Chan Luu Inc. v. ye dong cheng
Claim Number: FA1306001504576
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is ye dong cheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluukakaku.com>, registered with GUANGZHOU EHOST TECH.CO.LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 12, 2013; the National Arbitration Forum received payment June 12, 2013.
On June 20, 2013, GUANGZHOU EHOST TECH.CO.LTD. confirmed by e-mail to the National Arbitration Forum that the <chanluukakaku.com> domain name is registered with GUANGZHOU EHOST TECH.CO.LTD., and that Respondent is the current registrant of the name. GUANGZHOU EHOST TECH.CO.LTD. verified that Respondent is bound by the GUANGZHOU EHOST TECH.CO.LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@chanluukakaku.com. Also on June 27, 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 July 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent is not commonly known by the subject domain name.
ii. Respondent uses the subject domain name <chanluukakaku.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items.
i. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods.
ii. The only reason for Respondent’s registration of the confusingly similar domain name, and the hosting of a website that displays the CHAN LUU mark, is to unlawfully misdirect users searching for Complainant to Respondent’s website.
iii. Respondent’s imitation of Complainant’s website to pass itself off as Complainant is evidence of bad faith registration and use.
iv. Respondent registered the subject domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark.
The Panel notes that Respondent registered the <chanluukakaku.com> domain name June 20, 2013.
Complainant established rights in the mark contained in its entirety in the disputed domain name.
The domain name is confusingly similar to Complainant’s protected mark.
The Respondent has no rights to or legitimate interests in the disputed domain name.
The Respondent registered and used the disputed domain 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant argues that it owns the exclusive rights to the trademark CHAN LUU, which it has used for some 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant contends that it is the owner of trademark registrations with China’s SAIC for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009). See Exhibit E. The Panel notes that Respondent appears to reside in China. Therefore, the Panel finds that Complainant’s registration of the CHAN LUU mark with China’s SAIC sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Complainant contends that the subject domain name <chanluukakaku.com> is confusingly similar to Complainant’s CHAN LUU mark because the domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name, and merely adds the trademark of the popular Japanese online retailer, “Kakaku,” to form the subject domain name <chanluukakaku.com>. The Panel finds that Respondent’s addition of another firm’s mark to the domain name does not necessarily negate a finding of confusing similarity under Policy ¶ 4(a)(i). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors). The Panel notes as well that Respondent removes the space in Complainant’s CHAN LUU mark for its domain name. Lastly, Complainant argues that addition of the gTLD “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis. The Panel finds that Respondent’s removal of spaces and inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. 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 do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <chanluukakaku.com> domain name is confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show that it does have such 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 contends that Respondent is not commonly known by the subject domain name. Complainant alleges that in the WHOIS information for the <chanluukakaku.com> domain name, Respondent is known as “ye dong chang.” See Exhibit A. Complainant further asserts that it has not given Respondent permission to use its CHAN LUU mark. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel concluded that a respondent failed to illustrate rights or legitimate interests in a disputed domain name where, among other factors, there was no corroborating evidence in the record indicating that the respondent was commonly known by the disputed domain name. Similarly, this Panel also finds that Respondent is not commonly known by the <chanluukakaku.com> domain name.
Complainant claims that Respondent uses the subject domain name <chanluukakaku.com> to sell goods in direct competition with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. The Panel notes that Respondent’s <chanluukakaku.com> domain name resolves to a Chinese language webpage that sells counterfeit jewelry and other products similar to Complainant’s products. See Exhibit H. Additionally, Complainant asserts that Respondent excessively uses Complainant’s CHAN LUU mark throughout its website and at the top of its website. Respondent is using the <chanluukakaku.com> domain name to sell counterfeit goods and attempts to pass itself off as Complainant and the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant also urges that Respondent registered and used the disputed domain name in bad faith. Complainant argues that Respondent uses the subject domain name to sell counterfeit CHAN LUU goods. See Exhibit H. Prior panels have found that a respondent’s use of a domain name to sell counterfeit versions of a complainant’s products disrupts complainant’s legitimate business. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel concluded that complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products. Similarly, this Panel finds that Respondent’s <chanluukakaku.com> domain name disrupts Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant contends that the only reason for Respondent’s registration of the confusingly similar domain name, and the hosting of a website that displays the CHAN LUU mark, is to unlawfully misdirect users searching for Complainant to Respondent’s website. Complainant claims that Respondent has attempted to imitate Complainant’s website to pass itself off as Complainant. The Panel notes that Respondent displays Complainant’s CHAN LUU mark on its website. See Exhibit H. Respondent has used the <chanluukakaku.com> domain name to pass itself off as Complainant with the intention of diverting Internet users from Complainant’s website to its own website for commercial gain and the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant asserts that Respondent registered the subject domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Complainant contends that Respondent’s knowledge of Complainant’s rights in the CHAN LUU mark is evidenced by Respondent’s explicit use of the CHAN LUU mark on its website. See Exhibit H. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore the Panel finds that Respondent registered the disputed domain name in bad faith under 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").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluukakaku.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 5, 2013.
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