Chan Luu Inc. v. xiao lin and iaolin x
Claim Number: FA1301001482949
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is xiao lin and iaolin x (“Respondent”), Beijing, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluuoutletforjp.com>, <chanluuoutletjapan.com>, <chanluuofficials.com>, and <chanluuofficialsjp.com>, registered with Shanghai Yovole Networks, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2013; the National Arbitration Forum received payment on January 30, 2013.
The National Arbitration Forum requested verification from Shanghai Yovole Networks, Inc. three times between January 30, 2012 and February 11, 2012. After receiving no reply, the Forum notified ICANN and proceeded to commencement.
On February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@chanluuoutletforjp.com, postmaster@chanluuoutletjapan.com, postmaster@chanluuofficials.com, and postmaster@chanluuofficialsjp.com. Also on February 12, 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.
On February 16, 2013, Shanghai Yovole Networks, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluuoutletforjp.com>, <chanluuoutletjapan.com>, <chanluuofficials.com>, and <chanluuofficialsjp.com> domain names are registered with Shanghai Yovole Networks, Inc. and that Respondent is the current registrant of the names. Shanghai Yovole Networks, Inc. has verified that Respondent is bound by the Shanghai Yovole Networks, 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”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant Chan Luu Inc. (“Complainant”) owns the exclusive rights to the trademark and trade name “CHAN LUU,” which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories.
Respondent registered the subject domain names, which are confusingly similar to Complainant’s trademark. Moreover, the websites operated at the subject domain names chanluuoutletforjp.com and chanluuoutletjapan.com unlawfully sell counterfeit CHAN LUU goods in direct competition with Complainant (at Complainant’s website at chanluu.com). The subject domain names chanluuofficials.com and chanluuofficialsjp.com are being passively held by Respondent. Respondent is clearly engaged in cybersquatting and the subject domain names should be transferred to Complainant.
a) Complainant’s Company
Complainant established its CHAN LUU jewelry business in 1995 in Los Angeles, California. Complainant operates CHAN LUU showrooms in Los Angeles and New York City. Over the past 17 years, Chan Luu has expanded its business to include fashion accessories and clothing. Today, CHAN LUU products are sold around the world via major retail stores including Neiman Marcus, Saks Fifth Avenue, and Bergdorf Goodman in the U.S., Harvey Nichols in London, Mitsukoshi in Japan, and many other specialty stores around the world. Since as early as 2006, Complainant has operated a website accessible at chanluu.com, which provides information on the clothing, jewelry, handbags, and accessories sold under the CHAN LUU trademark. The website also features retail store services for the CHAN LUU products including clothing, jewelry, handbags, and accessories.
b) Complainant’s Rights In Its CHAN LUU Mark
Complainant has, through its extensive and continuous use of its CHAN LUU trademark, service mark, and trade name, created tremendous goodwill in its CHAN LUU mark (collectively the “CHAN LUU Mark”). Complainant’s use of its CHAN LUU Mark has been worldwide, with extensive sales in the United States, Japan, China, and Europe. Complainant’s extensive use of its CHAN LUU Mark is evidenced in the many newspaper articles and magazine articles. Complainant’s website, available at <http://www.chanluu.com/v/pages/press/pages/cplus.html> also provides an extensive collection of press coverage; each clickable magazine cover on the website links to a related article in the magazine (including photographs of the CHAN LUU products featured).
Complainant and its CHAN LUU goods have been extensively featured in editorials, and extensively discussed by established fashion bloggers. CHAN LUU products are frequently and prominently featured in professional photographs, and worn by many of the world’s most notable celebrities.
In addition to its extensive common law rights, Complainant also owns numerous trademark registrations for its CHAN LUU Mark around the world, including in Canada, China the European Community, Hong Kong, India, Japan, the Republic of Korea, Mexico, the United States, and Vietnam. Complainant owns incontestable United States Trademark Registration Nos. 2,869,029, 3,028,982, and 3,314,816 for CHAN LUU. Complainant also owns Chinese Trademark Registration No. 5,497,349 for CHAN LUU.[1]
Complainant vigorously protects its rights in its CHAN LUU Mark to ensure that the mark continues to signify a single source of goods and services. One key channel of trade for Complainant is the Internet; accordingly, Complainant diligently protects its CHAN LUU Mark from cybersquatting. Complainant has prevailed in numerous UDRP proceedings and panelists have consistently ordered the transfer of other confusingly similar domain names to Complainant. Chan Luu Inc. v. Peter Chan, FA 1460956 (Nat. Arb. Forum Oct. 2, 2012) (finding chanluuwrapbracelets.org and chanluubracelets2012.com confusingly similar to Complainant’s CHAN LUU Mark); Chan Luu Inc. v. Norman Sharples, FA 1460340 (Nat. Arb. Forum Oct. 3, 2012) (finding chanluuitalia.com and chanluunederland.com confusingly similar to Complainant’s CHAN LUU Mark); Chan Luu Inc. v. tim tim, FA 1461172 (Nat. Arb. Forum Oct. 3, 2012) (finding ichanluu.com confusingly similar to Complainant’s CHAN LUU Mark); Chan Luu Inc. v. Keith Wallace, FA 1463029 (Nat. Arb. Forum Oct. 17, 2012) (finding cheapchanluu.com confusingly similar to Complainant’s CHAN LUU Mark); and Chan Luu Inc. v. D. Stuber Charles et al., FA 1465466 (Nat. Arb. Forum Nov. 26, 2012) (finding chan-luu-japan.com, chanluu-online.com, and thirty‑eight additional domain names confusingly similar to Complainant’s CHAN LUU Mark).
c) The Subject Domain Names Are Confusingly Similar To Complainant’s CHAN LUU Mark
To support a finding that a subject domain name is identical or confusingly similar to a complainant’s mark, all that is required is:
that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.
Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 296 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (holding JEWS FOR JESUS and jewsforjesus.org confusingly similar).
Each of the subject domain names is confusingly similar to Complainant’s CHAN LUU Mark. All of the subject domain names include Complainant’s entire CHAN LUU Mark as the dominant portion of the domain name, and merely add a generic term (i.e., “officials”), a geographic term (i.e. “japan”), or a descriptive term of Complainant’s retailing services (i.e. “outlet”) to Complainant’s CHAN LUU Mark. The addition of these additional terms does nothing to distinguish the domain names from Complainant’s mark pursuant to ¶4(a)(i) of the Policy. As the panel in International Business Machines Corp. v. Eminent Domain Licensing Enterprise, D2012-0700 (WIPO Jun. 18, 2012), explained, “[i]t has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark.” See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY,” thus satisfying Policy ¶4(a)(i)).
The addition of a geographic term to Complainant’s CHAN LUU Mark does not distinguish any of the subject domain names from Complainant’s mark. As the panel in Broadcom Corporation v. Ayers International Group, Inc. held, the domain name broadcom-usa.com domain name was confusingly similar to complainant’s BROADCOM trademark because it merely added the geographic term “USA” to the complainant’s mark. Broadcom Corporation v. Ayers International Group, Inc. FA112562 (Nat. Arb. Forum Jul. 24, 2002); JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding the domain name jvc‑america.com substantially similar to, and nearly identical to the complainant’s JVC mark); AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
The addition of a term descriptive of Complainant’s retailing services to Complainant’s CHAN LUU Mark does not distinguish any of the subject domain names from Complainant’s mark. In Parfums Christian Dior v. 1 Netpower, Inc. the panel held that domain names comprised of a trademark and the descriptive words “fashion” or “cosmetics” were confusingly similar under the Policy. Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000); Bridgestone Corporation v. Vahid Chitsaz, FA 15367 (Nat. Arb. Forum Aug. 1, 2007) (holding that the addition of the related terms “tire” and “sale” to complainant’s BRIDGESTONE mark “do not negate any confusing similarity between the disputed domain name and the mark”).
As detailed in the table below, all of the subject domain names include Complainant’s entire CHAN LUU Mark as the dominant portion of the domain name, merely adding a generic term (i.e., “officials”), a geographic term (i.e. “japan”), or a descriptive term of Complainant’s retailing services (i.e. “outlet”) to Complainant’s CHAN LUU Mark.
Domain name Reason for finding confusing similarity
chanluuoutletforjp.com Adds the descriptive term “outlet” with the generic term “for” and the geographic term “jp” (Complainant’s second largest market is Japan) to Complainant’s CHAN LUU Mark
chanluuoutletjapan.com Adds the descriptive term “outlet” with the geographic term “japan” (Complainant’s second largest market is Japan) to Complainant’s CHAN LUU Mark
chanluuofficials.com Adds the generic term “officials” to Complainant’s CHAN LUU Mark
chanluuofficialsjp.com Adds the generic term “officials” and the geographic term “jp” (Complainant’s second largest market is Japan) to Complainant’s CHAN LUU Mark
Likewise, the addition of the generic top-level domain (“gTLD”) name “.com” to portion of the subject domain names is irrelevant to the confusingly similar analysis. See Dermalogica, Inc. and The International Dermal Institute, Inc. v. Andrew Porter and Zen Day Spa, FA 1155710 (Nat. Arb. Forum Apr. 14, 2008). Thus, the addition of “.com,” is insufficient to avoid a finding of confusing similarity between the subject domain names and the CHAN LUU Mark.
Accordingly, both applicable case law and prior administrative proceedings support a finding that the subject domain names are confusingly similar to Complainant’s CHAN LUU Mark.
d) Respondent Has No Rights Or Legitimate Interest In The Subject Domain Names
Respondent has no rights or legitimate interest in the subject domain names. Under the Policy, once the complainant asserts a prima facie case against the respondent, the respondent bears the burden of proving that it has rights or legitimate interests in the subject domain names pursuant to ¶4(a)(ii) of the Policy. See G.D. Searle & Co. v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant has not licensed Respondent to use its CHAN LUU Mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark. Respondent has no legitimate reason for using the CHAN LUU Mark as the dominant part of the subject domain names.
i) Respondent Is Not Making A Bona Fide Offering Of Goods Or Services At The Subject Domain Names
The Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the subject domain names. For instance, Respondent could have rights under ¶4(c)(i) of the Policy if “before any notice to respondent of the dispute,” Respondent uses or prepares to use “the domain name in connection with a bona fide offering of goods or services.” However, when the domain names are used to offer competing goods to those offered under Complainant’s CHAN LUU Mark, and diverts Internet users seeking Complainant’s website to a website for Respondent, such use is not a bona fide offering of goods or services. See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (respondent’s use of the domain names to offer strictly competing services with the complainant is not a bona fide offering of goods or services under the Policy); Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Here, Respondent uses the subject domain names chanluuoutletforjp.com and chanluuoutletjapan.com to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. Respondent’s websites offer for sale counterfeit CHAN LUU items.
Respondent excessively uses Complainant’s CHAN LUU Mark throughout its websites at the subject domain names. For example, Respondent prominently displays Complainant’s CHAN LUU Mark at the top of the subject websites. The unlawful registration and use of a domain name reflecting another’s trademark is not a protected use under the Policy. Viacom Int’l, Inc. et al. v. TVdot.net, Inc., D2000-1253 (WIPO Jan. 16, 2001) (“[The] illegal use of another’s trademark cannot be considered a bona fide use.”).
Also, Respondent is using the subject domain names chanluuofficials.com and chanluuofficialsjp.com to resolve to inactive websites. Such non-use or “passive holding” of a domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i). Michelin North America, Inc. v. Energie Media Group, FA 451882 (Nat. Arb. Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain names by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum Jul. 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i)); NIC Industries, Inc. v. Abadaba S.A., FA 448503 (Nat. Arb. Forum Jul. 17, 2012) (finding that respondent was not making a Policy ¶4(c)(i) bona fide offering of goods or services because respondent was not making an active use of the disputed domain name); Hewlett‑Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i)); Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where the domain name did not resolve to a website, and respondent was not commonly known by the domain name).
Accordingly, Respondent is not making a bona fide offering of goods and services at the subject domain names and therefore has no legitimate interest in the subject domain names under the circumstances described in ¶(4)(c)(i) of the Policy.
ii) Respondent Is Not Commonly Known By The Subject Domain Names
A respondent’s claim of rights or legitimate interests may also be supported by ¶4(c)(ii) of the Policy when the party has “been commonly known by the domain name,” even if no trademark or service mark rights have been acquired. In this case, Respondent is not commonly known by the subject domain names. Respondent’s name, as listed in the whois information for the subject domain names, is “xiao lin” and “iaolin x.”
Further, Complainant has not given Respondent permission to use its CHAN LUU Mark. Respondent’s unauthorized use of Complainant’s registered service mark and trademarks supports a lack of rights and legitimate interests in the subject domain names. Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA 040087 (Nat. Arb. Forum Aug. 31, 2007) (respondent was not commonly known by the disputed domain name because, in part, respondent lacked authorization to use complainant’s registered service mark); see also American Girl, LLV v. George Rau, FA 308206 (Nat. Arb. Forum Apr. 2, 2010) (respondent was not commonly known by the disputed domain name when respondent was “not licensed or otherwise authorized to use” complainant’s mark).
Accordingly, Respondent cannot defend under ¶4(c)(ii) of the Policy by claiming that Respondent is known by the subject domain names.
iii) Respondent Is Not Making Legitimate Noncommercial Or Fair Use Of The Subject Domain Names
Another circumstance that would support a respondent’s claim of rights or legitimate interest is detailed in ¶4(c)(iii) of the Policy, which states:
you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to these circumstances, Respondent has made a plainly commercial use of the subject domain names chanluuoutletforjp.com and chanluuoutletjapan.com. The subject domain names are clearly used to host commercial websites which sell goods directly competitive with Complainant’s goods.
Moreover, the subject domain names chanluuofficials.com and chanluuofficialsjp.com are currently being passively held by Respondent. Such non-use is not a legitimate noncommercial or fair use under ¶4(c)(iii) of the Policy. Thermo Electron Corp., supra (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); NIC Industries, Inc., supra (finding that the respondent was not making a legitimate noncommercial or fair use of the domain name because respondent was not actively using the disputed domain name); Hewlett-Packard Co., supra (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
Accordingly, the circumstances described in ¶4(c)(iii) of the Policy are also not present for the subject domain names.
e) Respondent Has Registered And Is Using The Subject Domain Names In Bad Faith
The Policy expressly details specific circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” (Policy, ¶4(b)). Any one of these express circumstances is sufficient to establish bad faith. A first circumstance applicable here is detailed in ¶4(b)(iv) of the Policy, which states that
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It is well settled that the registration and commercial use of a domain name that is confusingly similar to a complainant’s mark to redirect Internet users to websites which offer goods in direct competition to the complainant’s goods satisfies the requirements of ¶4(b)(iv) of the Policy. See Dollar Financial Group, Inc. v. Bankshire Corp., FA 13686 (Nat. Arb. Forum Jul. 30, 2007) (respondent’s use of a domain name confusingly similar to a complainant’s mark to redirect Internet users to respondent’s own commercial website offering goods and services in direct competition with complainant’s goods evidences bad faith registration and use under the Policy); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum Jul. 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Similarly, here, Respondent uses the subject domain names chanluuoutletforjp.com and chanluuoutletjapan.com to sell counterfeit CHAN LUU goods. Chan Luu Inc. v. Li Yong Ze, FA 1463461 (Nat. Arb. Forum Nov. 2, 2012) (use of a confusingly similar domain name to compete with a complainant’s business by marketing counterfeit goods is disruptive and demonstrates bad faith registration and use pursuant to the Policy ¶4(b)(iii)); 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). Accordingly, Respondent’s registration and use of the subject domain names satisfy the requirements of the Policy ¶4(b)(iii).
Additionally, Respondent’s websites at the subject domain names, display Complainant’s CHAN LUU Mark. The only reason for Respondent’s registration of these confusingly similar domain names, and the hosting of websites at these domain names, is to unlawfully misdirect users searching for Complainant to Respondent’s websites. Accordingly, Respondent’s registration and use of the subject domain names satisfy the requirements of ¶¶4(b)(iii) and (iv) of the Policy.
Furthermore, Respondent registered the subject domain names with actual knowledge of Complainant’s rights in the CHAN LUU Mark as evidenced by Respondent’s explicit use of the CHAN LUU Mark. A respondent’s imitation of a complainant’s website to pass itself off as the complainant is evidence of bad faith registration and use pursuant to the Policy ¶4(a)(iii). Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002); Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark evidenced that the disputed domain name was registered in bad faith). Respondent also 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. The registration of confusingly similar domain names with constructive knowledge of Complainant’s mark, without more, is evidence of bad faith registration and use of the domain names pursuant to ¶4(a)(iii) of the Policy. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Finally, it is settled law that the registration of confusingly similar domain names that are obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See Household Int’l, Inc. v. Cyntom Enters., FA 096784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that the respondent registered a well‑known business name with hopes of attracting the complainant’s customers). Because the CHAN LUU Mark is so obviously connected with Complainant, and because the subject domain names so clearly reference Complainant’s CHAN LUU Mark, registration by Respondent, who has no connection with Complainant, strongly suggests bad faith. Accordingly, a finding of bad faith is also supported on these grounds.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims rights in the CHAN LUU mark pursuant to its federal trademark registrations with the United States Patent & Trademark Offcie (“USPTO”) (e.g. Reg. No. 2,869,029 registered Aug. 3, 2004) and the SAIC (Reg. No 5,497,349 registered Aug. 21, 2009). Trademark registrations in multiple countries, including Respondent’s listed location, are sufficient to establish rights for the purposes of Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complaint claims Respondent’s <chanluuoutletforjp.com>, <chanluuoutletjapan.com>, <chanluuofficials.com>, and <chanluuofficialsjp.com> domain names are confusingly similar to Complainant’s CHAN LUU mark. The disputed domain names all contain the CHAN LUU mark in its entirety. Each disputed domain name adds the gTLD “.com,” which is irrelevant in determining whether there is a confusing similarity (because every domain name must have a gTLD or ccTLD). Deleting spaces from the mark in the domain name does not adequately distinguish the two. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)) Complainant also notes the disputed domain names contain generic or descriptive words such as “outlet,” “officials,” and “for.” This Panel finds such descriptive words to be insufficient to distinguish disputed domain names from complainants’ marks. 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”). Three of the disputed domain names contain the geographic term “japan” or “jp.” These geographic additions are not sufficient to distinguish between the mark and the disputed domain names. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶4(a)(i)). Therefore, the Panel finds the <chanluuoutletforjp.com>, <chanluuoutletjapan.com>, <chanluuofficials.com>, and <chanluuofficialsjp.com> domain names are confusingly similar to Complainant’s CHAN LUU mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain names and has not demonstrated rights under Policy ¶4(c)(ii). The WHOIS information lists “xiao lin” and “iaolin x” as the registrants of the disputed domain names. Complainant further claims it has not given Respondent authorization to use its CHAN LUU mark. The Panel finds Respondent has not established rights or legitimate interests under Policy ¶4(c)(ii) because the WHOIS information does not support such a claim and Complainant has not authorized Respondent to use its mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use with the disputed domain names, thereby failing to establish rights or legitimate interests through Policy ¶¶4(c)(i) or 4(c)(iii). Complainant claims Respondent is using the <chanluuoutletforjp.com> and <chanluuoutletjapan.com> domain names to sell goods directly competing with the goods Complainant sells under the CHAN LUU mark, including counterfeit CHAN LUU items. The <chanluuofficials.com> and <chanluuofficialsjp.com> domain names resolve to inactive websites with no content, meaning Respondent has acquired no rights because Respondent has not even used them. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use with the disputed domain names, and has failed to establish rights or legitimate interests through Policy ¶¶4(c)(i) or 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims selling counterfeit versions of Complainant’s products on the <chanluuoutletforjp.com> and <chanluuoutletjapan.com> domain names means Respondent is using the disputed domain names to disrupt the business of a competitor. This Panel agrees and finds Respondent registered and is using the <chanluuoutletforjp.com> and <chanluuoutletjapan.com> domain names in 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 claims Respondent registered the <chanluuoutletforjp.com> and <chanluuoutletjapan.com> domain names, which are confusingly similar to Complainant’s mark, to attract internet users to its websites for commercial gain by selling competing and counterfeit goods, and this is evidence of bad faith registration and use under Policy ¶4(b)(iv). The Panel also agrees with this claim. 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). Complainant does not specifically address Policy ¶4(b) arguments for the inactive domain names, <chanluuofficials.com> and <chanluuofficialsjp.com>. However, bad faith can be found when Complainant has a well-known mark and Respondent has previously infringed upon Complainant’ mark, see Policy ¶4(b)(iv). Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Therefore, the Panel finds the <chanluuofficials.com> and <chanluuofficialsjp.com> domain names were registered and are being used in bad faith under Policy ¶4(b)(iv).
Complainant argues Respondent had actual knowledge of Complainant's rights in the CHAN LUU mark. Complainant claims Respondent's offering of Complainant's counterfeit products and explicit use of Complainant’s mark at the resolving website shows Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and finds Respondent had actual knowledge of Complainant's mark and rights. This means Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <chanluuoutletforjp.com>, <chanluuoutletjapan.com>, <chanluuofficials.com>, and <chanluuofficialsjp.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, April 8, 2013
[1] Complainant notes that Respondent appears to list an address within China as Respondent’s address in the whois data for the subject domain names.
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