national arbitration forum

 

DECISION

 

Chan Luu Inc. v. Conghuai Luo

Claim Number: FA1301001479946

 

PARTIES

Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA.  Respondent is Conghuai Luo (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluu.co>, registered with GODADDY.COM, INC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2013; the National Arbitration Forum received payment on January 11, 2013.

 

On January 14, 2013, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <chanluu.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name.  GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, 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 January 14, 2013, the Forum served the Complaint and all Annexes, including a 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@chanluu.co.  Also on January 14, 2013, 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 February 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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

  1. Complainant:

1.    Complainant holds several trademark registrations for the CHAN LUU mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349 registered August 21, 2009) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029 registered August 3, 2004).

2.    Respondent’s <chanluu.co> domain name is identical to Complainant’s CHAN LUU mark for the purposes of Policy ¶ 4(a)(i).

3.    Respondent is not commonly known by the <chanluu.co> domain name.

4.    Complainant has not licensed Respondent to use its mark.

5.    Respondent uses the <chanluu.co> domain name to sell goods that directly compete with those offered by Complainant, including counterfeit versions of Complainant’s CHAN LUU-branded products.

6.    Respondent is making a commercial use of the disputed domain name.

7.    Respondent had both actual and constructive knowledge of Complainant’s rights in the CHAN LUU mark at the time Respondent registered the <chanluu.co> domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant has rights in its CHAN LUU mark.

2.  Respondent’s <chanluu.co> domain name is identical to Complainant’s mark.

3.  Respondent has no rights to or legitimate interests in the domain name.

4.  Respondent registered and used the domain name in bad faith.

 

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 claims rights in the CHAN LUU mark based on its registrations of the mark with numerous federal trademark authorities, including China’s SAIC (e.g., Reg. No. 5,497,349 registered August 21, 2009) and the USPTO (e.g., Reg. No. 2,869,029 registered August 3, 2004). The Panel holds that Complainant’s registration of the CHAN LUU mark with these trademark authorities is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).

 

Complainant also urges that Respondent’s <chanluu.co> domain name be found identical to Complainant’s CHAN LUU mark for the purposes of Policy ¶ 4(a)(i). Complainant notes that the contested domain includes Complainant’s entire mark, while adding the country-code top-level domain (“ccTLD”) “.co.” The Panel  notes that the contested domain also omits the space between words in Complainant’s mark. The Panel finds that neither alteration to Complainant’s mark is relevant under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Accordingly, the Panel determines that Respondent’s <chanluu.co> domain name is identical to Complainant’s CHAN LUU mark for the purposes of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the <chanluu.co> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant claims that it has not licensed Respondent to use its CHAN LUU mark, and notes that Respondent’s name is listed as “Conghuai Luo” in the WHOIS information. The Panel notes that Respondent has failed to submit any evidence that it is commonly known as the disputed domain name. Accordingly, the Panel  concludes that Respondent is not commonly known by the <chanluu.co> domain name for the purposes of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant further alleges that Respondent’s use of the <chanluu.co> domain name to sell goods that directly compete with those offered by Complainant, including counterfeit versions of Complainant’s CHAN LUU-branded products, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel observes that previous panels have found that a respondent’s use of a disputed domain name to divert Internet users to its own website in order to sell counterfeit versions of the complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). The Panel holds that Respondent’s use of the <chanluu.co> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the <chanluu.co> domain name in connection with the sale of counterfeit versions of Complainant’s goods demonstrates registration and use of the <chanluu.co> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant argues that Respondent’s registration and use of a domain name that is identical to Complainant’s CHAN LUU mark increases the likelihood that visitors to Respondent’s website will have originally intended to visit a website operated by Complainant, namely <chanluu.com>. The Panel finds that misdirected visitors who purchase products from Respondent’s site would likely have purchased similar products from Complainant’s site but for the existence of Respondent’s site. In this way, the Panel finds that Respondent’s website both competes with and disrupts Complainant’s business. The Panel finds bad faith registration and use of the <chanluu.co> 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 also contends that Respondent’s registration and use of the <chanluu.co> domain name exhibits bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent’s selection of an identical domain name demonstrates an intent to deceive or mislead consumers as to Complainant’s affiliation with Respondent’s site. Complainant notes that this confusion is heightened by Respondent’s apparent attempt to pass itself off as Complainant by using Complainant’s CHAN LUU mark on its website, as well as incorporating visual similarities to the page displayed at Complainant’s own <chanluu.com.> website. The Panel finds that Respondent has intentionally created this degree of confusion with Complainant in order to attract consumers to its site, where Respondent realizes a commercial gain by selling counterfeit versions of Complainant’s products. The Panel holds that Respondent’s registration and use of the <chanluu.co> domain name for this purpose demonstrates attraction for commercial gain in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Finally, Complainant contends that Respondent registered the <chanluu.co> domain name with both actual and constructive knowledge of Complainant and its rights in the CHAN LUU mark. Complainant asserts that Respondent’s explicit use of the CHAN LUU mark on Respondent’s website coupled with Respondent’s imitation of Complainant’s site establishes actual knowledge, while Complainant’s prior registration of the mark with various trademark authorities establishes constructive knowledge. While constructive notice has not been generally been held to support a finding of bad faith, the Panel finds that Respondent registered and is using the <chanluu.co> domain name in bad faith under Policy ¶ 4(a)(iii).  Respondent is found to have had actual notice of Complainant’s trademark rights. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chanluu.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  February 25, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page