national arbitration forum

 

DECISION

 

Chan Luu Inc. v. jia ban

Claim Number: FA1307001510227

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

The undersigned certifies that he or she 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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2013; the National Arbitration Forum received payment on July 17, 2013.

 

On July 18, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <japanchanluu.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@japanchanluu.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 Tyrus R. Atkinson, Jr., 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

  1. Complainant alleges:

1.    Complainant owns rights in the CHAN LUU mark in connection with its popular line of jewelry, clothing, and accessories.

2.    Complainant owns registrations for its CHAN LUU mark with the United States Patent and Trademark Office (“USPTO”) as well as with various other locations internationally:

a.    USPTO: Reg. No. 2,869,029 registered August 3, 2004

b.    China’s State Administration for Industry and Commerce (“SAIC”) Reg. No. 5,497,349 registered August 21, 2009

3.    Complainant’s CHAN LUU goods have been extensively featured in editorials and professional photographs.

4.    Complainant diligently protects its rights in its CHAN LUU mark and has prevailed in numerous UDRP proceedings.

5.    Respondent’s <japanchanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.

a.    Respondent’s disputed domain name features Complainant’s CHAN LUU mark in its entirety with the addition of the geographically descriptive term “japan.”

b.    Respondent’s disputed domain name adds the generic top-level domain “.com” to Complainant’s registered mark.

6.    Respondent has no rights or legitimate interests in the <japanchanluu.com> domain name.

a.    Complainant has not licensed Respondent to use its CHAN LUU mark.

b.    Respondent is not making a bona fide offering of goods or services from the website resolving from the <japanchanluu.com> domain name.

c.    Respondent’s <japanchanluu.com> domain name resolves to an inactive website.

d.    Respondent is not commonly known by the <japanchanluu.com> domain name.

                                                                  i.    The WHOIS information lists “jia ban” as the registrant.

                                                                 ii.    Complainant has not given Respondent permission to use its CHAN LUU mark.

e.    Respondent is not making a legitimate noncommercial or fair use of the <japanchanluu.com> domain name.

7.    Respondent has registered and is using the <japanchanluu.com> domain name in bad faith.

a.    Respondent has failed to make an active use of the <japanchanluu.com> domain name.

b.    Respondent was aware of Complainant’s CHAN LUU mark when it registered the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant has rights in its CHAN LUU mark.

2.  Respondent’s <japanchanluu.com> domain name is confusingly similar to Complainant’s mark.

3.  Respondent has no rights to or legitimate interests in the domain name.

4.  Respondent registered and used 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 argues that it has rights in the CHAN LUU mark in connection with its widely-known lines of jewelry, clothing, and accessories. Complainant asserts that it established its CHAN LUU jewelry business in 1995 in California and has been expanding its business over the past 17 years. Complainant claims that its CHAN LUU products are sold around the world through major retailers. Complainant also runs a website located at <chanluu.com>, providing information on its clothing, jewelry, and accessories associated with the CHAN LUU trademark. Complainant asserts that it has rights in the CHAN LUU mark through its many registrations throughout the world. Complainant provides evidence of its registrations in various countries including registrations with the USPTO as well as with SAIC:

USPTO: Reg. No. 2,869,029 registered August 3, 2004

SAIC: Reg. No. 5,497,349 registered August 21, 2009.

Previous panels have found that evidence of a registration in a recognized trademark  authority is sufficient to indicate rights in a given mark. 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).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel concludes that Complainant has rights in the CHAN LUU mark under Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <japanchanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant claims that Respondent’s <japanchanluu.com> domain name features Complainant’s entire CHAN LUU mark with the addition of the geographically descriptive term “japan.” Complainant also claims that Respondent adds the generic top-level domain “.com” to the disputed domain name. Additionally, the Panel notes that the disputed domain name removes the space between words in Complainant’s mark. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark under Policy 4(a)(i). 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 Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel finds that Respondent’s <japanchanluu.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy 4(a)(i).

 

Rights 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 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 contends that Respondent has no rights or interests in the disputed domain name because Respondent is not commonly known by that domain name. Complainant asserts that the WHOIS information for disputed domain name lists “jia ban” as the registrant. Complainant also argues that it has not given Respondent permission to use its CHAN LUU mark. Complainant claims that Respondent is making an unauthorized use of Complainant’s trademark and thus has no rights or legitimate interests in the disputed domain name. Previous panels have found that a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record showing that respondent was commonly known by the domain name as well as a complainant’s assertion that it did not authorize or license the respondent’s use of its mark in 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). The Panel thus concludes that Respondent has no rights or interests in the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain. Complainant asserts that the <japanchanluu.com> domain name does not resolve to an active website. The Panel notes that Complainant submitted a screen shot from Respondent’s resolving website featuring the heading, “The Connection has timed out.” See Exhibit I. Previous panels have found that failure to make an active use of a disputed domain name that is confusingly similar to a complainant’s registered mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the domain name to resolve to an inactive website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii), respectively.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s failure to make an active use of the <japanchanluu.com> domain name indicates bad faith use and registration. Previous panels have found bad faith use and registration under Policy ¶ 4(a)(iii) when a Respondent fails to make an active use of a confusingly similar domain name. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel concludes that Respondent has registered and is using the <japanchanluu.com> domain name in bad faith based on Respondent’s non-use of the domain name.

 

Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the CHAN LUU mark when Respondent registered the disputed domain name. Complainant further argues that the use of Complainant’s entire mark in the disputed domain name along with the geographically descriptive term “japan,” indicate that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <japanchanluu.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <japanchanluu.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 26, 2013

 

 

 

 

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