Chan Luu Inc. v. A. Robinson Jewel / Alton B. Bates Alton B. Bates / Stanley M. Moree Stanley M. Moree / Teodoro N. Mills Teodoro N. Mills / Louis P. Kron Louis P. Kron / Frank G. Derrick Frank G. Derrick / J. Brown Gregorio / L. Beard John / George C. Yowell George C. Yowell / G. Zawacki Michael / Robert L. Quillen Robert L. Quillen / N. Roland Tim / B. Oxendine Mark / Kelly L. Ross Kelly L. Ross / J. Huff Kyle / Adam T. McCormack Adam T. McCormack / Danny M. Cannady Danny M. Cannady
Claim Number: FA1210001465467
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is A. Robinson Jewel / Alton B. Bates Alton B. Bates / Stanley M. Moree Stanley M. Moree / Teodoro N. Mills Teodoro N. Mills / Louis P. Kron Louis P. Kron / Frank G. Derrick Frank G. Derrick / J. Brown Gregorio / L. Beard John / George C. Yowell George C. Yowell / G. Zawacki Michael / Robert L. Quillen Robert L. Quillen / N. Roland Tim / B. Oxendine Mark / Kelly L. Ross Kelly L. Ross / J. Huff Kyle / Adam T. McCormack Adam T. McCormack / Danny M. Cannady Danny M. Cannady (collectively “Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2012; the National Arbitration Forum received payment on October 2, 2012.
On October 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.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 October 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@chanluu-japan.com, postmaster@chanluu2012.com, postmaster@chanluuclassic.com, postmaster@chanluugoodjp.com, postmaster@chanluujapan2012.com, postmaster@chanluujapansale.com, postmaster@chanluujpshop.com, postmaster@chanluulink.com, postmaster@chanluumarket.com, postmaster@chanluunecklacejp.com, postmaster@chanluunew.com, postmaster@chanluupearl.com, postmaster@chanluushopjp.com, postmaster@chanluushopping.com, postmaster@chanluustorejp.com, postmaster@chanluuwrapjapan.com, and postmaster@fashionchanluu.com. Also on October 5, 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 November 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the CHAN LUU mark. The mark is used in connection with jewelry, clothing, and accessories. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004).
b) The <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names are confusingly similar to the CHAN LUU mark. Each of the marks fully incorporates the CHAN LUU mark, save for the space between words, with the addition of some of the following: a generic term, a descriptive term, a geographic term, numbers, and the generic top-level domain (“gTLD”) “.com.”
c) Respondent is not commonly known by the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names. None of the aliases in the disputed domain names’ WHOIS records is remotely similar to the CHAN LUU mark. Additionally, Complainant has not given Respondent permission or otherwise authorized it to use the CHAN LUU mark.
d) The disputed domain names resolve to websites where Respondent sells counterfeit versions of Complainant’s goods.
e) Respondent registered and uses the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names in bad faith.
a. The disputed domain names registered are confusingly similar to Complainant’s mark and are used to offer goods in direct competition to Complainant’s goods. The disputed domain names’ resolving websites all prominently display Complainant’s CHAN LUU mark. Respondent is intentionally and unlawfully misdirecting Internet users searching for Complainant’s website to Respondent’s website.
b. Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered each of the disputed domain names. Respondent uses the CHAN LUU mark, a similar website layout, and Complainant’s copyright-protected photographs at the disputed domain names’ resolving websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that notwithstanding that the WHOIS record for each of the disputed domain names lists a unique name, address, telephone number, and e-mail address, these are all aliases for one Respondent. Complainant provides the Panel with evidence that the registrar for each of the disputed domain names, GoDaddy.com, LLC, confirmed that all 17 of the domain names are held in the same user account at <GoDaddy.com>. Furthermore, Complainant notes that each of the disputed domain names is used to host one of several common-template websites which sell counterfeit CHAN LUU goods.
Complainant also provides evidence that each of the disputed domain names’ resolving websites are hosted on webservers with IP addresses from the same delegated IP block assigned to one hosting company, DataShack, LC. According to Complainant, Respondent used the service provided at <fakenamegenerator.com> which randomly generates information that Respondent used to create the aliases for the disputed domain names’ WHOIS records. Complainant asserts that the e-mail addresses in the disputed domain names’ WHOIS record all end in either “teleworm.us” or “dayrep.com” which are used by the <fakenamegenerator.com> to create e-mail addresses. Lastly, Complainant notes that the address in the WHOIS record for each of the disputed domain names lists “New York 10001” as the state and zip code. Therefore, Complainant contends that a single entity controls all of the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceeding.
Complainant contends that it has rights in the CHAN LUU mark, which it uses in connection with jewelry, clothing, and accessories. Complainant provides the Panel with evidence that Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029 registered August 3, 2004). Therefore, the Panel finds that Complainant has rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next contends that the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names are confusingly similar to the CHAN LUU mark. Each of the marks fully incorporates the CHAN LUU mark, save for the space between words, with the addition of one or more of the following: a generic term, a descriptive term, a geographic term, numbers, and the gTLD “.com.” The panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), held that the deletion of spaces and the addition of a gTLD are changes required of all domain names and thus are irrelevant to a Policy ¶ 4(a)(i) analysis. The panel in Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), found that the addition of generic or descriptive terms fails to differentiate a disputed domain name from the mark within it. Similarly, in Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), the panel held that the addition of geographic terms does not distinguish a domain name from the mark within it. Lastly, the addition of numbers to a mark in a domain name does not create a distinction between the mark and the domain name. See Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark). Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names. According to Complainant, none of the aliases in the disputed domain names’ WHOIS records is remotely similar to the CHAN LUU mark. The WHOIS records for the disputed domain names list “A. Robinson Jewel / Alton B. Bates Alton B. Bates / Stanley M. Moree Stanley M. Moree / Teodoro N. Mills Teodoro N. Mills / Louis P. Kron Louis P. Kron / Frank G. Derrick Frank G. Derrick / J. Brown Gregorio / L. Beard John / George C. Yowell George C. Yowell / G. Zawacki Michael / Robert L. Quillen Robert L. Quillen / N. Roland Tim / B. Oxendine Mark / Kelly L. Ross Kelly L. Ross / J. Huff Kyle / Adam T. McCormack Adam T. McCormack / Danny M. Cannady Danny M. Cannady” as the domain name registrants. Additionally, Complainant argues that it has not given Respondent permission or otherwise authorized it to use the CHAN LUU mark. 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 asserts that Respondent’s lack of rights and legitimate interests in the disputed domain names is further evidenced by Respondent’s use of the domain names. Complainant asserts that the disputed domain names resolve to websites where Respondent sells counterfeit versions of Complainant’s goods, such as scarves and jewelry. The sale of counterfeit goods is not a use of a disputed domain name which is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011) (“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name 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.”). Therefore, the Panel finds that Respondent’s use of the disputed domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the disputed domain names in bad faith. Complainant argues that the disputed domain names registered are confusingly similar to Complainant’s mark and are used to offer counterfeit goods in direct competition to Complainant’s goods. According to Complainant, the disputed domain names’ resolving websites all prominently display Complainant’s CHAN LUU mark. Complainant alleges that Respondent is intentionally and unlawfully misdirecting Internet users searching for Complainant’s website to Respondent’s website. The Panel finds that the disputed domain names intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s CHAN LUU mark. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant).
Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CHAN LUU mark. Complainant contends that this is evidenced by Respondent’s use of a website layout similar to Complainant’s and the display of the CHAN LUU mark and Complainant’s copyright-protected photographs at the disputed domain names’ resolving websites. Because the Panel finds that Respondent had actual knowledge of Complainant's mark and rights, the Panel determines that Respondent registered the disputed domain names in bad faith under 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").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluu-japan.com>, <chanluu2012.com>, <chanluuclassic.com>, <chanluugoodjp.com>, <chanluujapan2012.com>, <chanluujapansale.com>, <chanluujpshop.com>, <chanluulink.com>, <chanluumarket.com>, <chanluunecklacejp.com>, <chanluunew.com>, <chanluupearl.com>, <chanluushopjp.com>, <chanluushopping.com>, <chanluustorejp.com>, <chanluuwrapjapan.com>, and <fashionchanluu.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 15, 2012
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