Chan Luu Inc. v. tim tim
Claim Number: FA1210001466582
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is tim tim (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chan-luu-bracelet.com>, <chanluubraceletss.com>, <chanluuss.com>, and <chanluubraceletsno1.com>, registered with GODADDY.COM, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2012; the National Arbitration Forum received payment on October 9, 2012.
On October 10, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chan-luu-bracelet.com>, <chanluubraceletss.com>, <chanluuss.com>, and <chanluubraceletsno1.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 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@chan-luu-bracelet.com, postmaster@chanluubraceletss.com, postmaster@chanluuss.com, and postmaster@chanluubraceletsno1.com. Also on October 11, 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 16, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Chan Luu Inc., is a business selling jewelry, fashion accessories, and clothing. Complainant’s products are sold around the world via major retail stores. Since 2006, Complainant has operated a website accessible at <chanluu.com>, which provides information on the products sold under the CHAN LUU trademark.
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered on August 3, 2004).
Respondent’s domain names, <chan-luu-bracelet.com>, <chanluubraceletss.com>, <chanluuss.com>, and <chanluubraceletsno1.com>, are confusingly similar to Complainant’s CHAN LUU marks as the addition of hyphens, the generic words and/or numbers, “bracelet,” “braceletss”, or “braceletsno1” or the letters “ss” do not distinguish the disputed domain names from Complainant’s CHAN LUU mark. Further, the addition of the generic top-level domain “.com” is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has not licensed Respondent to use its marks, nor does Respondent have any legal relationship with Complainant that would entitle him to use Complainant's CHAN LUU Marks. Respondent has no legitimate reason for using the CHAN LUU Mark as the dominant part of the subject domain names.
Respondent is not commonly known by the disputed domain names.
Respondent is not making a bona fide offering of goods or services through the disputed domain names.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith.
Respondent is using the disputed domain names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark.
Respondent, at the time of registering the disputed domain names, had actual knowledge of Complainant’s rights in the CHAN LUU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its CHAN LUU mark.
Complainant’s trademark rights in CHAN LUU predate Respondent’s registration of each of the domain names.
The WHOIS information for each of the at-issue domain name’s identifies “tim tim” as the registrant.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain names each resolve to a website that resembles Complainant’s official website.
Respondent’s websites offer competing jewelry products, as well as counterfeits of Complainant’s jewelry, for sale.
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 at-issue domain names are each 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.”).
Respondent’s domain names, <chan-luu-bracelet.com>, <chanluubraceletss.com>, <chanluuss.com>, and <chanluubraceletsno1.com>, are each confusingly similar to Complainant’s CHAN LUU mark. Each of the at-issue domain names features Complainant’s entire CHAN LUU trademark. The deletion of the space in the CHAN LUU mark, addition of hyphens, the addition of descriptive terms and/or numbers “bracelet,” “braceletss”, or “braceletsno1” or the letters “ss” to Complainant’s mark, and the appending of the top level domain name, “.com,” to second level domain names does not distinguish any of the at-issue domain names from Complainant’s CHAN LUU mark for the purposes of Policy ¶4(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the non-distinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. 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 any of the at‑issue domain names.
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 and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any one or more of the at-issue domain names, Complainant’s prima facie showing acts conclusively as to each at-issue domain name.
The WHOIS information for the at-issue domain names identifies each registrant as “tim tim” and the documentation before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the domain names 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).
Furthermore, Respondent uses the disputed domain names to sell goods directly competing with Complainant’s CHAN LUU products as well as to sell counterfeit CHAN LUU products. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the each of the at-issue domain names.
The at-issue domain names were registered and are being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstances 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.
By creating confusion between the at-issue domain names and Complainant’s mark, Respondent uses the domain names to attract Internet users to Respondent’s websites for commercial gain. Such confusion is caused not only by Respondent’s use of the CHAN LUU mark in the confusingly similar at-issue domain names, but also by the visual similarities between Respondent’s infringing websites and Complainant’s official website. Respondent capitalizes on Internet user confusion since such confusion misdirects Internet users expecting to find Complainant instead to websites where Respondent promotes the sale of goods that are in direct competition with Complainant’s offering or counterfeit. These circumstances show that Respondent is using Complainant’s mark to attract Internet users to Respondent’s website for commercial gain pursuant to Policy ¶ 4(b)(iv) and thereby demonstrates bad faith registration and use of the at-issue domain names under Policy ¶4(a)(iii). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, Respondent surely had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the at-issue domain names. Respondent’s actual knowledge is evident by the similarities between the referenced websites and Complainant’s official website and by Respondent’s sale of competing products via such websites. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chan-luu-bracelet.com>, <chanluubraceletss.com>, <chanluuss.com>, and <chanluubraceletsno1.com> domain names be TRANSFERRED from Respondent to Complainant
Paul M. DeCicco. Panelist
Dated: November 18, 2012
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