Chan Luu Inc. v. Keith Wallace
Claim Number: FA1209001463029
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Keith Wallace (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapchanluu.com>, registered with Click Registrar, Inc. d/b/a publicdomainregistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2012; the National Arbitration Forum received payment on September 17, 2012.
On September 19, 2012, Click Registrar, Inc. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <cheapchanluu.com> domain name is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Click Registrar, Inc. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Click Registrar, Inc. d/b/a publicdomainregistry.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 September 19, 2012, the Forum served the Complaint and all Annexes, including a 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@cheapchanluu.com. Also on September 19, 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 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in the sale of prestige jewelery, clothing, accessories and related products.
2. Complainant owns trademark rights in the CHAN LUU mark through its trademark holdings with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004).
3. Respondent registered the disputed domain name on July 15, 2012. It is linked to a website that sells goods in direct competition with Complainant, including counterfeit goods.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it owns the exclusive rights to the trademark and trade name CHAN LUU, which Complainant claims to have used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant also asserts that Complainant owns trademark rights in the CHAN LUU mark through its trademark holdings with the USPTO (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004). The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for it to establish rights in the CHAN LUU mark pursuant to Policy ¶ 4(a) (i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHAN LUU mark. Complainant contends that Respondent’s <cheapchanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as the domain name features the mark entirely and merely adds the generic term “cheap.” Complainant also argues that the addition of the gTLD “.com” is irrelevant to a confusingly similar analysis. The Panel notes that the disputed domain name also deletes the space from between the terms of the mark. The Panel finds that the elimination of spaces and the addition of a gTLD are not sufficient to render the disputed domain name distinct from the mark. 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)). Further, the Panel finds that the addition of a generic term is also not sufficient to remove the disputed domain name from the realm of confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Therefore, the Panel finds that Respondent’s <cheapchanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHAN LUU trademark and to use it in its domain name, merely adding the generic word “cheap” , thereby strengthening the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name to sell goods in direct competition with Complainant, with some of those goods being counterfeit;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant also submits that Respondent, Keith Wallace per the WHOIS information, is not commonly known by the disputed domain name and Respondent has not been given permission to use the CHAN LUU mark in any way. Complainant argues that as such Respondent does not have rights or legitimate interests in the disputed domain name as required under Policy ¶ 4(c) (ii). The Panel agrees and finds that Respondent, Keith Wallace, is not commonly known by the <cheapchanluu.com> domain name 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);
(e) Further, Complainant argues that Respondent is using the disputed domain name to sell directly competitive jewelry products via a website that visually resembles Complainant’s official website. Complainant has supplied a screenshot of its website in Exhibit H, as well as, in Exhibit G, a screenshot of Respondent’s website to which the disputed domain name resolves. The Panel finds that Respondent’s directly competing use of the disputed domain name is not 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s use of the disputed domain name to host a directly competing and confusing website is evidence of bad faith under both Policy ¶ 4(b) (iii) and Policy ¶ 4(b) (iv).
As to Policy ¶ 4(b) (iii), the Panel notes that prior UDRP panels have held that a respondent’s use of a disputed domain name to offer directly competitive products disrupts a complainant’s business and is evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iii).”). The Panel agrees and finds that Respondent’s intentional diversion of Internet users who may be looking to purchase Complainant’s goods to Respondent’s website is evidence of bad faith registration and use under Policy ¶ 4(b) (iii).
As to Policy ¶ 4(b) (iv), Complainant asserts that both Respondent’s registration of a confusingly similar domain name, as well as the presentation of a visually similar website that sells competing goods, is evidence that Respondent is attempting to attract Internet users through confusion. Complainant asserts that Respondent’s competing website also creates profit from the use of Complainant’s mark by selling such competing goods. The Panel notes that prior UDRP panels have held that a respondent’s competing use of a disputed domain name is evidence of bad faith under Policy ¶ 4(b) (iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also 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 as those offered by the complainant). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iv) by operating a directly competing website.
Secondly, Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark, as evidenced by Respondent’s “explicit use of the CHAN LUU mark and the visual similarity of the website at the subject domain name.” The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting 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).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CHAN LUU mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapchanluu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 17, 2012
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