Chan Luu Inc. v. ding nan
Claim Number: FA1307001511845
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is ding nan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuforjapan.com>, registered with GODADDY.COM, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2013; the National Arbitration Forum received payment on July 26, 2013.
On July 29, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuforjapan.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 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@chanluuforjapan.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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered this <chanluuforjapan.com> domain name on February 20, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CHAN LUU mark.
2. Respondent’s <chanluuforjapan.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.
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.”).
Complainant claims ownership in the CHAN LUU mark, used in the sale of fashion merchandise. Complainant states that it has registered the CHAN LUU mark with the USPTO (e.g., Reg. No. 2,869,029 registered August 3, 2004) and with China’s SAIC (e.g., Reg. No. 5,497,350 registered September 7, 2009). In Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009), the panel agreed that evidence of trademark registration with two prominent national registries was sufficient evidence to pass Policy ¶ 4(a)(i). The Panel here agrees that Complainant’s showing of USPTO and SAIC registration is convincing evidence of Policy ¶ 4(a)(i) rights in the mark, especially when Respondent dwells in China.
Complainant next argues that Respondent has registered the <chanluuforjapan.com> domain name. Complainant explains that this domain name merely adds the generic term “for” and the geographic term “japan” to the CHAN LUU mark along with the gTLD “.com.” The Panel agrees that 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). In Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) the panel found that a domain name cannot consist merely of another party’s registered trademark along with a common and generic term. Furthermore the panel in Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) determined that the names and abbreviation of countries are not sufficient additions to a domain name so as to defeat the name’s confusing similarity. Moreover, the Panel determines that Respondent’s elimination of the space between terms in Complainant’s CHAN LUU mark does not affect the confusingly similar analysis. 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)). Therefore the Panel concludes 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); 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 argues that Respondent is not known by this <chanluuforjapan.com> domain name. Complainant notes that Respondent’s name in the WHOIS information is “ding nan.” Complainant also attests that it has not otherwise authorized or permitted Respondent to make use of the CHAN LUU mark in domain names. The Panel here agrees that Respondent cannot be commonly known by the <chanluuforjapan.com> domain name under Policy ¶ 4(c)(ii) when there is nothing in the record to support such a result. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is not making any active use of this <chanluuforjapan.com> domain name. The Panel notes that the record supports this contention, and it appears the domain name resolves to an error message screen prompted by the Internet user’s web browser. See Complainant’s Ex. I. The Panel finds that Respondent’s failure to make any active use of this domain name suggests that Respondent has made neither a Policy ¶ 4(c)(i) bona fide use nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use planned of this 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)); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Complainant claims that Respondent’s failure to make an active use of the <chanluuforjapan.com> domain name is enough to establish Policy ¶ 4(a)(iii) bad faith for purposes of the Policy. The Panel notes that the domain name does not in fact resolve to any active website. See Complainant’s Ex. I. The Panel agrees that Respondent’s bad faith use and/or registration may be inferred from the fact that Respondent registered this confusingly similar domain name and has yet to put the domain name to any substantive commercial or noncommercial use. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant finally asserts that Respondent registered the <chanluuforjapan.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Complainant claims that Respondent would not have independently devised the terms “chan luu” in a domain name that happens to market the same types of goods sold by Complainant under the CHAN LUU mark. Alternatively, Complainant believes that Respondent’s bad faith registration is apparent through its constructive notice of Complainant’s trademark registrations. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuforjapan.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 9, 2013
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