Chan Luu Inc. v. wuhanmaoyi / huang wu han
Claim Number: FA1208001460023
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is wuhanmaoyi / huang wu han (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com>, registered with Guangdong Jinwanbang Technology Investment Co. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2012; the National Arbitration Forum received payment on August 27, 2012.
After numerous requests, the Registrar, Guangdong Jinwanbang Technology Investment Co. Ltd., has not confirmed to the National Arbitration that the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names are registered with Guangdong Jinwanbang Technology Investment Co. Ltd. or that the Respondent is the current registrant of the name. Guangdong Jinwanbang Technology Investment Co. Ltd.’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On September 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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@chanluubraceletcom.com, postmaster@chanluubraceletscom.com, postmaster@voguechanluusale.com, and postmaster@voguechanluusales.com. Also on September 11, 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 October 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 began its jewelry business in 1995, and currently distributes its products around the world to major retail stores. Complainant uses the CHAN LUU mark to market its jewelry line as well as its clothing, handbags, and accessories, and operates a website at the <chanluu.com> domain name, where it provides information on its products sold under the CHAN LUU mark.
Complainant owns trademark registrations for its CHAN LUU mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,869,029 registered August 3, 2004), as well as with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349 registered January 14, 2010). Complainant has considerable fame associated with its CHAN LUU mark and products, and has been featured in various fashion media, including blogs, magazines, and professional photographs.
Respondent registered the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names and uses the names to unlawfully sell goods in competition with Complainant. The disputed domain names are confusingly similar to Complainants CHAN LUU mark. The disputed domain names resolve to a website that attempts to pass itself off as Complainant’s website. Respondent is not commonly known by any of the disputed domain names and does not have permission from Complainant to use Complainant’s CHAN LUU mark to register domain names. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
Respondent registered the disputed domain names in bad faith as shown by its intentional disruption of Complainant’s business and Respondent’s use of the resolving website to imitate Complainant’s website and to offer competing products for sale. Respondent had actual and constructive knowledge of Complainant’s mark when Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names, and that Respondent registered and uses the domain names 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 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 claims to own rights in its CHAN LUU mark through its various trademark registrations, including with the USPTO (e.g. Reg. No. 2,869,029 registered August 3, 2004), as well as with China’s SAIC (e.g., Reg. No. 5,497,349 registered January 14, 2010). The Panel concludes that Complainant has secured rights in its CHAN LUU mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and the SAIC. See Nervous Tattoo, Inc. v. qiu xianzheng, FA 1296071 (Nat. Arb. Forum Jan. 18, 2010) (finding that the complainant established rights under Policy ¶ 4(a)(i) by demonstrating that it owned a trademark registration with China’s SAIC); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names are confusingly similar to its CHAN LUU mark. Each of the domain names uses the entire CHAN LUU mark, and includes generic terms such as “bracelet(s),” “sale(s),” or “vogue.” Each of the disputed domain names includes the generic top-level domain (“gTLD”) “.com.” The <chanluubraceletcom.com> and <chanluubraceletscom.com> domain names include the word “com,” and all of the disputed domain names eliminate the space in the mark. The addition of generic and descriptive terms, a gTLD, and the suffix “com” do not alter the disputed domain names’ confusing similarity to Complainant’s CHAN LUU mark for the purposes of Policy ¶ 4(a)(i). See 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)); see also 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 Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by any of the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names and lacks permission to use Complainant’s mark. Complainant provides the WHOIS information in its evidence, which identifies “huang wu han” and its organization “wuhanmaoyi” as the registrant. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), found that the respondent was not commonly known by the disputed domain name as a result of the WHOIS information associated with the domain name, and the lack of other supporting evidence. The Panel concludes that the WHOIS information does not support a finding that Respondent is commonly known by the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names and therefore lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent sells products at its website that compete with Complainant’s business, and provides evidence showing Respondent’s website, which features jewelry that appears to be made by Complainant. Complainant argues that Respondent’s competing use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), stated that the respondent’s use of the complainant’s mark to sell competing products does not constitute a bona fide offering of goods or services or a noncommercial or fair use. By selling goods in competition with Complainant’s business at the disputed domain names, the Panel holds that Respondent does not use the disputed domain names in connection with 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).
Complainant alleges that Respondent does not use the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain names resolve to a website that substantially copies the features of Complainant’s website, including use of the CHAN LUU mark, the same color scheme, and photographs featured on Complainant’s official website. The Panel determines that by attempting to pass itself off as Complainant by copying the distinguishing features of Complainant’s website, Respondent is not making 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent disrupts Complainant’s business by unlawfully misdirecting Internet users searching for Complainant’s website to Respondent’s website. The panel in Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), determined that the respondent registered and used the disputed domain names in bad faith by operating a competing website and disrupting the complainant’s business. Accordingly, the Panel finds that Respondent registered and uses the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by hosting websites that offer competing goods to those offered by Complainant.
Complainant asserts that Respondent uses confusingly similar versions of Complainant’s CHAN LUU mark to attract Internet traffic to its commercial website. The Panel finds that Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv) is demonstrated by its attempt to attract consumers to its competing website in order to make a profit. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant claims that the disputed domain names resolve to a website that closely resembles Complainant’s website, prominently displaying Complainant’s CHAN LUU mark in the same shade of orange Complainant uses, and also uses copyright-protected photographs belonging to Complainant that were taken from Complainant’s website. The panel in Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004), stated that the respondent registered and used the disputed domain name in bad faith by hosting a website that duplicated the complainant’s mark and logo, and gave the impression of affiliation with the complainant’s business. The Panel findd that Respondent’s attempt to pass itself off as Complainant constitutes registration and use of the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant alleges that Respondent registered the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names with actual knowledge of Complainant’s mark at the time of registration. Complainant asserts that Respondent’s actual knowledge of the CHAN LUU mark is evidenced by the similarity between Complainant’s website and the websites resolving from the disputed domain names. The Panel finds that Respondent’s actual knowledge of Complainant’s CHAN LUU mark demonstrates Respondent’s bad faith registration under Policy ¶ 4(a)(iii). 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluubraceletcom.com>, <chanluubraceletscom.com>, <voguechanluusale.com>, and <voguechanluusales.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 8, 2012
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