national arbitration forum

 

DECISION

 

Chan Luu Inc. v. zongbang lin

Claim Number: FA1210001468799

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluuu.com>, registered with Godaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 24, 2012; the National Arbitration Forum received payment on October 24, 2012.

 

On October 25, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuu.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name.  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 26, 2012, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 15, 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, adminis-trative, and billing contacts, and to postmaster@chanluuu.com.  Also on October 26, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsi-bility 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, with-out the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a jewelry, fashion accessory and clothing business, and sells its products around the world via major retail stores.

 

Complainant has operated a website accessible at <chanluu.com>, which pro-vides information on the products sold under the CHAN LUU trademark and features retail store services for CHAN LUU products.

 

Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”), for the CHAN LUU trademark (including Reg. No. 2,869,029, registered August 3, 2004).

 

Respondent registered the contested <chanluuu.com> domain name on Sep-tember 22, 2012. 

 

Respondent’s <chanluuu.com> domain name is confusingly similar to Complain-ant’s CHAN LUU mark.

 

Respondent has not been commonly known by the disputed domain name.

 

Complainant has not given Respondent permission to use its CHAN LUU mark.

 

Respondent has no rights to or legitimate interests in the disputed domain name.

 

Respondent uses the disputed domain name to divert to its own website Internet users seeking Complainant’s website, and to offer goods competing with the bus-iness of Complainant, including counterfeit items, all for the economic benefit of Respondent.

 

Respondent’s website resembles Complainant’s own website, prominently dis-playing the CHAN LUU mark and using the distinctive orange color and con-fusingly similar font taken from Complainant’s website.

 

This employment of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Respondent knew of Complainant and its rights in the CHAN LUU mark at the time it registered the disputed domain name.

 

Respondent has registered and is using the disputed domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in the CHAN LUU trademark under Policy ¶ 4(a)(i) by reason of registration of the mark with a national trademark authority, the USPTO.  See 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).

 

This is true without regard to whether Complainant’s rights in its marks arise from registration of the marks in a jurisdiction other than that of Complainant’s resi-dence or place of business.  See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient under the Policy that a complainant can demonstrate rights in a mark in some jurisdiction).

 

Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <chanluuu.com> domain name is confusingly similar to Complainant’s CHAN LUU trademark.  The disputed domain name contains Complainant’s entire CHAN LUU mark, merely adding a third letter “u” and the generic top level domain (“gTLD”) “.com.” These altera-tions of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from the trademark of another has a tendency to be confusingly similar to the trademark, especially where, as here, the trademark is highly distinctive).

Similarly, the addition to the mark of the gTLD “.com” does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See, for example, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been commonly known by the disputed domain name, and that it has not given Respondent permission to use its CHAN LUU mark.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “zongbang lin,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the dis-puted domain name so as to have acquired rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (con-cluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had not demonstrated that it had rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii), where there was no evi-dence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to offer Internet users goods in competition with the business of Complainant by diverting Internet users seeking Complainant’s website to a website operated by Respondent for Respondent’s economic benefit, and that those goods include counterfeit CHAN LUU goods. Complainant further asserts, again without objection from Respondent, that Respondent’s website resembles Complainant’s own website, prominently displaying the CHAN LUU trademark and using Complainant’s distinctive orange color and a font which is confusingly similar to that employed by Complainant at its website.   This use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using con-tested domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website offering services in competition with those offered by a UDRP complainant under its marks); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).

 

The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We are persuaded from the evidence that Respondent has registered the dis-puted domain name with the intent to misdirect to Respondent’s website Internet users searching for Complainant’s website in order to sell counterfeit CHAN LUU products.  This disrupts Complainant’s business, and it therefore stands as evi-dence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii).  See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that a UDRP complainant’s business was disrupted by a respondent’s bad faith registration and use of a disputed domain name to sell counterfeit products).

 

And because Respondent has registered and uses a domain name which is confusingly similar to Complainant’s CHAN LUU trademark to profit from confusion created among Internet users as to the possibility of Complainant’s association with the domain name, Respondent’s employment of the domain name in the manner described in the Complaint evidences bad faith registration and use of the domain name within the meaning of Policy ¶ 4(b)(iv). See Afflic-tion, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that a respondent’s attempt to gain commercially by selling counterfeit products to Internet users by creating confusion among them as to the possibility of a UDRP complainant’s connection with the resolving website demonstrated bad faith registration and use of a domain name under Policy ¶ 4(b)(iv)).

 

Finally, it appears from the record that Respondent knew of Complainant and its rights in the CHAN LUU mark at the time it registered the disputed domain name. This is independent evidence of bad faith registration of the domain name.  See, for example, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) in that that respond-ent had "actual knowledge of Complainant's mark when registering the disputed domain name")."

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

 

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <chanluuu.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  December 12, 2012

 

 

 

 

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