Chan Luu Inc. v. huang zheng ping / huang zheng
Claim Number: FA1208001460965
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is huang zheng ping / huang zheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <chanluuwrapbracelets.com> and <chanluuwrapbraceletsale.com>, registered with SHANGHAI YOVOLE NETWORK INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2012; the National Arbitration Forum received payment on August 31, 2012. The Complaint was received in both English and Chinese.
On September 6, 2012, SHANGHAI YOVOLE NETWORK INC confirmed by e-mail to the National Arbitration Forum that the <chanluuwrapbracelets.com> and <chanluuwrapbraceletsale.com> domain names are registered with SHANGHAI YOVOLE NETWORK INC and that Respondent is the current registrant of the names. SHANGHAI YOVOLE NETWORK INC has verified that Respondent is bound by the SHANGHAI YOVOLE NETWORK INC 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 17, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 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@chanluuwrapbracelets.com, and postmaster@chanluuwrapbraceletsale.com. Also on September 17, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 asserts that it owns the exclusive rights to the trademark and trade name CHAN LUU, which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant also submits that it owns several trademark registrations for its CHAN LUU mark with the USPTO (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004) and SAIC (Reg. No. 5497349 registered Aug. 21, 2009). The Panel finds that such registrations are sufficient for Complainant to establish its rights in the mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <chanluuwrapbracelets.com> and <chanluuwrapbraceletsale.com> domain names are confusingly similar to Complainant’s CHAN LUU mark. Complainant notes that the disputed domain names contain its entire mark, absent the space between the terms, in conjunction with the descriptive and generic terms “wrap,” “bracelets,” and/or “sale.” Complainant contends that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under Policy ¶ 4(a)(i). The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i). 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)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”).
Complainant has proven this element.
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 argues that Respondent is not commonly known by the disputed domain names, and has not been given permission to use Complainant’s CHAN LUU mark in any way. The Panel notes that the disputed domain names were registered, per the WHOIS information, by “huang zheng ping / huang zheng.” Respondent has chosen to not respond to Complainant’s allegations. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues, and presents evidence to show, that Respondent’s disputed domain names do not resolve to active websites. The Panel finds that Respondent is not making bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under of the <chanluuwrapbracelets.com> and <chanluuwrapbraceletsale.com> domain names Policy ¶ 4(c)(iii), where Respondent has failed to make an active use of the disputed domain names. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant has proven this element.
Complainant asserts that Respondent has registered other domain names containing the famous trademarks of others, and argues that such registrations are evidence of bad faith in the present proceedings. The Panel finds that Respondent’s other domain name registrations establish a pattern of bad faith domain name registrations and the Panel finds that Respondent registered and is using the <chanluuwrapbracelets.com> and <chanluuwrapbraceletsale.com> domain names in bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Complainant further argues that Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds that Respondent’s non-use of the disputed domain names is evidence that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant contends that Respondent had at least constructive knowledge of Complainant’s rights in the CHAN LUU mark prior to registering the disputed domain names. Complainant argues that such knowledge is evidence of Respondent’s bad faith registration and use of the disputed domain names. The Panel finds that Respondent had actual knowledge of Complainant and its rights in the CHAN LUU mark prior to registering the disputed domain names. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant has proven this element.
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.com> and <chanluuwrapbraceletsale.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 17, 2012
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