national arbitration forum

 

DECISION

 

Chan Luu Inc. v. yanminy yanminy

Claim Number: FA1307001509525

PARTIES

Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA.  Respondent is yanminy yanminy (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluusalejapan.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

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 <chanluusalejapan.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@chanluusalejapan.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 13, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

·        Complainant uses the CHAN LUU mark to sell an array of fashion merchandise. Complainant has registered the CHAN LUU mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,869,029 registered on August 3, 2004).

·        Respondent’s <chanluusalejapan.com> domain name adds the generic term “sale” and the geographic term “japan” to Complainant’s mark. The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant.

·        Respondent is not known by this domain name, but is in fact known as “yanminy yanminy.” Complainant has not authorized or permitted Respondent to use the CHAN LUU mark in domain names.

·        Respondent is using the <chanluusalejapan.com> domain name to operate a black market for its counterfeit CHAN LUU goods. The domain name’s landing page uses the CHAN LUU mark excessively to create the impression that the goods sold therein are official CHAN LUU merchandise.

·        Respondent’s sale of counterfeit goods is disrupting Complainant’s legitimate business under the CHAN LUU mark.

·        Respondent is confusing Internet users into believing that these counterfeit goods are Complainant’s own goods—an act of passing off.

·        Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark, as shown through Respondent’s usage of the CHAN LUU mark explicitly in the content pages associated with the domain name. Furthermore, Complainant’s trademark registrations serve as constructive notice of Complainant’s rights in the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the CHAN LUU mark.  Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chanluusalejapan.com> domain name, and that Respondent registered and uses the domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant explains that it uses the CHAN LUU mark to sell an array of fashion merchandise. Complainant has registered the CHAN LUU mark with the USPTO (Reg. No. 2,869,029 registered on August 3, 2004). The USPTO registration is a satisfactory showing of Complainant’s Policy ¶ 4(a)(i) rights, as Respondent also resides in the United States. 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.”).

 

Respondent’s <chanluusalejapan.com> domain name adds the generic term “sale” and the geographic term “japan” to Complainant’s mark. Complainant argues that the addition of the gTLD “.com” is irrelevant. The Panel agrees that the gTLD is not relevant, nor is the removal of the spacing in the CHAN LUU mark. See 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.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).

 

The Panel also holds that the term “sale” does nothing to distinguish the domain name from complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Further, the addition of the term “japan” does not defeat confusing similarity. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). Accordingly, the Panel finds that the <chanluusalejapan.com> domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 contends that Respondent is not known by this domain name, but that Respondent is in fact known as “yanminy yanminy” as noted in the WHOIS information. Complainant notes that it has not authorized or permitted Respondent to use the CHAN LUU mark in domain names. The Panel agrees that the record provides no basis for finding that Respondent was ever commonly known by the <chanluusalejapan.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Complainant also argues that Respondent is using the <chanluusalejapan.com> domain name to operate a black market for its counterfeit CHAN LUU goods. Complainant argues that the domain name’s landing page uses the CHAN LUU mark excessively to create the impression that the goods sold therein are official CHAN LUU merchandise. The domain name resolves to a website wherein Internet users are shown the CHAN LUU mark along with a variety of fashion accessories. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel determined that there was nothing bona fide, nor legitimately noncommercial or fair, about a respondent’s scheme to sell counterfeit goods through a confusingly similar domain name. The Panel agrees that Respondent has neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in the <chanluusalejapan.com> domain name.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent’s sale of counterfeit goods is disrupting Complainant’s legitimate business under the CHAN LUU mark. The domain name’s landing page shows that goods are sold under the CHAN LUU mark for Respondent’s benefit.  Respondent’s sale of counterfeit goods is evidence of intent to register and use this domain name in a Policy ¶ 4(b)(iii) attempt to disrupt Complainant’s business. 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).

 

Complainant also argues that Respondent is confusing Internet users into believing that these counterfeit goods are Complainant’s own goods—an act of passing off.  The evidence supports this assertion and therefore the Panel agrees that Respondent has acted in Policy ¶ 4(a)(iii) bad faith by implying that these illegitimate and counterfeit goods are the official merchandise of Complainant.  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 finally argues that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark, as shown through Respondent’s usage of the CHAN LUU mark explicitly in the content pages associated with the domain name.  The Panel agrees and holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chanluusalejapan.com> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 19, 2013

 

 

 

 

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