Complainant’s merchandise creates a presumption of bad faith registration and use of the related domain names.
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 <chanluujewelrynecklaces.com>, <chanluuscarf.com>, <chanluuwrap.com>, <chanluujewelrynecklaces.info>, <chanluuscarf.info>, and <chanluuwrap.info> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 15, 2012
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