Chan Luu Inc. v. Jeffrey Johnson
Claim Number: FA1210001469427
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Jeffrey Johnson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluubraceletsoutlet.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2012; the National Arbitration Forum received payment on October 29, 2012.
On October 30, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluubraceletsoutlet.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 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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.com. Also on October 31, 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 December 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not commonly known by the disputed domain name where the WHOIS information identifies “Jeffrey Johnson” as the registrant. Complainant has not given Respondent permission to use its CHAN LUU mark.
ii. Respondent is using the disputed domain name to offer counterfeit goods and goods that directly compete with Complainant’s products, diverting Internet users away from Complainant’s website to Respondent’s website.
i. Respondent has registered the disputed domain name with the intention of unlawfully misdirecting Internet users searching for Complainant’s website to Respondent’s website.
ii. Respondent’s use of the disputed domain name to offer competing and counterfeit goods satisfies both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
iii. Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s rights in the CHAN LUU marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., is in the jewelry, clothing, and fashion accessory business. Complainant sells its products around the world via major retail stores. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU marks (e.g., Reg. 2,869,029, registered August 3, 2004). Complainant also owns trademark registrations for the CHAN LUU marks in various countries throughout the world.
Respondent, Jeffrey Johnson, registered <chanluubraceletsoutlet.com> on August 25, 2012. Respondent is using the disputed domain name to offer counterfeit goods and goods that directly compete with Complainant’s products.
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 owns several trademark registrations with the USPTO for the CHAN LUU marks (e.g., Reg. 2,869,029, registered August 3, 2004) and owns trademark registrations for the CHAN LUU marks in other countries. The Panel finds that Complainant’s registration of the CHAN LUU marks with the USPTO is sufficient to establish rights in the marks 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)).
Respondent’s <chanluubraceletsoutlet.com> domain name is confusingly similar to Complainant’s mark as it incorporates the entire CHAN LUU mark and merely adds the descriptive term “bracelets” and the generic term “outlet.” The addition of descriptive or generic terms does not distinguish the disputed domain name from Complainant’s marks. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Respondent has removed the spaces between CHAN and LUU in the disputed domain name as well. Respondent has added the gTLD “.com” to the disputed domain name. The removal of spaces and the addition of a gTLD do not eliminate confusing similarity under Policy ¶ 4(a)(i). 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)). Therefore, the Panel finds Respondent’s <chanluubraceletsoutlet.com> to be confusingly similar to Complainant’s CHAN LUU marks under Policy ¶ 4(a)(i).
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).
Respondent is not commonly known by the disputed domain name under 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). The WHOIS information identifies “Jeffrey Johnson” as the registrant. Complainant has not given Respondent permission to use its CHAN LUU mark.
Respondent is using the disputed domain name to offer counterfeit goods and goods that directly compete with Complainant’s products, diverting Internet users away from Complainant’s website to Respondent’s website. Respondent’s website offers numerous items for sale, including counterfeit CHAN LUU items and competing items. Complainant argues that Respondent has designed its website to visually resemble Complainant’s website. The Panel finds that Respondent’s use of the disputed domain name to offer counterfeit and competing 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 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); see also 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).”).
Respondent is using the disputed domain name to advertise and sell both competing and counterfeit goods. The Panel finds that Respondent’s use of the disputed domain name to offer competing and counterfeit goods disrupts Complainant’s business, which demonstrates bad faith registration and use of the dispute domain name under Policy ¶ 4(b)(iii). 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”); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Respondent is using the disputed domain name to offer counterfeit goods and goods in direct competition with Complainant’s goods. The Panel finds that this shows attraction for commercial gain by causing a likelihood of confusion with Complainant’s CHAN LUU mark, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith use and registration under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Respondent had actual knowledge of Complainant’s trademarks when he registered the disputed domain name. Therefore, Respondent registered the <chanluubraceletsoutlet.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
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 <chanluubraceletsoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 17, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page