Chan Luu Inc. v. zhiyuan liu / liu zhilyuan
Claim Number: FA1307001510511
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is zhiyuan liu / liu zhilyuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestchanluu.com>, registered with HiChina Zhicheng Technology Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2013; the National Arbitration Forum received payment on July 18, 2013. The Complaint was submitted in both Chinese and English.
On July 23, 2013, HiChina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <bestchanluu.com> domain name is registered with HiChina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Ltd. has verified that Respondent is bound by the HiChina Zhicheng Technology Ltd. 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 30, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@bestchanluu.com. Also on July 30, 2013, the Chinese language 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 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant claims ownership in the CHAN LUU mark, used in the sale 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 August 3, 2004), and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,497,350 registered September 7, 2009).
Respondent registered the <bestchanluu.com> domain name on October 24, 2012.
This domain name merely adds the generic term “best” to the CHAN LUU mark along with the generic top-level domain (“gTLD”) “.com.”
Respondent is not known by this domain name. Respondent’s name in the WHOIS information is “zhiyuan liu” or alternatively phrased “liu zhilyuan.” Complainant has not otherwise authorized or permitted Respondent to make use of the CHAN LUU mark in domain names.
Respondent is using this <bestchanluu.com> domain name to sell fashion merchandise that competes with Complainant’s CHAN LUU goods. Some of these goods are nothing more than counterfeits of Complainant’s CHAN LUU goods.
Respondent is disrupting Complainant’s business by selling counterfeit CHAN LUU goods.
Respondent creates likelihood that Internet users will confuse the competing and counterfeit merchandise sold through the <bestchanluu.com> domain name with legitimate CHAN LUU mark goods.
Respondent registered the <bestchanluu.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Respondent makes explicit use of the CHAN LUU mark in promoting its goods, and Respondent takes efforts to imitate Complainant’s official websites. Alternatively, Respondent’s bad faith registration is apparent through its constructive notice of Complainant’s trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Chan Luu Inc., owns the CHAN LUU mark, used in the sale 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 August 3, 2004), and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,497,350 registered September 7, 2009).
Respondent, zhiyuan liu / liu zhilyuan, registered the <bestchanluu.com> domain name on October 24, 2012. Respondent is using the <bestchanluu.com> domain name to sell fashion merchandise that competes with Complainant’s CHAN LUU goods. Some of these goods are counterfeits of Complainant’s CHAN LUU goods. Respondent makes explicit use of the CHAN LUU mark in promoting its goods and imitates Complainant’s official websites.
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.”).
Preliminary Issue: Language of Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant has rights in the CHAN LUU mark through its registration with the USPTO and the SAIC. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (evidence of trademark registration with two prominent national registries was sufficient evidence to pass Policy ¶ 4(a)(i)).
Complainant argues that the <bestchanluu.com> domain name merely adds the generic term “best” to the CHAN LUU mark along with the gTLD “.com.” See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (a domain name cannot consist merely of another party’s registered trademark along with a common and generic term). The addition of a gTLD is not relevant to this analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore the Panel finds that the domain name is confusingly similar to the CHAN LUU mark under Policy ¶ 4(a)(i).
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).
Complainant argues that Respondent is not known by this domain name. Complainant notes that Respondent’s name in the WHOIS information is “zhiyuan liu” or alternatively phrased “liu zhilyuan.” Complainant also says that it has not otherwise authorized or permitted Respondent to make use of the CHAN LUU mark in domain names. The Panel finds that Respondent is not commonly known by the <bestchanluu.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant also argues that Respondent is using this <bestchanluu.com> domain name to sell fashion merchandise that competes with Complainant’s CHAN LUU goods. Complainant argues that some of these goods are nothing more than counterfeits of Complainant’s CHAN LUU goods. The <bestchanluu.com> domain name resolves to a website promoting an array of fashion merchandise goods as being CHAN LUU goods. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (when the only purpose of the domain name at issue was to sell goods that were either counterfeits or competing goods, there was no basis for finding a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use). Respondent’s use of the <bestchanluu.com> domain name to sell counterfeit CHAN LUU goods does not give Respondent any rights or legitimate interests under Policy ¶¶ 4(c)(i), (iii).
Complainant argues that Respondent is disrupting Complainant’s business by selling counterfeit CHAN LUU goods. The goods sold through the <bestchanluu.com> domain name are explicitly marketed as CHAN LUU goods. The Panel finds that Respondent registered and is using the domain name in an attempt to disrupt Complainant’s CHAN LUU business through the sale of counterfeit merchandise. 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 claims that Respondent creates a likelihood that Internet users will confuse the competing and counterfeit merchandise sold through the <bestchanluu.com> domain name with legitimate CHAN LUU mark goods. In addition to the presence of the counterfeited merchandise, the domain name’s resolving website features the masthead “CHAN LUU / THE BIGGEST CHOICE ON THE WEB.” See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (Policy ¶ 4(b)(iv) bad faith exists when the respondent was promoting goods and services under the complainant’s mark in an attempt to pass itself off as complainant).
Complainant contends that Respondent registered the <bestchanluu.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Respondent makes explicit use of the CHAN LUU mark in promoting its goods, and Respondent imitates Complainant’s official websites. The Panel finds that Respondent had actual knowledge of Complainant’s mark. The Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestchanluu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 10, 2013
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