national arbitration forum

 

DECISION

 

Chan Luu Inc. v. Webworks / JAE GYU PARK

Claim Number: FA1212001474903

PARTIES

Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA.  Respondent is Webworks / JAE GYU PARK (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluuwrapbracelet.com>, registered with Names In Motion, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 7, 2012.

 

On December 11, 2012, Names In Motion, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluuwrapbracelet.com> domain name is registered with Names In Motion, Inc. and that Respondent is the current registrant of the name.  Names In Motion, Inc. has verified that Respondent is bound by the Names In Motion, 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 December 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 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@chanluuwrapbracelet.com.  Also on December 12, 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 January 8, 2013, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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. Included among the types of jewelry it sells are wrap bracelets. 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>.

 

Respondents are Webworks and Jae Gyu Park who lists their address as Kyonggi, 448755 Korea. The disputed domain was registered on November 25, 2012, by a registrar who list its address as Bear Delaware 19701, USA.

 

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:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant bases its rights in the mark by way of ownership of trademark registrations in the CHAN LUU mark around the world, including trademark registrations with the United States Patent & Trademark Office (“USPTO”), as well as the Korean Intellectual Property Office (“KIPO”)—the registration entity governing trademark registration in Respondent’s location.  See, e.g., USPTO Reg. No, 2,869,209 registered on Aug. 3, 2004; 3,028,982 registered on Dec. 13, 2005; KIPO Reg. No. 40–0703345 registered on Mar. 21, 2007.  The Panel finds that Complainant’s registrations of the CHAN LUU mark satisfies Complainant’s showing of rights in the CHAN LUU mark.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations).  Therefore, the Panel finds that Complainant has established rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <chanluuwrapbracelet.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant claims that the domain name features Complainant’s CHAN LUU mark as the dominant portion of the domain name, and merely adds the descriptive term “wrapbracelet.”  Complainant asserts that because it uses the CHAN LUU mark in connection with the sale of wrap bracelets, the addition of this descriptive term does nothing to distinguish the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  Finally, Complainant claims that the addition of the generic top-level domain (“gTLD”) name “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis.  The Panel agrees that the addition of the gTLD “.com,” is irrelevant.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel finds that the addition of “wrapbracelet” contributes to the confusing similarity between the disputed domain and Complainant’s CHAN LUU mark. 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).  The Panel  finds that the <chanluuwrapbracelet.com> domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

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 notes that Respondent is not commonly known by the disputed domain name as noted by the WHOIS information which lists the registrant as “Webworks” and/or “JAE GYU PARK.”  Complainant asserts that it has not given Respondent permission to use its CHAN LUU mark, nor is Respondent otherwise authorized to use the mark. The Panel finds that the Complainant has shown that Respondent is not commonly known by the disputed domain name pursuant to 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)

 

Complainant next contends that Respondent’s domain name resolves to a parked page populated by pay-per-click advertisements, which generate revenue for Respondent.  Complainant believes that because Respondent profits from the advertisements on the disputed domain name’s resolving website, there is no legitimate noncommercial or fair use.   Furthermore,  Complainant argues that the use of a confusingly similar domain name to resolve to a website displaying hyperlink advertisements is not a bona fide offering of goods or services of the disputed domain name.  Finally, Complainant believes the domain name is being parked.  The Panel notes that the <chanluuwrapbracelet.com> domain name resolves to a website featuring “sponsored listings” of a variety of unrelated hyperlinks to third-party goods and products.  See Complainant’s Exhibit H. 

 

The Panel finds that regardless of whether or not the domain name’s resolving website is being parked, Respondent is ultimately responsible for the content appearing on the domain name’s resolving websites.  See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).  The Panel finds that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

 

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.

 

Registration and Use in Bad Faith

Complainant argues that Respondent’s use of the <chanluuwrapbracelet.com> domain name to resolve to a website featuring various third-party hyperlinks shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  Complainant alleges that because the domain name is so obviously connected with Complainant’s trademark, the registration of the domain name supports a finding of bad faith.  The Panel finds that Respondent seeks to generate commercial profits by registering and using a disputed domain name that will likely confuse Internet users into believing Respondent’s domain name is sponsored by and/or affiliated with Complainant.  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).  Therefore, the Panel finds that Respondent registered and used the <chanluuwrapbracelet.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

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 <chanluuwrapbracelet.com>  domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                    Darryl C. Wilson, Panelist

                                    Dated: January 22, 2013

 

 

 

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