national arbitration forum

 

DECISION

 

Chan Luu Inc. v. huang xiansheng

Claim Number: FA1307001511249

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chan-luu-website.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN.

 

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2013; the National Arbitration Forum received payment on July 23, 2013. The Complaint has now been submitted in both Chinese and English.

 

On July 24, 2013, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <chan-luu-website.com> domain name is registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN and that Respondent is the current registrant of the name.  BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN has verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN 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 August 5, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 26, 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@chan-luu-website.com.  Also on August 5, 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 September 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.

 

Panel Note:  Language of the Proceedings

The Panel notes that 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.

 

PARTIES' CONTENTIONS

A. Complainant

a)    Complainant contends it has rights in the CHAN LUU mark, used in connection with fashion accessories and clothing. Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004) and with the State Administration for Industry and Commerce of the People's Republic of China  (“SAIC”) (e.g., Reg. No. 5,497,349 registered Aug. 21, 2009).

b)    Complainant has been using the CHAN LUU mark since at least 1995, and its products are currently sold in major retail stores around the world. Complainant’s mark has been reprinted in many newspaper and magazine articles. See Complainant’s Exhibits B-D.

c)    Respondent’s <chan-luu-website.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. The disputed domain name includes Complainant’s mark in its entirety while also adding the generic term “website.” Additionally, the disputed domain name includes hyphens and the generic top-level domain (“gTLD”) “.com.”

d)    Respondent does not have any rights or legitimate interests in the <chan-luu-website.com> domain name.

a.    Respondent is not commonly known by the disputed domain name, and the WHOIS record lists “huang xiansheng” as the domain name registrant. Further, Complainant has not authorized Respondent to use its CHAN LUU mark in any way.

b.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent is using the <chan-luu-website.com> domain name to sell goods that directly compete with the goods Complainant offers under its CHAN LUU mark, including  many counterfeit goods. See Complainant’s Exhibit H.

e)    Respondent has registered and is using the <chan-luu-website.com> domain name in bad faith.

a.    Respondent is using a confusingly similar domain name to sell goods directly competing with those of Complainant for Respondent’s own commercial gain. See Complainant’s Exhibit H.

b.    Respondent is disrupting Complainant’s business by selling goods in direct competition with Complainant. See Complainant’s Exhibit H.

c.    Respondent had knowledge of Complainant’s CHAN LUU mark at the time Respondent registered the <chan-luu-website.com> domain name. Complainant points to Respondent’s explicit use of the CHAN LUU mark and Complainant’s trademark registrations throughout the world as evidence to support this claim. See Complainant’s Exhibit G.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is Chan Luu Inc. which list its address as Los Angeles, CA, USA. Complainant indicates that it began its business in 1995 and has used its CHAN LUU trademark for over 17 years in connection with jewelry, clothing, and accessories. Complainant operates showrooms in Los Angeles and New York City and additionally sells its products throughout the world via major retail stores. Complainant also operates its own official website at <chanluu.com>.

 

Respondent is Huang Xiansheng who lists its address as what appears to be Fujian, China. Respondent’s registrar list its address as Bejing, China. The <chan-luu-website.com> domain name was registered on or about April 2, 21013.

 

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 contends it has rights in the CHAN LUU mark, used in connection with fashion accessories and clothing. Complainant states it is the owner of registrations with the USPTO (e.g., Reg. No. 2,869,029 registered Aug. 3, 2004) and with China’s SAIC (e.g., Reg. No. 5,497,349 registered Aug. 21, 2009). The Panel finds that Complainant has rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i). 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).”).  

Complainant claims Respondent’s <chan-luu-website.com> domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant states that the disputed domain name includes Complainant’s mark in its entirety while also adding the generic term “website.” Additionally, Complainant notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com,” as well as two hyphens. The Panel finds that the addition of the generic term “website” does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Additionally, the Panel finds that the addition of hyphens and a gTLD are irrelevant in regard to confusingly similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel holds that Respondent’s <chan-luu-website.com> domain name is confusingly similar to Complainant’s CHAN LUU mark for the purposes of Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes that 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). The Complainant has met this burden.

 

Complainant claims that Respondent does not have any rights or legitimate interests in the <chan-luu-website.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and the WHOIS record lists “huang xiansheng” as the domain name registrant. Further, Complainant contends it has not authorized Respondent to use its CHAN LUU mark in any way. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Because Respondent was not authorized by Complainant to use the CHAN LUU mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <chan-luu-website.com> domain name within the meaning of Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent is using the <chan-luu-website.com> domain name to sell goods that directly compete with Complainant’s goods, including  many counterfeit goods. See Complainant’s Exhibit H. Past panels have found that such conduct resulting in direct competition does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). Further, in Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), the panel found that the respondent’s use of a confusingly similar domain name to sell counterfeit goods was not a bona fide offering of goods or services. The Panel finds that Respondent’s use of the <chan-luu-website.com> domain name to sell directly competitive goods, including many counterfeit goods, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant claims Respondent has registered and is using the <chan-luu-website.com> domain name in bad faith. Complainant contends that Respondent is disrupting Complainant’s business by selling goods which directly compete with those offered by Complainant, as well as what appear to be counterfeit versions of Complainant’s CHAN LUU-branded products. See Complainant’s Exhibit H. Past panels have found such conduct to be in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) The Panel finds that Respondent’s use of the <chan-luu-website.com> domain name to sell goods in direct competition with Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iii).

 

Complainant asserts that Respondent is using a confusingly similar domain name to sell goods directly competing with those of Complainant for Respondent’s own commercial gain. See Complainant’s Exhibit H. Past panels have found such conduct to be in bad faith pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and is using the <chan-luu-website.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to sell goods in direct competition with Complainant for Respondent’s own commercial gain. 

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chan-luu-website.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                       Darryl C. Wilson, Panelist

                                       Dated: September 17, 2013

 

 

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