Chan Luu, Inc. v. hua liu
Claim Number: FA1301001479060
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is hua liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuvv.com>, registered with Xin Net Technology Corporation.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Chinese language Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 7, 2013.
On January 9, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <chanluuvv.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 15, 2013, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of February 4, 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@chanluuvv.com. Also on January 15, 2013, the Chinese 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 February 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns trademark registrations for the CHAN LUU mark in both the United States and in the People’s Republic of China, and uses the mark in the marketing and sale of fashion accessories. See, e.g., United States Patent & Trademark Office (“USPTO”) Reg. No. 2,869,029 registered on Aug. 3, 2004; China’s State Administration for Industry and Commerce (“SAIC”) Reg. No. 5,497,349 registered on Aug. 21, 2009.
2. The <chanluuvv.com> domain name is confusingly similar to the CHAN LUU mark.
3. Respondent is not commonly known by the <chanluuvv.com> domain name. Complainant has neither permitted nor authorized Respondent to use the CHAN LUU mark in its domain name. The WHOIS information lists “hua liu” as the registrant of the name.
4. Respondent is not providing a bona fide offering of goods, or a legitimate noncommercial or fair use of the disputed domain name. The domain name is being used to offer goods that compete with those sold under the CHAN LUU mark. Some of the goods available on the domain name’s resolving website are counterfeit versions of products sold by Complainant. Respondent has further included copyrighted logos and photographs belonging to Complainant throughout its domain name’s resolving website.
5. Respondent is engaged in typosquatting. The domain name merely added the letters “vv” to the end of the CHAN LUU mark. The domain name itself resolves to a website which displays the correctly spelled CHAN LUU mark and sells counterfeit goods.
6. By offering competing goods on its confusingly similar domain name, Respondent is engaging in a bad faith attempt to confuse Internet users into associating the disputed domain name with Complainant for Respondent’s own financial gain. This intent to confuse is further evidenced by the fact that Respondent includes Complainant’s copyrighted materials on its domain name to increase the likelihood that Internet users will confuse the domain name’s website with Complainant’s business.
7. Respondent registered the domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluuvv.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 trademark registrations for the CHAN LUU mark in both the United States and in the People’s Republic of China, and Complainant contends that it uses the mark in the marketing and sale of fashion accessories. See, e.g., USPTO Reg. No. 2,869,029 registered on Aug. 3, 2004; SAIC Reg. No. 5,497,349 registered on Aug. 21, 2009. The registration of a mark with multiple trademark agencies illustrates a complainant’s rights in its mark—especially when one of the agencies is in a respondent’s country. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”). The Panel finds that Complainant has established rights in its CHAN LUU mark under Policy ¶ 4(a)(i).
Complainant next argues that the <chanluuvv.com> domain name is confusingly similar to the CHAN LUU mark. The domain name contains the CHAN LUU mark as the dominant feature of the domain name and merely adds the letters “vv” to the mark. The addition of “vv” does not distinguish the domain name from the registered mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Moreover, the addition of the gTLD “.com” is irrelevant in this analysis. Respondent additionally removed the spacing in the CHAN LUU mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel concludes that the <chanluuvv.com> domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <chanluuvv.com> domain name. Complainant states that it has neither permitted nor authorized Respondent to use the CHAN LUU mark in its domain name. Complainant also notes that the WHOIS information lists “hua liu” as the registrant of the name. A respondent cannot be commonly known by a disputed domain name when there is no evidence in the record to suggest the respondent shares the domain’s name. 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 Panel agrees and concludes that Respondent is not commonly known by the <chanluuvv.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is not providing a bona fide offering of goods, or a legitimate noncommercial or fair use of the <chanluuvv.com> domain name To support this claim, Complainant first notes that the domain name is being used to offer goods that compete with those sold under the CHAN LUU mark. Complainant contends that some of the goods available on the domain name’s resolving website are counterfeits of products sold by Complainant. Complainant asserts that Respondent has further included Complainant ‘s copyrighted logos and photographs throughout the disputed domain name’s resolving website. Complainant concludes that there cannot be a legitimate noncommercial or fair use of the domain name because the Respondent’s use of the domain name is plainly commercial in nature. The Panel notes that the <chanluuvv.com> domain name resolves to a website featuring the “CHAN LUU” trademark repeatedly, while soliciting products that bear a likeness to those sold on Complainant’s websites. The sale of either competing or counterfeit goods neither constitutes a bona fide offering of goods, nor a legitimate noncommercial or fair use of the disputed domain name. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); 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).”). The Panel finds that Respondent’s use of the <chanluuvv.com> domain name fails to illustrate a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <chanluuvv.com> domain name.
Complainant also argues that Respondent is engaged in typosquatting. Complainant bases this allegation on the fact that the domain name merely added the letters “vv” to the end of the CHAN LUU mark. Complainant further points out that the intent to typosquat is evident in the fact that the domain name itself resolves to a website which displays the correctly spelled CHAN LUU mark and sells counterfeit goods. A respondent who engages in typosquatting enhances the likelihood that the respondent lacks both rights and legitimate interests in their domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel agrees and finds that Respondent is engaged in typosquatting and therefore lackd rights and legitimate interests in the <chanluuvv.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent, in offering competing goods on its confusingly similar <chanluuvv.com> domain name, is engaging in a bad faith attempt to confuse Internet users into associating the disputed domain name with Complainant for Respondent’s own financial gain. Complainant further contends that this intent to confuse is evidenced by the fact that Respondent includes Complainant’s copyrighted materials on its domain name to increase the likelihood that Internet users will confuse the domain name’s website with Complainant’s business. The <chanluuvv.com> domain name resolves to a website that makes substantial use of the CHAN LUU mark in soliciting products that are either counterfeits of, or sold in direct competition to, Complainant’s CHAN LUU goods. The use of the domain name for such a purpose constitutes a bad faith attempt to confuse Internet users for financial gain. See 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); Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Because the Panel agrees, it finds that Respondent has engaged in a Policy ¶ 4(b)(iv) act of bad faith use and registration.
Complainant concludes by arguing that Respondent registered the <chanluuvv.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Complainant avers that this is apparent from the fact that Respondent uses Complainant’s CHAN LUU mark and copyrighted materials explicitly on the domain name’s website. On this record, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuvv.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 18, 2013
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