Chan Luu Inc. v. acitrees acitrees
Claim Number: FA1305001500562
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is acitrees acitrees (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluushopjapan.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 known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2013; the National Arbitration Forum received payment on May 17, 2013.
On May 21, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluushopjapan.com> domain name is registered 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 May 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@chanluushopjapan.com. Also on May 21, 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 June 13, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the CHAN LUU mark under Policy ¶ 4(a)(i) and Respondent’s <chanluushopjapan.com> domain name is confusingly similar to that mark. Complainant has exclusive rights to the CHAN LUU mark by using the mark for over seventeen years in connection with its line of jewelry, clothing and accessories. Complainant’s rights in the CHAN LUU mark have grown in many areas, but especially in the United States through United States Patent & Trademark Office (“USPTO”) trademark registrations (Reg. No. 2,869,029 registered Aug. 3, 2004).
Respondent’s <chanluushopjapan.com> domain name contains the entire CHAN LUU mark, the generic term “shop,” and the geographic descriptor “japan.” These words do nothing more than enhance the confusion regarding the association between the domain name and Complainant’s official CHAN LUU business. The addition of the generic top-level domain “.com” does nothing further to dispel the confusing similarity of the domain name.
Respondent lacks any right or legitimate interest in the domain name under Policy ¶ 4(a)(ii). Respondent is not commonly known by this domain name. Respondent’s WHOIS information identifies it as “acitrees acitrees.” Complainant has not otherwise permitted, authorized, or licensed Respondent to use the CHAN LUU mark in any way.
Respondent uses the <chanluushopjapan.com> domain name to offer goods that compete with Complainant’s products offered under the CHAN LUU mark. Respondent’s goods appear to be nothing but counterfeit items from the official and legitimate CHAN LUU product line. Respondent has gone so far as to appropriate photographs and product display images directly from Complainant’s own websites and place them within the content pages of the <chanluushopjapan.com> domain name. Respondent also makes excessive use of the actual CHAN LUU marks and logos in offering these counterfeit goods.
Respondent should be considered to have registered and used the <chanluushopjapan.com> domain name in bad faith under Policy ¶ 4(a)(iii). Respondent’s counterfeiting scheme amounts to a direct disruption of Complainant’s business. Respondent is taking advantage of the CHAN LUU mark so that it may directly interfere with and disrupt the business of Complainant. Respondent’s decision to offer competing and counterfeit CHAN LUU goods through the <chanluushopjapan.com> domain name amounts to a bad faith attempt to confuse Internet users into believing they are paying money to Complainant or its authorized retailers. Respondent uses images from Complainant’s websites and promotions to bolster the likelihood that Internet users will be confused when deciding whether or not to buy illegitimate and counterfeit products. Respondent hopes to pass itself off as Complainant so as to ensure Internet users will continue purchasing the illegitimate and counterfeit goods.
Respondent necessarily has actual knowledge of the CHAN LUU mark. Respondent is counterfeiting replicas of official CHAN LUU merchandise. Respondent has taken copyrighted materials off Complainant’s CHAN LUU websites and used these images to promote counterfeited goods. Respondent also has constructive knowledge of the CHAN LUU mark, based upon Complainant’s trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for CHAN LUU.
Respondent is not affiliated with Complainant and had not been authorized to use the CHAN LUU mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in the CHAN LUU mark.
The <chanluushopjapan.com> domain name is used by Respondent to address a website that offers goods that compete with products marketed under the CHAN LUU mark. Respondent’s goods appear to be counterfeit items taken from the official and legitimate CHAN LUU product line. Respondent has appropriated photographs and product display images directly from Complainant’s websites and displays them within the content pages of the <chanluushopjapan.com> addressed website.
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’s USPTO registration for the CHAN LUU mark shows Complainant has rights in such mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <chanluushopjapan.com> domain name contains the entire CHAN LUU mark less the space, adds the generic term “shop,” the geographic descriptor “japan,” and has the top level domain name “.com” appended thereto. These suggestive generic/descriptive additions to Complainant’s trademark do nothing more than enhance the confusion regarding the association between the domain name and Complainant’s CHAN LUU mark and the top level domain name is irrelevant to the Panel’s analysis. Therefore, the Panel finds that the at-issue domain name <chanluushopjapan.com> is confusingly similar to the Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i). 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. 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).
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 at‑issue 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.
The WHOIS information for the at-issue domain name identifies Respondent as “acitrees acitrees.” 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 data. The Panel therefore concludes that Respondent is not commonly known by the <chanluushopjapan.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).
Respondent uses the <chanluushopjapan.com> domain name to address a website that offers goods that compete with genuine CHAN LUU products. Respondent’s goods appear to be nothing but counterfeits of the official and legitimate CHAN LUU product line. Respondent makes excessive use of the actual CHAN LUU marks and logos in offering these counterfeit goods and has gone so far as to take photographs and product display images directly from Complainant’s legitimate websites and place them within the content pages of the <chanluushopjapan.com> website. This use of the domain name is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair uses under Policy ¶4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
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).
The at-issue domain name was registered is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are 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.
As mentioned above, Respondent uses actual CHAN LUU marks and logos to market counterfeit goods. Respondent’s counterfeiting scheme takes unfair advantage of Complainant’s CHAN LUU mark and in so doing disrupts Complainant’s business. These circumstances demonstrate Policy ¶ 4(b)(iii) bad faith use and registration. 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).
Respondent’s offering of competing and counterfeit CHAN LUU goods through the <chanluushopjapan.com> domain name also amounts to a bad faith attempt to confuse Internet users into believing they are paying money to Complainant or its authorized retailers. As mentioned above, Respondent uses images from Complainant’s websites and promotions to bolster the likelihood that Internet users will be confused when deciding whether or not to buy these illegitimate and counterfeit products. Furthermore, Respondent uses Complainant’s marks, images, and logos, in the sale of counterfeit CHAN LUU goods. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). 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).
Respondent is intent on passing itself off as Complainant so as to dupe Internet users into paying Respondent for illegitimate and counterfeit goods. Respondent’s conspicuous and excessive use of Complainant logos, marks, and images on the domain name’s website to pass itself off as Respondent is direct evidence of Respondent’s Policy ¶ 4(a)(iii) bad faith. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the < chanluushopjapan.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 counterfeit CHAN LUU products at the at-issue website. Indeed, Respondent’s website evidences Respondent’s wholesale misappropriation of Complainant’s intellectual property. 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 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluushopjapan.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 18, 2013
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