national arbitration forum

 

DECISION

 

Chan Luu Inc. v. Peter Chan

Claim Number: FA1208001460956

 

PARTIES

Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA.  Respondent is Peter Chan (“Respondent”), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <chanluuwrapbracelets.org> and <chanluubracelets2012.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2012; the National Arbitration Forum received payment on August 31, 2012.

 

On September 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> 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 September 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@chanluuwrapbracelets.org and postmaster@chanluubracelets2012.com.  Also on September 6, 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 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant contends:

 

B. Respondent

Respondent did not submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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 decides 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 accepts 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 claims exclusive rights to the CHAN LUU mark, which Complainant alleges it uses in connection with jewelry, clothing, and accessories.  According to Complainant, Complainant owns trademark registrations for the CHAN LUU mark with the USPTO (e.g., Reg. No. 2,869,029 registered August 3, 2004).  In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel found trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i). The Panel agrees, and holds that Complainant owns rights in the CHAN LUU mark for the purpose of Policy ¶ 4(a)(i). 

 

Complainant contends that Respondent’s <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names are confusingly similar to Complainant’s CHAN LUU mark.  Complainant notes that the disputed domain names contain Complainant’s CHAN LUU mark, the terms “bracelets” and “wraps,” the number “2012,” and/or the gTLD “.com” or “.org.”  The Panel notes that the disputed domain name does not contain the space found in Complainant’s mark.  Complainant claims that the term “bracelets” is descriptive of Complainant’s products.  Past panels have held that the addition of a descriptive term or a number was insufficient to adequately distinguish a disputed domain name from a complainant’s 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”); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark).  Complainant also argues that the addition of a gTLD, such as “.com” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis.  In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found 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)). The Panel agrees and concludes that Respondent’s <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names are confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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 alleges that Respondent is not commonly known by the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names.  Complainant asserts that Respondent is not licensed to use Complainant’s CHAN LUU mark and that Respondent is not related to Complainant.  Complainant further claims that the WHOIS information lists “Peter Chan” as the registrant of the disputed domain names, which the Panel notes is not similar to the disputed domain names. Respondent did not respond to this case and did not present any evidence that Respondent is commonly known by the disputed domain names.  In Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), the panel found no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question.  In accordance with this precedent, the Panel holds that Respondent is not commonly known by the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names.  Complainant contends that Respondent uses the disputed domain names to sell products that directly compete with Complainant’s CHAN LUU products, including counterfeit versions of Complainant’s products. Complainant additionally alleges that Respondent’s websites resemble Complainant’s official website. In eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panel concluded that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. The Panel agrees with this holding and finds that Respondent’s use of the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> 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.

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain names.  Complainant claims that Respondent creates confusion because Respondent’s resolving websites resemble Complainant’s official website.  Complainant also contends that Respondent commercially benefits from the sale of competing products at the resolving websites, including counterfeit versions of Complainant’s products.  Past panels have found in similar situations that the registration and use of a disputed domain name to sell counterfeit products were evidence of bad faith registration and use.  See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).  Therefore, the Panel determines that Respondent registered and uses the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names in bad faith according to Policy ¶ 4(b)(iv). 

 

Complainant avers that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when Respondent registered the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names.  Complainant claims that Respondent’s actual knowledge is evidenced by the resemblance between Complainant’s website and Respondent’s websites and the sale of counterfeit versions of Complainant’s products.  In Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007), the panel rejected the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name.  The Panel agrees with Complainant and finds that Respondent registered the <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names in bad faith under Policy ¶ 4(a)(iii). 

 

Complainant has proven this element.

 

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 <chanluuwrapbracelets.org> and <chanluubracelets2012.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  October 2, 2012

 

 

 

 

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