national arbitration forum

 

DECISION

 

Chan Luu Inc. v. Kie Ogawa

Claim Number: FA1302001483270

 

PARTIES

Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA.  Respondent is Kie Ogawa (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluu-jp.com>, registered with WILD WEST DOMAINS, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 1, 2013.

 

On Febuary 4, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluu-jp.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name.  WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chanluu-jp.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 decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant has made extensive use of its CHAN LUU mark around the world, and has registered the mark with an array of national trademark agencies.  See, e.g., United States Patent & Trademark Office (“USPTO”) Reg. No. 2,869,029 registered on Aug. 3, 2004; Japan Patent Office (“JPO”) Reg. No. 4,884,138 registered on July 29, 2005.

 

Respondent’s <chanluu-jp.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.  Respondent merely adds the geographic descriptor for the country Japan, “jp,” a hyphen, and the generic top-level domain “.com” in making the domain name.  None of these alterations in the domain name can defeat the confusing similarity between the domain name and the mark.

 

Respondent is not commonly known by the <chanluu-jp.com> domain name.  WHOIS information lists one “Kie Ogawa” as the domain name’s registrant.  Complainant has not otherwise given Respondent permission or authorization to use the CHAN LUU mark for any reason whatsoever.

 

Respondent is not providing either a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.  The domain name resolves to a website that sells goods directly in competition with Complainant’s CHAN LUU products.  Respondent makes excessive use of Complainant’s own CHAN LUU mark in marketing and advertising the goods sold on the <chanluu-jp.com> domain name.

 

Respondent has registered and used the <chanluu-jp.com> domain name to redirect confused Internet users to the Respondent’s own website.  Respondent’s tactics in selling counterfeit or competing goods enhances the chance that Internet users will mistakenly believe that the domain name is addressing a website that is run by, or endorsed by, Complainant and its CHAN LUU mark.

 

Respondent registered the <chanluu-jp.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark.  This is evident by the fact that Respondent is offering counterfeit goods, and is using the CHAN LUU mark in conjunction with the advertising and sale of goods that are identical to those sold under the CHAN LUU mark.  Alternatively, Respondent had constructive knowledge of the CHAN LUU mark by way of Complainant’s trademark registrations.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark registrations with multiple trademark registries worldwide for the CHAN LUU mark.

 

Complainant acquired rights in its CHAN LUU mark prior to Respondent’s registration of the at-issue domain name.

 

Respondent is not authorized to use Complainant’s trademark in any capacity.

 

The at-issue domain name addresses a website that is designed to sell counterfeit CHAN LUU merchandise and other goods that compete with Complainant’s CHAN LUU products. The website displays the CHAN LUU trademark.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows it has rights in the CHAN LUU mark via its several trademark registrations with various international trademark agencies, including the USPTO, and the JPO.  Any one of such registrations would be sufficient for Complainant to establish rights in its CHAN LUU mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (finding that the complainant’s various trademark registrations with agencies around the world, including with the USPTO, serve to secure its rights in the claimed mark under the Policy).

 

Respondent’s <chanluu-jp.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.  In forming the at-issue domain name Respondent concatenates a hyphen and the geographic descriptor for the country Japan, “jp,” to the CHAN LUU mark and then appends the generic top-level domain “.com” to the resulting string.  Despite the resulting differences between the mark and the at-issue domain name, the domain name is nevertheless confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information for the at-issue domain name identifies Respondent as “Kie Ogawa.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS indication. The Panel therefore concludes that Respondent is not commonly known by the <chanluu-jp.com> domain name for the purposes of 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).

 

Additionally, Respondent uses the disputed domain name to address a website that promotes the sale of counterfeit CHAN LUU products as well as goods directly competing with Complainant’s CHAN LUU products. Using the confusingly similar domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.

 

Respondent’s <chanluu-jp.com> domain name was designed to be, and is, confusingly similar to Complainant’s trademark. Such confusion is augmented by Respondent’s use of the CHAN LUU mark on the <chanluu-jp.com> website and by the website’s offering of counterfeit CHAN LUU merchandise. Thereby, Respondent misdirects consumers expecting to find Complainant to its own commercial website. These circumstances show that Respondent is using Complainant’s mark to attract Internet users to Respondent’s website for commercial gain pursuant to Policy ¶ 4(b)(iv) and thereby demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶4(a)(iii). See 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, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluu-jp.com> domain name. Respondent’s prior knowledge of the CHAN LUU mark is inferred from the similarities between the at-issue domain name and Complainant’s trademark, as well as from Respondent’s sale of CHAN LUU style products on a website that is suggest of Complainant’s official website. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chanluu-jp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  March 7, 2013

 

 

 

 

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