Chan Luu Inc. v. HaiFeng Huang
Claim Number: FA1211001472294
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is HaiFeng Huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wholesalechanluu.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2012; the National Arbitration Forum received payment on November 20, 2012.
On November 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wholesalechanluu.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 November 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@wholesalechanluu.com. Also on November 21, 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 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
i. China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5497349 registered Aug. 21, 2009);
ii. European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4187845 registered Feb. 10, 12006); and
iii. United States Patent and Trademark Office ("USPTO") (Reg. No. 2,869,029 registered Aug. 3, 2004). See Complainant’s Exhibits E-G.
i. Respondent, “HaiFeng Huang,” per the WHOIS information, is not commonly known by the <wholesalechanluu.com> domain name and has not been licensed or authorized to use the CHAN LUU mark in any way.
ii. Respondent is using the disputed domain name to redirect Internet users to Respondent’s websites located at <chanluu.com>, <5sjewelry.com>, and <goodbeads.net> which sell counterfeit CHAN LUU goods and competing goods. See Complainant’s Exhibits H-K.
i. Respondent is directing Internet users to its own websites that sell counterfeit CHAN LUU goods and competing goods. Using the CHAN LUU mark to accomplish such misdirection constitutes bad faith registration and use under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Respondent did not submit a Response to these proceedings, but did submit correspondence in this matter that states:
“Our
website is involved during chan luu brand product, so we're sorry. Now we
related websites are to undertake rectifying and reform, involves chan luu
products will proceed to drops . Hope chan luu Inc. revocation appeal for our
website . This event we apologize again. After our website will not have chan
luu related products sales. Hope to get chan luu Inc. Pardon!
The following is our involves web site, you can carry on the supervision:
chanluu.co
5sjewelry.com
goodbeads.net
wholesalechanluu.com
Sincerely,”
Complainant is Chan Luu Inc. which list its address as Los Angeles, CA, USA. Complainant indicates that it began its business in 1995 and has used its CHAN LUU trademark for over 17 years in connection with jewelry, clothing, and accessories. Complainant operates showrooms in Los Angeles and New York City and additionally sells its products throughout the world via major retail stores. Complainant also operates its own official website at <chanluu.com>.
Respondent is Haifeng Huang who list its address as Guangzhou, Guandong, CHINA. The disputed domain name was registered with a registrar who’s offices are listed as Scottsdale, AZ, USA. The <wholesalechanluu.com> domain name was registered on September 3, 2012.
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 asserts that it owns the exclusive rights to the CHAN LUU mark and name that it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant notes that it owns many trademark registrations for the CHAN LUU mark with various trademark authorities, including the following:
SAIC (Reg. No. 5497349 registered Aug. 21, 2009);
OHIM (Reg. No. 4187845 registered Feb. 10, 12006); and
USPTO (Reg. No. 2,869,029 registered Aug. 3, 2004).
See Complainant’s Exhibits E-G. The Panel finds that Complainant’s multiple trademark registrations of the CHAN LUU mark with governmental trademark authorities worldwide are sufficient for Complainant to establish rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Further, Complainant argues that Respondent’s <wholesalechanluu.com> domain name is confusingly similar to the CHAN LUU mark, adding only the descriptive term “wholesale” to the mark, which does not distinguish the domain name from the mark. Similarly, Complainant asserts that the addition of the gTLD “.com” is irrelevant to the confusingly similar analysis. The Panel notes that the disputed domain name also removes the space between the terms of the CHAN LUU mark. The Panel finds that despite the changes to Complainant’s mark within the domain name, that Respondent’s <wholesalechanluu.com> domain name is confusingly similar to the 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)); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (the <novellsolutions.com> domain name was 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”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 Complainant has met this burden.
Complainant contends that Respondent, “HaiFeng Huang,” per the WHOIS information, is not commonly known by the <wholesalechanluu.com> domain name and has not been licensed or authorized to use the CHAN LUU mark in any way. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant argues that Respondent is using the disputed domain name to redirect Internet users to Respondent’s websites located at <chanluu.com>, <5sjewelry.com>, and <goodbeads.net> which sell counterfeit CHAN LUU goods and competing goods. See Complainant’s Exhibits H-K. The Panel finds that such use of the <wholesalechanluu.com> domain name does not amount to 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 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).”); 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 makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is directing Internet users to its own websites that sell counterfeit CHAN LUU goods and competing goods. Complainant asserts that using the CHAN LUU mark to accomplish such misdirection constitutes bad faith registration and use under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
The Panel notes that prior UDRP panels have held that using a trademark, or variation thereof, to sell competing and/or counterfeit goods does constitute bad faith disruption of a complainant’s business 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 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); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds that Respondent has registered and is using the <wholesalechanluu.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Further, the Panel notes that prior UDRP panels have also determined that using a complainant’s trademark within a domain name to attract Internet users to a commercial website that sells both competing and counterfeit goods is sufficient evidence to find bad faith registration and use of a disputed domain name 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). The Panel finds the preceding matters to be additional support for its conclusion that the Respondent has registered and is using the <wholesalechanluu.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wholesalechanluu.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 2, 2013
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