Chan Luu Inc. v. Norman Sharples
Claim Number: FA1208001460340
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Norman Sharples (“Respondent”), Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluunederland.com> and <chanluuitalia.com>, registered with CSL Computer Service Langenbach GMBH d/b/a Joker.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2012; the National Arbitration Forum received payment on August 28, 2012.
On August 31, 2012, CSL Computer Service Langenbach GMBH d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <chanluunederland.com> and <chanluuitalia.com> domain names are registered with CSL Computer Service Langenbach GMBH d/b/a Joker.com and that Respondent is the current registrant of the names. CSL Computer Service Langenbach GMBH d/b/a Joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GMBH d/b/a Joker.com 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 August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@chanluunederland.com and postmaster@chanluuitalia.com. Also on August 31, 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 September 26, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <chanluunederland.com> and <chanluuitalia.com> domain names are confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <chanluunederland.com> and <chanluuitalia.com> domain names.
3. Respondent registered and used the <chanluunederland.com> and <chanluuitalia.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHANN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004), used in connection with jewelry, clothing, and accessories.
Respondent registered the <chanluunederland.com> and <chanluuitalia.com> domain names on July 3, 2012, and uses them to resolve to websites that imitate Complainant’s official website and sell products that compete with Complainant’s products.
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.”).
The Panel finds that Complainant owns rights in the CHAN LUU mark through its trademark registrations with the USPTO for the CHAN LUU mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <chanluunederland.com> and <chanluuitalia.com> domain names are confusingly similar to Complainant’s CHAN LUU mark. The disputed domain names combine Complainant’s mark with the geographic terms “nederland” and “italia,” and the gTLD “.com.” These alterations fail to adequately distinguish the disputed domain names from Complainant’s mark. The Panel therefore concludes that Respondent’s <chanluunederland.com> and <chanluuitalia.com> domain names are confusingly similar to Complainant’s CHAN LUU mark for the purpose of Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 alleges that Respondent is not commonly known by the <chanluunederland.com> and <chanluuitalia.com> domain names. Complainant states that it did not license Respondent to use Complainant’s CHAN LUU mark. The WHOIS information lists “Norman Sharples” as the registrant of the disputed domain names. Respondent did not present any arguments or evidence that contradict Complainant’s arguments. Therefore, the Panel finds that Respondent is not commonly known by the <chanluunederland.com> and <chanluuitalia.com> domain names according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent uses the disputed domain names to host websites that sell products that directly compete with Complainant’s products. Complainant also claims that Respondent’s resolving websites visually resemble Complainant’s official website. The Panel finds that this does not constitute a bona fide offering of goods or service or a legitimate noncommercial or fair use of the domain names. 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent disrupts Complainant’s business by selling products at the websites resolving from the <chanluunederland.com> and <chanluuitalia.com> domain names, in direct competition with Complainant. Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
In addition to selling products that compete with Complainant’s, Respondent imitates Complainant’s official website. The Panel finds that Respondent imitates Complainant’s official website in order to create confusion as to Complainant’s affiliation with the websites resolving from the disputed domain names, to his commercial benefit. Consequently, the Panel finds that Respondent registered and uses the <chanluunederland.com> and <chanluuitalia.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services to those offered by the complainant).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark based on the visual similarities between Complainant’s website and Respondent’s websites. The Panel agrees and finds further bad faith under 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).").
The Panel finds that 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 <chanluunederland.com> and <chanluuitalia.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 3, 2012
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