Chan Luu Inc. v. tim tim
Claim Number: FA1301001483115
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is tim tim (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluubraceletsgifts.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 electron-ically on January 31, 2013; the National Arbitration Forum received payment on January 31, 2013.
On Febuary 4, 2013, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluubraceletsgifts.com> domain name is regis-tered 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 February 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@chanluubraceletsgifts.com. Also on February 5, 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 March 7, 2013, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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 uses the CHAN LUU trademark in connection with the sale of fashion accessories, including bracelets.
Complainant has rights in the CHAN LUU mark by means of registration of the mark with the United States Patent & Trademark Office (“USPTO”) (including Registry No. 2,869,029, registered on August 3, 2004.
Respondent registered the <chanluubraceletsgifts.com> domain name on October 15, 2012.
Respondent’s <chanluubraceletsgifts.com> domain name is confusingly similar to the CHAN LUU mark.
Respondent has not been commonly known by the <chanluubraceletsgifts.com> domain name.
Complainant has not given Respondent permission to use its CHAN LUU mark.
Respondent is not using the <chanluubraceletsgifts.com> domain name in con-nection with a bona fide offering of goods or services or a legitimate noncommer-cial or fair use.
The domain name is used to sell goods that compete directly with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU goods.
Respondent uses the contested domain name to profit commercially by creating confusion among Internet users with the implication that Complainant is affiliated with the resolving website.
Respondent lacks rights to and legitimate interests in the disputed domain name.
Respondent knew of Complainant’s rights in the CHAN LUU mark when it regis-tered the <chanluubraceletsgifts.com> domain name.
This is evident from Respondent’s explicit use of the CHAN LUU mark both in the domain name and throughout its resolving website.
Complainant registered and is using the <chanluubraceletsgifts.com> 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 can-celled 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 representa-tions 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 Verti-cal 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 reason-able 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 mark for purposes of Policy ¶ 4(a)(i) owing to its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning to the core question presented by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <chanluubraceletsgifts.com> domain name is confusingly similar to the CHAN LUU trademark. The domain name contains the entire mark, with the elimination of the space between the terms of the mark, and the addition of the descriptive terms “bracelets” and “gifts” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. 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. There-fore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
Similarly, inclusion of the descriptive terms “bracelets” and “gifts” add to the con-fusion produced by the domain name in that they relate to aspects of Complain-ant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent 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) (finding 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 Respond-ent 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 branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations 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 names. 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 finding that, where a respondent fails to respond to a UDRP Com-plaint, 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 ex-amine 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 Respond-ent has rights to or legitimate interests in the disputed domain names 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 contested domain name and that Complainant has never given Respondent permission to use its CHAN LUU mark. Moreover, the pertinent WHOIS information identifies the registrant only as “tim tim,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name <chanluubraceletsgifts.com> so as to have acquired rights to or legitimate int-erests in it within the contemplation of Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in them as described in Policy ¶4(c)(ii), where there was no evidence in the record to suggest that a respondent was commonly known by the domain names there in dispute).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <chanluubraceletsgifts.com> domain name in furtherance of a bona fide offering of goods or services or a legitimate noncom-mercial or fair use, in that the domain name is used to sell goods that compete with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU goods. This employment of the domain name is indeed neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding that a respondent’s attempt to pass itself of as a complainant was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use pursuant to Policy ¶ 4(c)(iii), where a respondent used a dis-puted domain name to present Internet users with a website that was nearly identical to a UDRP complainant’s website).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the <chanluubraceletsgifts.com> domain name, as alleged in the Complaint, disrupts Complainant’s business, which stands as evidence of bad faith registration and use of the domain name 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 a UDRP complainant’s business was disrupted within the meaning of Policy ¶ 4(b)(iii) by a respondent’s bad faith registration and use of a disputed domain name for the purpose of selling counterfeit products).
We are likewise convinced that Respondent uses the domain name, which is confusingly similar to Complainant’s CHAN LUU trademark, to create confusion among Internet users by implying that Complainant is affiliated with the resolving website for Respondent’s commercial profit. This is evidence of bad faith regis-tration and use of the domain name under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, the evidence is persuasive that Respondent registered the contested <chanluubraceletsgifts.com> domain name with knowledge of Complainant and its rights in the CHAN LUU trademark, which stands as independent proof of bad faith registration of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met its obligations of proof under Pol-icy ¶ 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 <chanluubraceletsgifts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 19, 2013
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