Chan Luu Inc. v. lucky liao
Claim Number: FA1307001509674
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is lucky liao (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onlinechanluu.com>, registered with GoDaddy.com, LLC.
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 July 15, 2013; the National Arbitration Forum received payment July 15, 2013.
On July 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <onlinechanluu.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 July 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@onlinechanluu.com. Also on July 18, 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 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.
Complainant makes the following allegations in this proceeding:
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). See Complainant’s Exhibit F.
ii. Complainant owns the CHAN LUU mark through numerous trademark registrations worldwide, including registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,350, registered September 7, 2009). See Complainant’s Exhibit E.
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 <onlinechanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as the domain merely adds the generic and descriptive term “online” 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 “lucky liao” 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 in competition with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. See Complainant’s Exhibit G screen captures of Respondent’s website and Complainant’s Exhibit H for screen captures of Complainant’s website.
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 is passing itself off as Complainant, creating further confusion as to the affiliation of Complainant with the disputed domain.
4. Respondent’s bad faith is evidenced by Respondent’s actual knowledge of Complainant’s rights in the CHAN LUU mark.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 to 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 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). See Complainant’s Exhibit F. Further, Complainant 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 September 7, 2009). See Complainant’s Exhibit E. In Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) the panel found that “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 . . .”. Similarly, the Panel finds that Complainant’s worldwide registrations, including registrations with the USPTO and the SAIC, establish Complainant’s rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <onlinechanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as the domain merely adds the generic and descriptive term “online” to the mark. Further, Complainant asserts that the inclusion of the gTLD “.com” is irrelevant. Previous panels have consistently found that the addition of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Previous panels have also consistently found confusing similarity where a respondent adds a generic or descriptive term to the complainant’s mark. Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) is on point as the respondent there also added the term “online” to the complainant’s BROADCOM mark. The Broadcom panel found the <broadcomonline.com> domain name to be confusingly similar to the complainant’s BROADCOM mark. Similarly, the Panel finds that the <onlinechanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark, as Respondent’s elimination of the space between words in Complainant’s mark is irrelevant for Policy ¶ 4(a)(i) purposes. 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)).
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the subject domain name as the WHOIS record indicates that “lucky liao” is the registrant of the disputed domain. Further, Complainant contends that Complainant has not licensed or otherwise authorized Respondent to use the mark. The Panel notes that Respondent has not submitted a Response to refute Complainant’s contentions. Given the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further 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 alleges that Respondent uses the disputed domain to sell goods directly in competition with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. See Exhibit G for screen captures of Respondent’s website and Exhibit H for screen captures of Complainant’s website. Previous panels have determined that the sale of a complainant’s authentic or counterfeit goods does not constitute 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, this Panel similarly finds in this case 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.
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 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 notes that Complainant includes screen captures from Respondent’s webpage in Exhibit G, which shows that Respondent is using the domain to sell counterfeit CHAN LUU goods. Complainant also includes screen captures of its own CHAN LUU website in Exhibit H for comparison. The Panel finds that Respondent’s counterfeiting is 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 uses the disputed domain to sell counterfeit CHAN LUU goods, creating the impression that the disputed domain is affiliated with Complainant, and that Respondent commercially benefits from the resulting confusion. The Panel recalls that Complainant’s Exhibits G and H include screen captures of Respondent’s and Complainant’s pages, respectively, and substantiate Complainant’s assertion that Respondent is selling counterfeit CHAN LUU goods. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent creates confusion as to Complainant’s association with the disputed domain, so that Respondent may offer counterfeit CHAN LUU goods. See 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).
Similarly, Complainant argues that Respondent is passing itself off as Complainant, creating further confusion as to the purported affiliation of Complainant with the disputed domain. Complainant includes screen captures of Respondent’s webpage for comparison with Complainant’s authentic page. See Complainant’s Exhibits G and H. Previous panels have found evidence of bad faith where a respondent passes itself off as a complainant for commercial benefit. 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.”). The Panel finds that Respondent’s activity reaches the level of passing off and the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 is using the confusingly similar domain name to sell counterfeit CHAN LUU goods and that this indicates that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights given Respondent’s use of the CHAN LUU mark to offer counterfeit CHAN LUU goods. Therefore, the Panel finds evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). 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").
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 <onlinechanluu.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 23, 2013.
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