Chan Luu Inc. v. wangjincong / wang jincong
Claim Number: FA1306001505588
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is wangjincong / wang jincong (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluusell.com> registered with KEY-SYSTEMS GMBH.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013. The Complaint was submitted in both English and Chinese.
On June 21, 2013, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <chanluusell.com> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH 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 July 1, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 22, 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@chanluusell.com. Also on July 1, 2013, the Chinese language 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 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant owns the CHAN LUU mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029, registered August 3, 2004).
ii. Complainant owns the CHAN LUU mark through numerous trademark registrations world-wide, including registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,350, registered on September 7, 2009).
iii. Complainant uses the CHAN LUU mark in connection with jewelry, clothing, and accessories. Complainant established its jewelry business in 1995, and now has gained international recognition with sales in stores like Bloomingdales, Saks Fifth Avenue, and Isetan.
iv. Complainant has used the website <chanluu.com> since 2006.
i. Policy ¶ 4(a)(i)
1. The <chanluusell.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as the domain merely adds the generic and descriptive term “sell” to the mark. Further, the inclusion of the generic top-level domain (“gTLD”) “.com” is irrelevant.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the subject domain name as the WHOIS record indicates that “wangjincong / wang jincong” is the registrant of the disputed domain. Complainant has not licensed or otherwise authorized Respondent to use the mark.
2. Respondent is not making a bona fide offering of goods or services at the disputed domain name, and has no legitimate interest in the domain. Respondent uses the disputed domain to sell goods directly competing with Complainant’s CHAN LUU goods, specifically, counterfeit CHAN LUU goods. Respondent uses the mark on the resolving page, utilizing the same distinctive orange color and a confusingly similar font to Complainant’s logo.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain to sell counterfeit CHAN LUU goods, which disrupts Complainant’s business and is evidence of bad faith.
2. Respondent uses the disputed domain to sell counterfeit CHAN LUU goods, creating the impression that the disputed domain is affiliated with Complainant. Respondent commercially benefits from the resulting confusion.
3. Respondent’s bad faith is evidenced by Respondent’s actual knowledge of Complainant’s rights in the CHAN LUU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 claims to own the CHAN LUU mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant further claims to own the CHAN LUU mark through numerous trademark registrations world-wide, including registrations with the SAIC (e.g., Reg. No. 5,497,350, registered on September 7, 2009). The Panel finds that Complainant’s trademark registrations with numerous agencies, including the USPTO and SAIC, establishes Complainant’s rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Complainant argues that the <chanluusell.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant contends the disputed domain name merely adds the generic and descriptive term “sell” to the mark. Complainant argues the term “sell” should be deemed descriptive because the CHAN LUU mark is used in connection with selling of jewelry and other fashion accessories. Further, Complainant argues that the inclusion of the gTLD “.com” is irrelevant. The Panel also notes that the disputed domain eliminates the space between Complainant’s CHAN LUU mark. Past panels have determined that the alterations made by Respondent to Complainant’s mark are insufficient to distinguish the disputed domain from the mark. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel found the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found that the elimination of the space between the BOND DIAMOND mark to form the domain <bonddiamond.com> did not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i), nor did the gTLD “.com.” Because the alterations to Complainant’s mark do not sufficiently distinguish the <chanluusell.com> domain name from the CHAN LUU mark, the Panel finds that the disputed domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends Respondent is not commonly known by the subject domain name as the WHOIS record indicates that “wangjincong / wang jincong” is the registrant of the disputed domain. Complainant also contends that it has not licensed or otherwise authorized Respondent to use the mark. Respondent did not submit a Response to refute Complainant’s contentions. 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. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services at the disputed domain name, and has no legitimate interest in the domain. Complainant claims that Respondent uses the disputed domain to sell goods directly competing with Complainant’s CHAN LUU goods, specifically, counterfeit CHAN LUU goods. Complainant also asserts that Respondent uses the CHAN LUU mark on the resolving page, and utilizes the same distinctive orange color and a confusingly similar font to Complainant’s logo. Previous panels have determined that the sale of a complainant’s authentic or counterfeit goods does not constitute as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. 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). Therefore, the Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
Complainant has proven this element.
Complainant argues that Respondent uses the disputed domain to sell counterfeit CHAN LUU goods, which disrupts Complainant’s business. Complainant contends that such disruption is evidence of Respondent’s bad faith. The Panel finds Respondent’s counterfeiting as evidence of Respondent’s bad faith use and registration under Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant argues that Respondent creates the impression that the disputed domain is affiliated with Complainant, and Respondent commercially benefits from the resulting confusion. Complainant asserts that Respondent uses the CHAN LUU mark on the resolving page, and utilizes the same distinctive orange color and a confusingly similar font to Complainant’s logo. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) here because Respondent creates confusion as to Complainant’s association with the disputed domain, all so that Respondent may offer counterfeit CHAN LUU goods to confused Internet users. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant argues that Respondent’s bad faith is further evidenced by Respondent’s actual knowledge of Complainant’s rights in the CHAN LUU mark. Complainant argues that Respondent had actual knowledge as Respondent uses the CHAN LUU mark on the resolving page, utilizes the same distinctive orange color and a confusingly similar font to Complainant’s logo, and sells counterfeit CHAN LUU goods. The Panel finds that Respondent had actual knowledge of Complainant’s rights given Respondent’s use of the CHAN LUU mark and style to offer counterfeit CHAN LUU goods. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <chanluusell.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 26, 2013
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