Chan Luu Inc. v. Virginia Stephens
Claim Number: FA1301001481874
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Virginia Stephens (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <chanluuoutlet.com> and <chanluupulseras.com>, registered with CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2013; the National Arbitration Forum received payment on January 24, 2013.
On January 25, 2013, CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM confirmed by e-mail to the National Arbitration Forum that the <chanluuoutlet.com> and <chanluupulseras.com> domain names are registered with CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM and that Respondent is the current registrant of the names. CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM has verified that Respondent is bound by the CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM 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 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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@chanluuoutlet.com, postmaster@chanluupulseras.com. Also on January 25, 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 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain names.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain names.
Policy ¶ 4(a)(iii): Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., sells jewelry, clothing and accessories worldwide.
Complainant possesses rights for the CHAN LUU mark through registration with the United States Patent & Trademark Office (“USPTO”). See Reg. No. 2,869,029 registered on Aug. 3, 2004; Reg. No. 3,028,982 registered on Dec. 13, 2005; Reg. No. 3,314,816 registered on Oct. 16, 2007.
Respondent, Virginia Stephens, registered both the <chanluuoutlet.com> and <chanluupulseras.com> domain names on July 3, 2011. The disputed domain names are being used to host websites that promote and solicit goods that directly compete with Complainant’s goods. Respondent is seeking to pass itself off as Complainant.
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 has rights under Policy ¶ 4(a)(i) for the CHAN LUU mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <chanluuoutlet.com> and <chanluupulseras.com> domain names are confusingly similar to the CHAN LUU mark. Respondent has taken the CHAN LUU marks and added either the term “outlet” or “pulseras” to the mark along with the gTLD “.com.” Complainant argues that the term “outlet” is merely descriptive of the retail services Complainant uses to market its bracelets and fashion accessories, while the term “pulseras” is Spanish for the word “bracelets,” and Complainant markets and sells bracelets extensively in its business. Respondent deleted the spacing in the CHAN LUU mark in the disputed domain names. The addition of “outlet” or “pulseras” to the respective domain names does nothing to distinguish the names from the CHAN LUU mark because these terms merely describe aspects of Complainant’s business. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Neither the addition of a gTLD nor the deletion of a mark’s spacing creates a meaningful difference between the domain names and the 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 disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.). Thus, the Panel finds that Respondent’s <chanluuoutlet.com> and <chanluupulseras.com> domain names are confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).
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).
Complainant argues that Respondent is not commonly known by the disputed <chanluuoutlet.com> and <chanluupulseras.com> domain names. The WHOIS information for both of the domain names lists one “Virginia Stephens” as the registrant of the names. Complainant avers that it has not given Respondent permission to use the CHAN LUU mark in domain names. The Panel finds that Respondent is not commonly known by the disputed domain names 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).
Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that the <chanluuoutlet.com> and <chanluupulseras.com> domain names are being used to host websites that promote and solicit goods, including counterfeit CHAN LUU goods, that directly compete with Complainant’s goods. Both the <chanluuoutlet.com> and <chanluupulseras.com> domain names resolve to websites purporting to offer CHAN LUU goods. Previous panels have held that a respondent cannot establish a bona fide offering of goods or services, nor prove a legitimate noncommercial or fair use of the disputed domain name, when the disputed domain name is used to market and sell either competing or counterfeit goods. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).). The Panel finds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.
Complainant further avers that the design of the <chanluuoutlet.com> domain name makes it clear that Respondent is seeking to pass itself off as Complainant, as the website copies several characteristics of Complainant’s websites. Panels have held that attempting to pass off as the complainant on the disputed domain name is not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore, the Panel finds that Respondent’s use of the <chanluuoutlet.com> domain name to misrepresent itself as being associated with Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent has registered and is using the <chanluuoutlet.com> and <chanluupulseras.com> domain names to confuse Internet users into accidentally buying from Respondent when they intend to buy from Complainant. Both of the disputed domain names feature the CHAN LUU mark in connection with the marketing of either competing or counterfeit goods. Previous panels have concluded that it is bad faith registration and use to confuse Internet users into buying goods that are offered in competition with, or are counterfeits of, a complainant’s goods. 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); see also 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). Thus the Panel finds that Respondent has registered and is using the <chanluuoutlet.com> and <chanluupulseras.com> domain names to confuse Internet users in bad faith under Policy ¶ 4(b)(iv).
Complainant concludes by arguing that Respondent had actual knowledge of Complainant’s rights in the mark. Complainant bases this assertion on the fact that Respondent is making explicit use of the CHAN LUU mark and is trying to mimic Complainant’s websites. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuoutlet.com> and <chanluupulseras.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 5, 2013
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