Chan Luu Inc. v. Lin Lin
Claim Number: FA1301001481944
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Lin Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluusite.com> and <chanluujpstore.com>, registered with Shanghai Meicheng Technology Information Co., Ltd.
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 24, 2013; the National Arbitration Forum received payment on January 24, 2013. The Complaint was submitted in both English and Chinese.
On January 31, 2013, Shanghai Meicheng Technology Information Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <chanluusite.com> and <chanluujpstore.com> domain names are registered with Shanghai Meicheng Technology Information Co., Ltd and that Respondent is the current registrant of the names. Shanghai Meicheng Technology Information Co., Ltd has verified that Respondent is bound by the Shanghai Meicheng Technology Information Co., Ltd 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 February 8, 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 28, 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@chanluusite.com, postmaster@chanluujpstore.com. Also on February 8, 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 March 12, 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 names be transferred from Respondent 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent 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 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 operates its own official website at <chanluu.com>.
Respondent is Lin Lin and Lin Lin who lists its address as Beijingshi, Beijing, China. Respondent’s registrar list its address as Shanghai, China. The <chanluusite.com> domain name was registered on January 4, 2013, and the <chanluujpstore.com> domain name was registered on January 5, 2013.
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 asserts that it has rights in the CHAN LUU mark by way of trademark registrations with the USPTO (e.g. Reg. No. 2,869,029 registered on Aug. 3, 2004) and with the SAIC (e.g. Reg. No. 5,497,349 registered on Aug. 21, 2009). The Panel notes that although there is no official certificate of registration with the SAIC provided, the registration is not contested by Respondent. The Panel finds that the registration is sufficient to support Complainant’s assertion that it has made a dutiful showing of its rights under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant next avers that both the<chanluusite.com> and <chanluujpstore.com> domain names are confusingly similar to the CHAN LUU mark. Complainant believes that both domain names add merely generic terms to the CHAN LUU mark. Complainant also notes that the term “jp” is merely a geographic descriptor for Japan. Complainant asserts that the addition of the generic top-level domain gTLD “.com” is not relevant. The Panel notes that neither terms descriptive of the retailing services provided by Complainant, or merely generic terms added to the CHAN LUU mark, are sufficient to distinguish the disputed domains from confusing similarity with Complainant’s protected marks. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also 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); Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel agrees that addition of a gTLD is irrelevant to this analysis, nor is the deletion of the spacing from the CHAN LUU mark a meaningful variation. 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 panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel finds that both the <chanluusite.com> and <chanluujpstore.com> domain names are confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).
Respondent makes 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 Respondent is not commonly known by the disputed domain names. Complainant observes that Respondent’s WHOIS information for both domain names lists “Lin Lin” as the registrant of the names. Complainant proclaims that it has not otherwise permitted or authorized Respondent’s use of its marks in domain names. The Panel finds that Respondent is not commonly known by either of the <chanluusite.com> and <chanluujpstore.com> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent is not providing a bona fide offering of goods or services, nor is Respondent providing a legitimate noncommercial or fair use of the disputed domain names. Complainant avers that both domain names are being used to sell goods directly in competition with Complainant because the goods are mere counterfeits of the legitimate CHAN LUU product line. Complainant further contends that Respondent is making a sizable use of Complainant’s own CHAN LUU mark in soliciting these goods to Internet users. The Panel notes that the record illustrates that both the <chanluusite.com> and <chanluujpstore.com> domain names resolve to websites that solicit a variety of fashion accessories under the CHAN LUU mark. See Complainant’s Ex. H. The Panel notes that there is nothing bona fide under Policy ¶ 4(c)(i) where the sales of counterfeit, and otherwise competing goods in a profit-driven manner are concerned and thus Respondent’s actions are in direct contravention of Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant avers that Respondent is using the domain names to disrupt Complainant’s business in bad faith. Complainant argues that the solicitation of competing goods that are also counterfeits of Complainant’s CHAN LUU goods is a practice that is inherently disruptive to Complainant’s legitimate CHAN LUU business. The Panel finds that Respondent’s decision to use the disputed domain names to solicit counterfeit goods supports a conclusion of bad faith under Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant also argues that Respondent is seeking to confuse and divert Internet users to the disputed domain names by creating the impression that Internet users are doing business with Complainant, and are purchasing official legitimate CHAN LUU goods. Complainant believes that Respondent is profiting from this confusion in bad faith by selling competing and counterfeit products to Complainant’s potential consumers. The Panel agrees that any explicit use of the CHAN LUU mark in Respondent’s marketing of competing and counterfeit goods is Policy ¶ 4(b)(iv) bad faith because of the strong likelihood that Internet users will be confused regarding whether the Complainant is the source of the content. See 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
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 <chanluusite.com> and <chanluujpstore.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 24, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page