Chan Luu Inc. v. Byron Gossett
Claim Number: FA1305001500891
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Byron Gossett (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluuarmband.com> and <chanluucanada.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2013; the National Arbitration Forum received payment on May 20, 2013.
On May 22, 2013, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the National Arbitration Forum that the <chanluuarmband.com> and <chanluucanada.com> domain names are registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the names. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@chanluuarmband.com and postmaster@chanluucanada.com. Also on May 22, 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 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain names are confusingly similar to Complainant’s CHAN LUU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluuarmband.com> and <chanluucanada.com> domain names, and that Respondent registered and uses the domains name 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 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 contends that it owns the exclusive rights to 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. Complainant also asserts that it owns numerous trademark registrations for its CHAN LUU mark around the world. Complainant argues that it is the owner of trademark registrations for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004) with the USPTO. Complainant’s registration of the CHAN LUU mark with the USPTO is sufficient to demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the subject domain names are confusingly similar to Complainant’s CHAN LUU mark as the <chanluuarmband.com> domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the generic term “armband” to Complainant’s CHAN LUU mark. Respondent’s addition of a generic term to Complainant’s mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel notes that Respondent has added the geographic term “Canada” to the <chanluucanada.com> domain name. Respondent’s addition of a geographic term is inconsequential to a Policy ¶ 4(a)(i) determination. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Lastly, Complainant contends that the addition of the gTLD “.com” to portions of the <chanluuarmband.com> and <chanluucanada.com> domain names is irrelevant to the confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Finally, Respondent removes the space in Complainant’s CHAN LUU mark in its <chanluuarmband.com> and <chanluucanada.com> domain names. The omission of spaces to the domain names does not establish distinctiveness from Complainant’s mark pursuant to Policy ¶ 4(a)(i). Thus, the Panel finds that Respondent’s <chanluuarmband.com> and <chanluucanada.com> domain names are confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the subject domain names. Complainant points out that Respondent’s name, as listed in the WHOIS information for the <chanluuarmband.com> and <chanluucanada.com> domain names, is “Byron Gossett.” Complainant further states contends it has not given Respondent permission to use its CHAN LUU mark. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the subject domain names <chanluuarmband.com> and <chanluucanada.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. Complainant argues that Respondent offers counterfeit goods on its websites. Complainant asserts that Respondent does not sell authentic CHAN LUU products. Complainant claims that some of the photographs on Respondent’s websites have been taken from Complainant’s own website. Complainant also argues that Respondent excessively uses Complainant’s CHAN LUU trademark throughout its websites at the subject domain names and prominently displays Complainant’s CHAN LUU mark at the top of the subject websites. The Panel finds that Respondent’s use of the <chanluuarmband.com> and <chanluucanada.com> domain names to sell counterfeit products is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the subject domain names <chanluuarmband.com> and <chanluucanada.com> to sell counterfeit CHAN LUU goods. Such use of a domain name may disrupt the business of the Complainant. 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). Because Respondent’s offering of counterfeit goods on its websites most likely disrupts Complainant’s business, the Panel finds that Respondent has registered and is using the domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that the only reason for Respondent’s registration of the confusingly similar domain names, and the hosting of the resolving websites is to unlawfully misdirect users searching for Complainant to Respondent’s websites. Complainant argues that Respondent sells counterfeit goods on its websites. Complainant claims that Respondent’s websites display Complainant’s CHAN LUU mark, and include Complainant’s copyright protected photographs. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel concluded that the respondent attempted to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products. Thus, the Panel finds that Respondent’s use of the <chanluuarmband.com> and <chanluucanada.com> domain names to sell counterfeit CHAN LUU goods demonstrates bad faith use and registration of the domain names under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s imitation of Complainant’s website to pass itself off as Complainant is evidence of bad faith registration and use. Complainant contends that some of the photographs on Respondent’s websites have been taken from Complainant’s own website. Complainant asserts that Respondent uses Complainant’s CHAN LUU trademark on its resolving websites and displays Complainant’s CHAN LUU mark at the top of the websites. Because the Panel finds that Respondent has attempted to pass itself off as Complainant, the Panel holds that Respondent has registered and is using the <chanluuarmband.com> and <chanluucanada.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant argues that Respondent registered the <chanluuarmband.com> and <chanluucanada.com> 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. Complainant claims that Respondent uses Complainant’s CHAN LUU trademark on its websites and displays Complainant’s CHAN LUU mark at the top of its websites. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuarmband.com> and <chanluucanada.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 25, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page