Chan Luu Inc. v. CHAN LUU / Tarbuck Debra / CHAN LUU / Hunter Shaaron / Isene Anne / CHAN LUU / Chan Luu / Cantin Kristen
Claim Number: FA1307001510686
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is CHAN LUU / Tarbuck Debra / CHAN LUU / Hunter Shaaron / Isene Anne / CHAN LUU / Chan Luu / Cantin Kristen (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluustoreonline.com>, <chanluustore.net>, <chanluustore.org>, and <chanluustores.com>, registered with 1API GmbH.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2013; the National Arbitration Forum received payment on July 19, 2013.
On July 25, 2013, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <chanluustoreonline.com>, <chanluustore.net>, <chanluustore.org>, and <chanluustores.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 29, 2013, the Forum served the 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@chanluustoreonline.com, postmaster@chanluustore.net, postmaster@chanluustore.org, postmaster@chanluustores.com. Also on July 29, 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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 a formal response from Respondent. Panel notes here that an informal communication was received by the Forum which is discussed below.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CHAN LUU and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, on August 2, 2013 an attorney claiming to represent the holder of the <chanluustoreonline.com> domain name wrote to the Forum, claiming that his client did not register this particular domain name. He goes on to suggest that his client was the victim of identity theft.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a well-known jewellery and fashion designer which has used the name CHAN LUU as a trademark since 1995.
2. Complainant owns, inter alia, United States Trademark Reg. No. 2,869,029 registered August 3, 2004 for CHAN LUU.
3. The disputed domain names were registered on the following dates:
<chanluustoreonline.com>, registered March 13, 2013.
<chanluustore.net>, registered April 24, 2013.
<chanluustore.org>, registered May 11, 2013.
<chanluustores.com>, registered May 28, 2013.
4. Either directly or indirectly, the domain names bring Internet users to a website that offers goods in competition with Complainant.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary issue No. 1: multiple respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. The evidence is that the domain names <chanluustoreonline.com>, <chanluustore.net>, <chanluustore.org>, and <chanluustores.com> resolve to a website which corresponds with the <chanluustores.com> domain name. Complainant accordingly reasons that a single entity is using a number of assumed identities and addresses.
In the absence of a Response and subject to the further comments under the next section of this decision, Panel finds that Complainant has presented sufficient evidence that, for the purposes of paragraph 3(c) of the Rules, the disputed domain names are controlled by the one entity. Hereinafter, the term “Respondent” is used to refer collectively to the registrants of the disputed domain names.
Preliminary Issue No. 2: claim of identity theft
Informal correspondence received by the Forum on behalf of the owner of <chanluustoreonline.com> contends that the owner was the victim of identity theft. It is contended that through credit card purchases made from various Chinese companies, the owner’s personal detail were appropriated and misused.
Panel is not sufficiently satisfied of that claim so as to act otherwise than in accordance with the Policy. There was no formal Response. The informal submission was made on behalf of the owner of only one of the disputed domain names. There is no extrinsic evidence to support the claim of identity theft.
Primary issues
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 (seeVertical 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).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in CHAN LUU (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Panel is also satisfied that each of the disputed domain names is confusingly similar to Complainant’s trademark. The disputed domain names take the trademark and add non-distinctive elements – namely, one or other of the gTLDs, “.net”, “.com” or “.org” and the descriptive terms “store,” “stores,” and “online “sale” none being added matter which distinguishes the domain names from the trademark in any significant way so as to avoid confusion (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; see also Luby’s Fuddruckers Restaurants, LLC. v. Paydues, Inc., FA 1421339 (Nat. Arb. Forum Feb. 7, 2012 involving <fuddruckersfranchise.net> ; see further Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in relation to each of the domain names in dispute.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as the names of individuals combined in each case with the CHAN LUU name. Complainant alleges that the WHOIS information lists various fictitious or misappropriated identities. Panel can discover no evidence that Respondent might be commonly known by any of the disputed domain names and regards that inclusion of Complainant’s name and trademark in the WHOIS information as a transparent ruse aimed at creating some form of interest in the names. In the absence of a Response there is no other support such a connection. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Panel notes that the domain names all resolve to a website corresponding with the <chanluustores.com> domain name where it is alleged by Complainant that counterfeit goods bearing the Complainant’s CHAN LUU trademark are offered for sale. There is no direct evidence that the goods are not those put on the market with the approval of Complainant however the lack of a Response and the multiple registrations create a rebuttable inference that the goods sold there are counterfeit copies of Complainant’s goods (see Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007; see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) which held that the respondent’s use of the disputed domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the disputed domain name to divert Internet users to a website whose offered services were in competition with complainant’s offered services).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not rebutted and so Panel finds that Respondent has no rights or interests in any of the disputed domain names and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds it unnecessary to examine Complainant’s submissions relative to paragraph 4(b)(iii) above since it agrees with the more elementary submission that Respondent’s actions also fall under paragraph 4(b)(iv).
In particular, Panel has already found the disputed domain names to all be confusingly similar to Complainant’s trademark. All resolve, directly or indirectly, to a common website which is clearly commercial in nature. The inference of the whole of the evidence is that the goods on offer there are not made or marked by Complainant. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
Panel finds bad faith use and registration of all of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluustoreonline.com>, <chanluustore.net>, <chanluustore.org>, and <chanluustores.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 8, 2013
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