Chan Luu Inc. v. hong trade
Claim Number: FA1301001480654
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is hong trade (“Re
spondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chan-luu-bracelets.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2013; the National Arbitration Forum received payment on January 16, 2013.
On January 17, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chan-luu-bracelets.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 17, 2013, the Forum served the Complaint and all Annexes, includeing a Written Notice of the Complaint, setting a deadline of February 6, 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@chan-luu-bracelets.com. Also on January 17, 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 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 established its jewelry business in 1995 under the CHAN LUU name, and has since expanded it to include fashion accessories and clothing.
Complainant’s products are now sold in retail stores throughout the world.
Complainant also operates a website at the domain name <chanluu.com> mark, by which it provides information on its products and offers retail store services.
Complainant holds registrations for the CHAN LUU trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,869,029, registered August 3, 2004).
Respondent registered the disputed <chan-luu-bracelets.com> domain name on August 11, 2012.
The domain name is confusingly similar to Complainant’s CHAN LUU mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has no legal relationship with Complainant that would allow it to use the CHAN LUU mark.
Respondent does not employ the disputed domain name to make either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead Respondent uses the domain name to host an inactive website.
Respondent has neither any rights to nor any legitimate interests in the disputed domain name.
Respondent knew of Complainant and its rights in the CHAN LUU mark when it registered the contested domain name.
Respondent both registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the CHAN LUU trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), finding that a UDRP complainant’s rights in its mark were established through registration of the mark with the USPTO.
Turning to the prime question arising under Policy ¶ 4(a)(i), from a review of the record we conclude that the <chan-luu-bracelets.com> domain name is confusingly similar to the CHAN LUU mark. The domain name includes the mark in its entirety, adding only a term descriptive of Complainant’s goods (“bracelets”), plus hyphens between the terms of the mark and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, are insufficient to distinguish the domain name from the mark under the standards of the Policy. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005):
Therefore, the Panel concludes that the addition of a term descripttive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the domain name <chan-luu-bracelets.com>, and that Respondent has no legal relationship with Complainant that would allow it to use the CHAN LUU trademark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “hong trade,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel there finding that a UDRP respondent failed to show that it had rights to or legitimate interests in a disputed domain name as described in Policy ¶ 4(c)(ii) where there was no evidence in the record of the proceeding indicating that the respondent was commonly known by that domain.
We next observe that Complainant contends, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, in that Respondent only employs it to resolve to an inactive website. In the circumstances here presented, we conclude that Respondent’s passive holding of the domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that a respondent lacked rights to or legitimate interests in a contested domain name that it had not made demonstrable preparations to use since the time of its registration).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
From our examination of the evidence, we conclude that Respondent registered and uses the <chan-luu-bracelets.com> domain name in bad faith. Respondent registered a domain name, which is confusingly similar to Complainant’s CHAN LUU trademark, is not actively used. In the circumstances, this is evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), where a panel, citing the risk of confusion among Internet users, found that a respondent registered and used a domain name in bad faith under Policy ¶ 4(b)(iv) although that respondent had not yet actively used the domain name.
We are likewise persuaded that Respondent knew of Complainant and its rights in the CHAN LUU trademark when it registered the <chan-luu-bracelets.com> domain name. The inclusion in the domain name of the term “bracelets” supports the conclusion that Respondent registered the domain name in bad faith because it is a specific reference to an aspect of Complainant’s business. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a UDRP respondent was "wellaware” of a complainant's mark at the time of the domain name’s registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <chan-luu-bracelets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 26, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page