national arbitration forum

 

DECISION

 

Chan Luu Inc. v. aipapa aipapa

Claim Number: FA1210001466070

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <chanluubraceletsoutlet.org> and <chanluuwrapbraceletsbeaded.org>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 5, 2012; the National Arbitration Forum received payment October 5, 2012.

 

On October 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluubraceletsoutlet.org> and <chanluuwrapbraceletsbeaded.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@chanluubraceletsoutlet.org, and postmaster@chanluuwrapbraceletsbeaded.org.  Also on October 12, 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 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

Complainant makes the following allegations in this proceeding:

 

 

B. Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark.

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names.

 

The Panel finds that Respondent registered and used the disputed domain names in bad faith.

 

 

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 Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

 

Respondent did not submit a Response. 

 

The Panel notes that the WHOIS information states that the Respondent registered the <chanluubraceletsoutlet.org> and the <chanluuwrapbraceletsbeaded.org> domain names August 11, 2012, some eight years after Complainant established legal rights in the marks.

 

 

Identical to and/or Confusingly Similar

 

Complainant argues that it has rights in the CHAN LUU mark through both common law rights and registration, and that Complainant has used the CHAN LUU mark in the sale of goods and services in the jewelry business since 1995.  Complainant submits evidence that it owns trademark registrations with the USPTO.  See, e.g., USPTO Reg. No. 2,869,028 registered on Aug. 3, 2004.  Previous panels have found that a complainant’s registration of a mark with the USPTO satisfies complainant’s rights requirement under 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)).  Therefore, the Panel finds that Complainant established rights in the CHAN LUU mark.

 

Complainant argues that the disputed domain names are confusingly similar to Complainant’s CHAN LUU mark because the domain names, <chanluubraceletsoutlet.org> and <chanluuwrapbraceletsbeaded.org>, merely add the gTLD “.org” and the generic terms “bracelets outlets” or “wrap bracelets beaded” to Complainant’s mark.  Complainant also argues that the confusing similarity is amplified by the fact that the generic phrases “bracelets outlets” and “wrap bracelets beaded” characterize the goods and services Complainant offers under its CHAN LUU mark. The addition of a gTLD, such as “.org,” to a registered mark does not prevent confusing similarity and it does not distinguish a name where the respondent removes the spacing between the other terms in the disputed domain names.  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)).  The Panel finds that the addition of  “wrap bracelets beaded,” and “bracelet” in the <chanluubraceletsoutlet.org> domain name, does not avoid confusing similarity, because the terms are merely descriptive of the Complainant’s business done under the CHAN LUU mark.  See O Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  Furthermore, the addition of “outlet” to the disputed domain increases the confusing similarity, because “outlet” is a generic term that ties the name even closer to the protected mark.  See Target Brands, Inc. v. N/A c/o Anthony Hardy, FA 505367 (Nat. Arb. Forum Aug. 2, 2005) (“the addition of the generic or descriptive term “outlet” to Complainant’s TARGET mark to form the <targetoutlet.net> domain name does not negate the confusing similarity between the domain name and Complainant’s mark.”).  Therefore, the Panel finds that both disputed domain names are confusingly similar to the CHAN LUU mark under a Policy ¶ 4(a)(i) analysis.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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.  Complainant alleges that the WHOIS information alone is sufficient to show that Respondent is not commonly known by the disputed domain names. Furthermore, Complainant also argues that Respondent does not have permission to use the CHAN LUU mark.  Complainant notes that the WHOIS information lists the registrant of the disputed domain names as “aipapa aipapa.”  The Panel notes that Respondent offered no other evidence, and that no other evidence exists in the record, to indicate that Respondent was commonly known by either of the <chanluubraceletsoutlet.org> or <chanluuwrapbraceletsbeaded.org> domain names.  The Panel agrees that without some evidence, a respondent cannot be found to be commonly known by a disputed domain.  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).  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent is not using the disputed domain names to make a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain names.  Complainant argues that the <chanluubraceletsoutlet.org> domain name is being used to offer goods in direct competition with those offered under Complainant’s CHAN LUU mark.  Complainant also argues that Respondent is excessively using variants of the CHAN LUU mark throughout the <chanluubraceletsoutlet.org> domain and seeks to divert Internet users looking for Complainant’s website to Respondent’s disputed domain names’ and their resolving website.  The Panel notes that the images of Respondent’s <chanluubraceletsoutlet.org> domain name in Complainant’s Exhibit G consist primarily of bracelets and other products that compete with products sold by Complainant. Use of a complainant’s mark to attract customers to respondent’s competing products is not a legitimate noncommercial or fair use and it is not a bona fide offering of goods and services.  See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is 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).”).  Therefore, the Panel finds that Respondent has no rights or legitimate interests relative to the <chanluubraceletsoutlet.org> domain; Respondent has not shown any bona fide offering of goods or services under Policy ¶ 4(c)(i), or any legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).

 

Relative to the <chanluuwrapbraceletsbeaded.org> domain name, Complainant argues that Respondent is using the disputed domain name in furtherance of a “phishing scheme” to obtain the personal information of Internet users who visit the disputed domain name’s resolving website.  Complainant argues that Internet users may believe they are logging into Complainant’s website and that as a result, the user would mistakenly give personal information to Respondent.  The Panel notes that Complainant’s Exhibit I, illustrates that the domain provides no content other than a username and password prompt.  Previous panels have found that phishing schemes do not establish rights or legitimate interests in disputed domains.  See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).  Therefore, the Panel finds that Respondent lacks rights and legitimate interests relative to the <chanluuwrapbraceletsbeaded.org> domain name; Respondent is phishing for the personal information of Complainant’s customers and such use 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). 

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and used the disputed domain names in bad faith.  Complaint first argues that the operation of the <chanluubraceletsoutlet.org> domain in competition with Complainant is an effort by Respondent to disrupt Complainant’s business under a Policy ¶ 4(b)(iii) analysis.  The Panel notes that the <chanluubraceletsoutlet.org> domain makes use of the CHAN LUU mark in the disputed domain, and throughout the resolving website’s content pages, to promote Respondent’s sale of goods similar to those sold by Complainant.  See Complainant’s Exhibit G.  A respondent’s use of a disputed domain to deceive Internet users who intended to do business with a complainant violates Policy ¶ 4(b)(iii) as such use disrupts a complainant’s business.  See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).  The Panel therefore finds that Respondent registered and is using the <chanluubraceletsoutlet.org> domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent is creating a likelihood of confusion with Complainant’s CHAN LUU mark to attract Internet users to the <chanluubraceletsoutlet.org> domain name for a commercial gain in bad faith under Policy ¶ 4(b)(iv).  Complainant alleges that Respondent is using the <chanluubraceletsoutlet.org> domain to redirect Internet users seeking Complainant’s official website to a website bearing Complainant’s mark, while offering goods in direction competition with Complainant.  The Panel finds that such use of the <chanluubraceletsoutlet.org> domain name is in fact evidence of a bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Complainant argues that Respondent registered the disputed domain names with actual and/or constructive knowledge of Complainant’s rights in the CHAN LUU mark.  Complainant bases this argument on the evidence of Respondent’s use of the CHAN LUU mark within the resolving website at the <chanluubraceletsoutlet.org> domain name.  The Panel notes that Complainant’s CHAN LUU mark also appears on the <chanluubraceletsoutlet.org> domain name’s resolving website, albeit missing a space and appearing as “chanluu.”  See Complainant’s Exhibit G. Although constructive notice is not sufficient to support a finding of bad faith, the Panel finds that this Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 [had] "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant alleges that Respondent is using the <chanluuwrapbraceletsbeaded.org> domain name to phish for personal information from Complainant’s customers, and that therefore Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  The Panel notes that beyond asking for a username and password, it is unclear what purpose Respondent intended for the <chanluuwrapbraceletsbeaded.org> domain.   Complainant argues that its customers may input their login information into Respondent’s website, thereby giving Respondent the personal information of Complainant’s customers.  The Panel looks to a previous panel’s decision that found requests for personal information to be evidence of bad faith.  See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).  Therefore, the Panel finds that Respondent registered and used the <chanluuwrapbraceletsbeaded.org> domain name in bad faith pursuant to a Policy ¶ 4(a)(iii) analysis under which phishing for personal information of Complainant’s customers supports findings of bad faith.

 

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

 

DECISION

Having found all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chanluubraceletsoutlet.org> and <chanluuwrapbraceletsbeaded.org> domain names be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: November 27, 2012.

 

 

 

 

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