national arbitration forum

 

DECISION

 

Chan Luu Inc. v. tim tim

Claim Number: FA1209001461172

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ichanluu.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2012; the National Arbitration Forum received payment on September 4, 2012.

 

On September 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ichanluu.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  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 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@ichanluu.com.  Also on September 7, 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 Paul M. DeCicco 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant established its CHAN LUU jewelry business in 1995 in California, USA and currently sells its products throughout the world under the CHAN LUU mark.

 

Complainant owns trademark registrations for Chan Luu with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029 registered August 3, 2004).

 

Complainant holds trademark registrations with national trademark authorities throughout the world.

 

The <ichanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark because Respondent only adds the letter “i" and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.

Respondent is not commonly known by the <ichanluu.com> domain name because Respondent is not licensed to use Complainant’s CHAN LUU mark and Respondent is not related to Complainant.

 

The WHOIS information identifies “tim tim” as the registrant of the disputed domain name, which is not similar to the domain name.

 

Respondent’s <ichanluu.com> domain name resolves to a website that resembles Complainant’s official website and sells competing jewelry products, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.

 

Respondent registered and uses the <ichanluu.com> domain name for the purpose of commercially gaining by creating a likelihood of confusion as to Complainant’s association with the disputed domain name.

 

Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when Respondent registered the <ichanluu.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations with the USPTO for its CHAN LUU mark.

 

Complainant’s trademark rights in CHAN LUU predate Respondent’s registration of the domain name.

 

The WHOIS information identifies “tim tim” as the registrant of the disputed domain name,

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent’s <ichanluu.com> domain name resolves to a website that resembles Complainant’s official website and sells competing jewelry products.

 

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 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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant established rights in the Chan Luu mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. 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.”).

 

The <ichanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark for the purpose of Policy ¶ 4(a)(i). Respondent only adds the letter “i," a common term often used as a prefix in electronic commerce, deletes the space between the mark’s components, and then appends the top level domain name, “.com.” See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000), (finding that the prefix “e” was a “generic or common descriptive term used to identify electronic commerce activity” and that such an addition to a mark did not distinguish the domain name from the complainant’s mark); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000), (finding that the respondent’s domain name, <americanonline.com>, was confusingly similar to the complainant’s famous AMERICA ONLINE mark, regardless of the removal of a space and the additions of a letter and gTLD).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

The WHOIS information for the at-issue domain names identifies the domain name registrant as “tim tim” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <ichanluu.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the < ichanluu.com > domain name for the purposes of 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).

 

Respondent’s <ichanluu.com> domain name resolves to a website that resembles Complainant’s official website and sells competing jewelry products. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), (holding “that capitalizing on the well-known marks of [the complainant] by attracting internet users to [the respondent’s] disputed domain names where [the respondent sold] competing products of [the complainant was] not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) 

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith.

 

Respondent created Internet user confusion by registering the confusingly similar disputed domain name and by selling competing products on a referenced website resembling Complainant’s official website.  These circumstances demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).

 

Additionally, Respondent apparently had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <ichanluu.com> domain name.  Respondent’s actual knowledge is evident by the similarities between the <ichanluu.com> website and Complainant’s official website and by Respondent’s sale of competing products via the <ichanluu.com> website.  Registering and using a domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <ichanluu.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated: October 3, 2012

 

 

 

 

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