Chan Luu Inc. v. fe se
Claim Number: FA1307001509521
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is fe se (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braceletchanluu.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2013; the National Arbitration Forum received payment on July 12, 2013.
On July 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <braceletchanluu.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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@braceletchanluu.com. Also on July 17, 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 August 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <braceletchanluu.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., owns the exclusive rights to the 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 is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant is also the owner of trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009).
The domain name at issue features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name, and merely adds the descriptive term “bracelet” to Complainant’s CHAN LUU mark. Likewise, the addition of a generic top-level domain (“gTLD”) such as “.com” to portions of the subject domain name is irrelevant to the confusing similarity analysis. Respondent is not commonly known by the subject domain name. Respondent uses the subject domain name <braceletchanluu.com> to sell goods directly competing with Complainant’s CHAN LUU goods. Respondent excessively uses Complainant’s CHAN LUU mark throughout its website associated with the domain name at issue. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods. Respondent registered the subject domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark as evidenced by Respondent’s explicit use of the CHAN LUU mark. Respondent registered the <braceletchanluu.com> domain name on April 19, 2013.
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 owns the exclusive rights to the 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 is the owner of trademark registrations with the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant is also 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). Because Respondent appears to reside in China, Complainant’s registration of the CHAN LUU mark with China’s SAIC and the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The <braceletchanluu.com> domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name, and merely adds the descriptive term “bracelet” to Complainant’s CHAN LUU mark. Respondent’s inclusion of a descriptive term does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Likewise, the addition of a gTLD such as “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis. Respondent removes the spaces in Complainant’s CHAN LUU mark for its <braceletchanluu.com> domain name. Respondent’s addition of a gTLD and removal of a space is irrelevant to a Policy ¶ 4(a)(i) analysis. 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)). Accordingly, Respondent’s <braceletchanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the <braceletchanluu.com> domain name. Respondent’s name, as listed in the WHOS information, is “fe se.” Additionally, Complainant has not given Respondent permission to use its CHAN LUU mark. Prior panels have held that a respondent failed to establish rights and legitimate interests in the disputed domain name where respondent was not authorized to register the domain name and failed to submit additional evidence that it was commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Thus, Respondent is not commonly known by the <braceletchanluu.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <braceletchanluu.com> domain name to sell goods directly competing with Complainant’s CHAN LUU goods which are counterfeit CHAN LUU goods. Respondent’s use of the <braceletchanluu.com> domain name to sell competing or counterfeit CHAN LUU goods is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) 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).
Respondent extensively uses Complainant’s CHAN LUU mark throughout its website associated with the disputed domain name. Respondent prominently displays Complainant’s CHAN LUU mark in the distinctive orange color and confusingly similar font both at the top and title bar of its website. Respondent’s use of the <braceletchanluu.com> domain name to attempt to pass itself off as Complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent uses the <braceletchanluu.com> domain name to sell counterfeit CHAN LUU goods. In Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel held 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. Therefore, Respondent’s use of the <braceletchanluu.com> domain name disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii).
Registration and commercial use of a domain name that is confusingly similar to Complainant’s mark to redirect Internet users to a website which offers goods in direct competition to Complainant’s goods satisfies the requirements of Policy ¶ 4(b)(iv). As noted previously, Respondent is using the disputed domain name to sell counterfeit CHAN LUU jewelry and accessories. Respondent presumably commercially gains from its sale of counterfeit CHAN LUU goods. The Panel therefore finds that Respondent’s use of the <braceletchanluu.com> domain name to commercially gain from the sale of counterfeit CHAN LUU goods constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See also 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).
Additionally, Respondent’s website associated with the <braceletchanluu.com> domain name displays Complainant’s CHAN LUU mark. Accordingly, Respondent’s use of the disputed domain name to pass itself off as Complainant demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv). 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.”).
Respondent registered the <braceletchanluu.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. 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. Therefore, based upon Respondent’s explicit use of the CHAN LUU mark on its own website, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine 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").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <braceletchanluu.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 15, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page