Chan Luu Inc. v. Li Yong Ze
Claim Number: FA1209001463461
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Li Yong Ze (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluugroup.com>, registered with Xin Net Technology Corporation.
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 September 19, 2012; the National Arbitration Forum received payment on September 19, 2012. The Complaint was submitted in both Chinese and English.
On September 20, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <chanluugroup.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 October 1, 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 22, 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@chanluugroup.com. Also on October 1, 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 31, 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns exclusive rights to the CHAN LUU trademark and has used the mark for over seventeen years to identify its famous and successful line of jewelry, clothing, and accessories. Complainant began its business in 1995, and currently sells its products in major retail stores and specialty stores around the world. Complainant owns the <chanluu.com> domain name, at which it provides customers information on its products sold under the CHAN LUU mark. Complainant owns trademark registrations for its CHAN LUU mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,869,029 registered August 3, 2004). Complainant also owns trademark rights in numerous other countries including China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,497,349 registered August 21, 2009). Complainant’s products are well-known and recognized by the fashion world and celebrities and are often featured in professional photographs and displayed in magazines.
Respondent registered the <chanluugroup.com> domain name and uses the domain name to sell goods in direct competition to those sold by Complainant. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent is neither commonly known by the disputed domain name nor is it authorized to use Complainant’s mark. The <chanluugroup.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Respondent’s registration and use of the disputed domain name is in bad faith because Respondent offers competing goods to those sold by Complainant, disrupts Complainant’s business, and improperly attracts Internet consumers to its own website. Respondent was aware of Complainant’s rights in the CHAN LUU mark at the time Respondent registered the disputed domain name.
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 makes the assertion that its rights in the CHAN LUU mark are secured by its various trademark registrations with international authorities, including the USPTO (e.g. Reg. No. 2,869,029 registered August 3, 2004) and the SAIC (Reg. No. 5,497,349 registered August 21, 2009). In 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 concluded that the complainant’s registrations with the USPTO and the SAIC established the complainant’s rights in its trademark under the Policy. The Panel determines that Complainant’s rights in its CHAN LUU mark are established by its USPTO and SAIC trademark registrations.
Complainant argues that the <chanluugroup.com> domain name is confusingly similar to its CHAN LUU mark and points out the inclusion of the entire mark in the domain name with the additions of the generic term “group” and the generic top-level domain (“gTLD”) “.com.” The Panel also notes that the domain name excludes the space between the words in the mark. The Panel finds that the <chanluugroup.com> domain name is confusingly similar under Policy ¶ 4(a)(i) despite the additions of a generic term and a gTLD and despite removal of the space between words. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s 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)).
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 <chanluugroup.com> domain name, supporting its assertion with evidence of the WHOIS information, which identifies “Li Yong Ze” as the registrant. Further, Complainant insists that Respondent has not been granted permission to use the CHAN LUU mark in any way. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), found that based on the lack of authorization from the complainant and the information in the WHOIS record, the respondent could not be commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <chanluugroup.com> domain name pursuant to Policy ¶ 4(c)(ii) based on the WHOIS information and Complainant’s claim that Respondent lacks permission to register a domain name using its mark.
Complainant insists that Respondent uses the <chanluugroup.com> domain name to carry on a business in competition with Complainant by selling competing products. Complainant alleges that Respondent’s competing use of the disputed domain name does not reflect a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant further alleges that Respondent’s competing use includes the sale of counterfeit CHAN LUU items. The Panel concludes that competing with Complainant’s business by selling similar and counterfeit goods does not constitute 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 Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant has proven this element.
Complainant alleges that Respondent uses the <chanluugroup.com> domain name to host a website that misdirects potential customers of Complainant to Respondent’s website in order to sell competing counterfeit items, which is disruptive of Complainant’s business. Complainant argues that Respondent’s registration and use of the disputed domain name is in bad faith under Policy ¶ 4(b)(iii). The Panel finds that Respondent’s use of the disputed domain name to compete with Complainant’s business by marketing counterfeit goods is disruptive and demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant makes the assertion that Respondent’s use of a domain name confusingly similar to Complainant’s CHAN LUU mark to sell goods in competition with Complainant’s goods is evidence of bad faith registration and use. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel held that the respondent’s attempt to make a profit by creating confusion between its website and the complainant’s business by selling counterfeit products was in bad faith. The Panel concludes that Respondent’s bad faith registration and use of the <chanluugroup.com> domain name under Policy ¶ 4(b)(iv) is shown by its sale of counterfeit products at the resolving website and its attempt to attract Internet users by creating confusion as to Complainant’s affiliation with the domain name.
Complainant argues that Respondent uses a web layout at the <chanluugroup.com> domain name that is similar to that of Complainant’s own homepage at its <chanluu.com> website. Complainant alleges that the resolving website conspicuously displays Complainant’s CHAN LUU mark and includes many visual similarities to the features of Complainant’s website. The Panel finds that Respondent’s imitation of Complainant’s website constitutes an attempt by Respondent to pass itself off as Complainant, which is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark, as demonstrated by Respondent’s use of the mark at its resolving website and other similarities between its website and Complainant’s. The Panel concludes that Respondent’s actual knowledge of Complainant’s CHAN LUU mark prior to registering the <chanluugroup.com> domain name is shown by its prominent use of the mark at the resolving website and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <chanluugroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 2, 2012
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