Chan Luu Inc. v. John Potter
Claim Number: FA1301001480370
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is John Potter (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuwrapsale.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2013; the National Arbitration Forum received payment on January 15, 2013.
On January 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuwrapsale.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 January 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@chanluuwrapsale.com. Also on January 16, 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 The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions
i. Respondent is not commonly known by the disputed domain name.
ii. Complainant has not licensed Respondent to use the CHAN LUU mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark.
iii. Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s goods, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
i. Respondent is using the disputed domain name to sell counterfeit CHAN LUU marks, satisfying the requirements of Policy ¶ 4(b)(iii).
ii. Respondent is using the domain name to redirect Internet users to a website which offers goods in direct competition with Complainant’s goods, which is evidence of bad faith under Policy ¶ 4(b)(iv).
iii. Respondent registered the disputed 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.
1. Complainant is a prominent and successful United States company that produces and sells prestige jewelery, clothing and accessories.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant is also the owner of trademark registrations in other countries.
3. Respondent registered the disputed domain name on October 14, 2012 and uses it to for a website where it sells competing goods and also counterfeit Chan Luu goods.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has used the CHAN LUU trademark for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant argues that its CHAN LUU products are sold around the world via major retail stores. Complainant contends 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 trademark. Complainant provides evidence 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 provides evidence that it is the owner of trademark registrations in various countries throughout the world. See Complainant’s Exhibit E. The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel concludes that Complainant’s registration of the CHAN LUU mark with the USPTO is sufficient to establish its rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHAN LUU mark. Complainant asserts that Respondent’s <chanluuwrapsale.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as it features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the descriptive words “wrap” and “sale.” Complainant argues that its CHAN LUU mark is extensively used in connection with the sale of wrap bracelets. See Complainant’s Exhibit D. Additionally, Complainant contends that the term “sale” is also merely descriptive of Complainant’s retailing services. The Panel finds that the addition of a descriptive term to a disputed domain name does not negate confusing similarity under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name 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”). Complainant also argues that the addition of the gTLD “.com” is irrelevant to a confusingly similar analysis. The Panel determines that the addition of a gTLD to a disputed domain name does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Accordingly, the Panel concludes that Respondent’s <chanluuwrapsale.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHAN LUU mark and to use it in its domain name, adding only the descriptive words “wrap” and “sale” after the CHAN LUU mark to create the domain name, thus implying that the domain name is an official domain name of Complainant leading to an official website of Complainant dealing with the sale of genuine CHANN LUU wraps, which it is not;
(b) Respondent has then used the domain name to link to a website which promotes and sells competing goods and counterfeit CHAN LUU products;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent’s name, as listed in the WHOIS information for the domain name, is “John Potter.” See Complainant’s Exhibit A. Complainant asserts that it has not given Respondent permission to use its CHAN LUU mark. Complainant argues that it has not licensed Respondent to use the CHAN LUU mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark. The Panel notes that Respondent does not provide any evidence that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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);
(e) Complainant argues that Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s goods and goods that compete with Complainant’s CHAN LUU goods. See Complainant’s Exhibit G. Complainant also argues that Respondent excessively uses Complainant’s mark throughout its website at the disputed domain name. Complainant contends that Respondent has made a plainly commercial use of the subject domain name. Therefore, the Panel finds that Respondent’s use of the disputed domain name to sell competing and counterfeit goods does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent is using the disputed domain name to sell counterfeit CHAN LUU goods, satisfying the requirements of Policy ¶ 4(b)(iii). Complainant contends that Respondent’s website displays Complainant’s CHAN LUU mark. See Complainant’s Exhibit G. The Panel determines that Respondent’s use of the disputed domain name to sell competing and counterfeit goods disrupts Complainant’s business under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also 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).
Secondly, Complainant argues that Respondent is using the domain name to redirect Internet users to a website that offers goods in direct competition with Complainant’s goods. See Complainant’s Exhibit G. Complainant asserts that Respondent’s only reason for the registration of the confusing similar domain name is unlawfully to misdirect users searching for Complainant to Respondent’s website. Therefore, the Panel concludes that Respondent’s use of the disputed domain name to offer competing and counterfeit goods evidences bad faith use and registration under Policy ¶ 4(b)(iv) as an attempt to attract consumers and create confusion regarding Complainant’s affiliation with Respondent for Respondent’s own commercial gain. See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also 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).
Thirdly, Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Complainant contends that Respondent’s actual knowledge of Complainant’s rights in the CHAN LUU mark is evidenced by Respondent’s explicit use of the CHAN LUU mark on its website. See Complainant’s Exhibit G. Complainant also argues that Respondent had constructive knowledge of Complainant’s rights in the CHAN LUU mark due to Complainant’s prior trademark registration of the CHAN LUU mark throughout the world. See Complainant’s Exhibits E and F. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of Complainant's mark on its website, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CHAN LUU mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuwrapsale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 14, 2013
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