Chan Luu Inc. v. liu zhuangzhi / zhuangzhiliu
Claim Number: FA1301001479746
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is liu zhuangzhi / zhuangzhiliu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuwholesale.com>, registered with HiChina Zhicheng Technology Limited.
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 January 10, 2013; the National Arbitration Forum received payment on January 10, 2013. The Complaint was submitted in both Chinese and English.
On January 15, 2013, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <chanluuwholesale.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 22, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 11, 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@chanluuwholesale.com. Also on January 22, 2013, the Chinese language 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 18, 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.
Complainant requests that the domain name be transferred from Respondents to Complainant.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese.
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.
A. Complainant
i. Respondents are not commonly known by the domain name.
ii. Respondents are using the domain name to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items.
i. Respondents are using the disputed domain name to sell counterfeit CHAN LUU goods.
ii. Respondents are using the domain name to redirect Internet users to a website which offers goods in direct competition to Complainant’s goods.
iii. Respondents are imitating Complainant’s website to pass itself off as Complainant.
iv. Respondents registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark.
B. Respondents
Respondents failed to submit a Response in this proceeding.
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 continuously 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 markets its products via internet commerce at its own official website <chanluu.com>.
Respondents are Liu Zhuangzhi and Zhuangzhilu who list their address as Jian Su, China. The Respondents’ registrar’s address is listed as Beijing, China. The Respondents registered the disputed domain name on December 19, 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 Respondents 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, Chan Luu Inc., claims that it has used the CHAN LUU mark for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant argues that its products are sold around the world via major retail stores. Complainant asserts that it has operated a website accessible at <chanluu.com>, which provides information on the clothing, jewelry, handbags, and accessories sold under the CHAN LUU mark. Complainant contends that it is the owner of trademark registrations with the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). See Complainant’s Exhibit F. Complainant also contends, and provides evidence to show, that it owns trademark registrations with China’s SAIC for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009). See Complainant’s Exhibit E. Complainant also asserts that it owns trademark registrations in various other countries throughout the world. See Complainant’s Exhibit E. The Panel notes that Respondents live in China. See Complainant’s Exhibit A. The Panel finds that Complainant’s registration of the CHAN LUU mark with the USPTO and China’s SAIC are adequate to verify Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondents’ <chanluuwholesale.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as it features Complainant’s entire mark as the dominant portion of the domain name and merely adds the generic term “wholesale.” The Panel finds that the addition of a generic term does nothing to distinguish the subject domain name from Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel notes that Respondents remove the space in Complainant’s CHAN LUU mark in Respondents’ disputed domain name. Complainant argues that the addition of a gTLD such as “.com” is irrelevant to the confusingly similar analysis. The Panel finds that the removal of a space and addition of a gTLD to a domain name does not create a distinction capable of overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel concludes that Respondents’ <chanluuwholesale.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
Respondents make 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 claims that Respondents have no rights or legitimate interests in the disputed domain name. Complainant contends that Respondents are not commonly known by the domain name. Complainant argues that the WHOIS information for the subject domain name is “liu zhuangzhi / zhuangzhiliu.” See Complainant’s Exhibit A. Complainant asserts that it has not given Respondents permission to use its CHAN LUU mark. The Panel finds that Respondents provide no evidence that they are commonly known by the domain name and nothing in the WHOIS information shows that they are commonly known by the disputed domain name. In Instron Corp. v. Kaner, FA 768859 (Sept. 21, 2006), the panel found that Respondent was not commonly known by the disputed domain name because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. The Panel finds that Respondents are not commonly known by the <chanluuwholesale.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondents are using the domain name to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. Complainant asserts that Respondents do not sell authentic CHAN LUU goods. Complainant also claims that Respondents have designed their website to visually resemble Complainant’s own website. See Complainant’s Exhibit H. Complainant contends that some of the photographs on Respondents’ website have been taken from Complainant’s own website and Respondents excessively use Complainant’s CHAN LUU trademark throughout its website at the disputed domain name. The Panel finds that Respondents are using the disputed domain name to sell competing and counterfeit goods and to pass themselves off as Complainant therefore Respondents’ use of the <chanluuwholesale.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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 Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondents make no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondents have not provided a response to this action the Respondents have failed to meet their burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondents are using the disputed domain name to sell counterfeit CHAN LUU goods. Complainant asserts that Respondents’ website at the disputed domain name displays Complainant’s CHAN LUU mark and includes visual similarities with Complainant’s own website. Complainant argues that the only reason for Respondents’ registration of the confusingly similar domain name, and the hosting of a website at the domain name, is to unlawfully misdirect users searching for Complainant to Respondents’ website. The Panel finds that Respondents’ domain name may disrupt Complainant’s business which is evidence of Respondents’ bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant argues that Respondents are using the domain name to redirect Internet users to a website which offers goods in direct competition to Complainant’s goods. The Panel notes that Respondents’ website at the disputed domain name features and sells jewelry items similar to those sold by Complainant. See Complainant’s Exhibit H. Complainant claims that Respondents’ reason for registering the domain name is to misdirect users searching for Complainant to Respondents’ website. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel found that Respondent’s sale of counterfeit products created a likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allowed the respondent to profit from that confusion. The Panel finds that Respondents’ use of the domain name to sell counterfeit CHAN LUU products shows bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondents are imitating Complainant’s website to pass themselves off as Complainant. Complainant contends that Respondents’ website at the <chanluuwholesale.com> domain name displays Complainant’s CHAN LUU mark and includes visual similarities with Complainant’s own website. Compare Complainant’s Exhibit G to Complainant’s Exhibit H. The Panel notes that Respondents copy Complainant’s color scheme and layout of the website, as well as including the CHAN LUU mark in the top left corner of the webpage. See Complainant’s Exhibit H. The Panel finds that Respondents are attempting to pass themselves off as Complainant which further evidences that Respondents registered and are using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Respondents makes no contention 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 <chanluuwholesale.com> domain name be TRANSFERRED from Respondents to Complainant.
Darryl C. Wilson, Panelist
Dated: March 3, 2013
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