national arbitration forum

 

DECISION

 

Chan Luu Inc. v. Supawadee WAN

Claim Number: FA1307001509977

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluujewellery.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.

 

On July 17, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluujewellery.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 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@chanluujewellery.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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:

Complainant uses the CHAN LUU to market and sell 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 <chanluujewellery.com> domain name is confusingly similar to the CHAN LUU mark. Respondent adds the descriptive term “jewellery” and the generic top-level domain (“gTLD”) “.com” to the registered trademark.

Policy ¶ 4(a)(ii)

 

Respondent is not known by the <chanluujewellery.com> domain name, rather it is known as “Supawadee WAN.” Respondent is using the <chanluujewellery.com> domain name to run an online store that sells competing goods, including counterfeit CHAN LUU merchandise.

 

Respondent is disrupting Complainant’s business by selling off counterfeit CHAN LUU goods. Respondent seeks to confuse Internet users into associating the counterfeit products sold on the domain name’s website with legitimate CHAN LUU merchandise.

 

Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when registering the <chanluujewellery.com> domain name on November 12, 2012.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations with the USPTO for its CHAN LUU mark.

 

Complainant’s trademark rights in CHAN LUU predate Respondent’s registration of the at-issue domain name.

 

The WHOIS information for the at-issue domain name identifies “Kelvin Smith” as the registrant.

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent uses the at-issue domain name to run an online store that sells competing goods, including counterfeit CHAN LUU merchandise.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant established rights in the CHAN LUU mark under Policy ¶ 4(a)(i) through its registration of said mark with the USPTO. 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.”).

 

In forming the at issue domain name Respondent adds the descriptive term “jewellery,” a misspelling of “jewelry,” to Complainant’s CHAN LUU mark less its space, and then appends the top level domain name “.com” thereto.  The addition of a generic top-level domain and removal of the space between CHAN and LAU has no impact on the Panel’s analysis under Policy ¶4(a)(i). Further, the addition of the term “jewellery” only enhances confusing similarity as “jewellery” (jewlery) suggests Complainant’s merchandise.  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)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel therefore concludes that Respondent’s <chanluujewellery.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

The WHOIS information for the at-issue domain names identifies the domain name registrant as “Supawadee WAN” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <chanluujewellery.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <chanluujewellery.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

The at-issue domain name redirects visitiors to a website addressed by the <tanglongjewelry.com> domain name wherein Respondent operates an online store selling a variety of different fashion accessories, including CHAN LUU goods. Respondent’s use of the <chanluujewellery.com> domain name to sell competing goods along with unauthorized CHAN LUU merchandise is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (finding that a respondent had no bona fide or legitimate interest in maintaining an infringing domain name that resolved to a respondent’s own business of selling off related and competing goods).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).

 

First, Respondent’s use of the confusingly similar domain name to promote competing and counterfeit goods is an act of bad faith use and registration under Policy ¶ 4(b)(iii), as this conduct disrupts Complainant’s business. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); 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).

 

Second, Respondent creates consumer confusion by using the confusingly similar domain name to lead Internet users, mistaken in their belief that they will find Complainant, to Respondent’s website where competing and counterfeit products are offered.  These circumstances demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).

 

Additionally, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluujewellry.com> domain name.  Respondent’s prior knowledge is evident from the fact that Respondent offers competing and counterfeit products for sale on the website ultimately reached through the at-issue domain name.  Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to 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).

 

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 <chanluujewellery.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated:  August 15, 2013

 

 

 

 

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