Chan Luu Inc. v. ryaned / Ryan Eddie
Claim Number: FA1211001469879
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is ryaned / Ryan Eddie (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluumarketsz.com>, registered with FastDomain Inc.
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 November 5, 2012; the National Arbitration Forum received payment on November 5, 2012.
On November 6, 2012, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluumarketsz.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 November 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@chanluumarketsz.com. Also on November 6, 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 10, 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 lists “ryaned / Ryan Eddie” as the registrant. Complainant has not given Respondent permission to use its CHAN LUU mark.
ii. Respondent is using the disputed domain name to sell goods directly competing with Complainant’s CHAN LUU goods. Additionally, Respondent has designed its website to visually resemble Complainant’s own website.
i. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark.
ii. Respondent has registered the disputed domain name to unlawfully misdirect users searching for Complainant to Respondent’s website. Respondent’s website includes many visual similarities with Complainant’s own website at <chanluu.com>.
iii. Respondent is using the disputed domain name to redirect Internet users to a website which offers goods in direct competition to Complainant’s goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., is a jewelry, clothing, and accessory business. Complainant’s products are sold around the world via major retail stores. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant also owns trademark registrations for its CHAN LUU mark around the world, including with the Hong Kong Intellectual Property Department (“HKIPD”) (Reg. No. 300657973, registered December 19, 2006).
Respondent, ryaned / Ryan Eddie, registered <chanluumarketsz.com> on August 23, 2012. Respondent is using the disputed domain name to sell goods directly competing with Complainant’s CHAN LUU goods. Additionally, Respondent has designed its website to visually resemble Complainant’s own website.
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 trademark registrations with the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant contends also owns trademark registrations for its CHAN LUU mark around the world, including with the HKIPD (Reg. No. 300657973, registered December 19, 2006). The Panel finds that Complainant’s registration with the USPTO and the HKIPD establishes sufficient rights in the CHAN LUU mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <chanluumarketsz.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as it features Complainant’s entire CHAN LUU mark, and merely adds the descriptive term “markets.” The term “markets” is descriptive of Complainant’s retailing services, further increasing the confusing similarity between the disputed domain name and Complainant’s CHAN LUU mark. The addition of descriptive terms does not distinguish Respondent’s disputed domain name from Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The addition of the letter “z” to the end of the disputed domain name is a common misspelling or typographical variation of the word “markets,” as the letter “z” is pronounced similarly to the letter “s” at the end of “markets.” The addition of a letter or misspelling of word does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). In the disputed domain name, Respondent has removed the space between “CHAN” and “LUU” in Complainant’s CHAN LUU mark. Further, the addition of a gTLD such as “.com” is irrelevant to a confusingly similar analysis. The removal of spaces and addition of a gTLD does not distinguish Respondent’s <chanluumarketsz.com> domain name from Complainant’s CHAN LUU mark 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 that there is confusing similarity between Respondent’s <chanluumarketsz.com> domain name and Complainant’s CHAN LUU mark 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).
The Panel finds that 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 lists “ryaned / Ryan Eddie” as the registrant. Complainant has not given Respondent permission to use its CHAN LUU mark.
Respondent is using the disputed domain name to sell goods directly competing with Complainant’s CHAN LUU goods. Respondent’s website offers numerous items for sale, including many counterfeit CHAN LUU items. Respondent has designed its website to visually resemble Complainant’s own website. The Panel finds that Respondent’s use of the disputed domain name 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). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Respondent has registered the disputed domain name to unlawfully misdirect users searching for Complainant to Respondent’s website. Respondent’s website includes many visual similarities with Complainant’s own website at <chanluu.com>, and includes Complainant’s copyright protected photographs. The Panel finds that Respondent’s use of the disputed domain name is disrupting Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent is using the disputed domain name to redirect Internet users to a website which offers goods in direct competition to Complainant’s goods. Respondent’s website features both counterfeit CHAN LUU goods and goods that directly compete with Complainant’s goods. Respondent presumably profits from its sale of counterfeit CHAN LUU goods and goods in competition with Complainant’s goods. The Panel finds that Respondent’s use of the disputed domain name to sell competing and counterfeit goods constitutes attraction for commercial gain, which demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Respondent’s knowledge of Complainant’s rights in the CHAN LUU mark is evidenced by Respondent’s explicit and excessive use of the CHAN LUU mark at the <chanluumarketsz.com> domain name. Therefore, the Panel finds that that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <chanluumarketsz.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 23, 2012
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