Chan Luu Inc. v. liju wu
Claim Number: FA1307001512654
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is liju wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluu-jewellery.com>, registered with GODADDY.COM, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2013; the National Arbitration Forum received payment on July 31, 2013.
On August 1, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluu-jewellery.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 August 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@chanluu-jewellery.com. Also on August 2, 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 September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s < chanluu-jewellery.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant internationally markets and sells high quality jewelry and owns rights in the CHAN LUU mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”), as well as with other countries around the world.
a. USPTO:
i. Reg. No. 2,869,029 registered August 3, 2004
ii. Reg. No. 3,028,982 registered December 13, 2005
iii. Reg. No. 3,314,816 registered October 16, 2007
b. SAIC:
i. Reg. No. 5,497,349 registered August 21, 2009
ii. Reg. No. 5,497,350 registered September 7, 2009
iii. Reg. No. 5,497,351 registered January 14, 2010.
Complainant’s business was established in 1995, and has expanded to include fashion accessories and clothing. Complainant runs its official website from the <chanluu.com> domain name.
Respondent’s domain name features Complainant’s entire CHAN LUU mark with the addition of the descriptive misspelled term “jewellery.” Adding a hyphen to a disputed domain name does not differentiate a disputed domain name from a registered mark. Respondent adds the generic top-level domain (“gTLD”) ”.com” to the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not licensed Respondent to use its CHAN LUU mark. Respondent has no relationship with Complainant. The WHOIS information lists “liju wu” as Respondent. Respondent is hosting a parked page resolving from the disputed domain name. Respondent’s resolving website features links to third-party advertisements. Respondent uses the disputed domain name to resolve to a website used plainly for commercial use. Respondent presumably acquires revenue from its use of the disputed domain name. Respondent uses a confusingly similar domain name to host a parked website. Respondent’s use of the confusingly similar domain name when it has no connection to Complainant’s trademark evidences bad faith. The Panel notes that Respondent’s <chanluu-jewellery.com> domain name was registered on November 12, 2012
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 established the CHAN LUU jewelry business in 1995 in Los Angeles, California and this business is expanding and includes fashion accessories and clothing. Complainant has rights in the CHAN LUU mark through its numerous registrations with the USPTO as well as with China’s SAIC.
USPTO:
Reg. No. 2,869,029 registered August 3, 2004;
Reg. No. 3,028,982 registered December 13, 2005; and
Reg. No. 3,314,816 registered October 16, 2007.
SAIC:
Reg. No. 5,497,349 registered August 21, 2009;
Reg. No. 5,497,350 registered September 7, 2009; and
Reg. No. 5,497,351 registered January 14, 2010.
Providing evidence of a trademark registered with a recognized authority is sufficient to confer rights in the 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).”) The Panel thus finds that Complainant has rights in the CHAN LUU mark under Policy ¶ 4(a)(i).
Respondent’s <chanluu-jewellery.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i). Respondent’s <chanluu-jewellery.com> domain name features Complainant’s entire CHAN LUU mark with the addition of the descriptive misspelled term “jewellery.” Also, Respondent removes all spaces between words, adds a hyphen, and also adds the gTLD “.com” to Complainant’s CHAN LUU 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 Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also 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)). The Panel therefore finds that Respondent’s <chanluu-jewellery.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <chanluu-jewellery.com> domain name because it is not commonly known by it. The WHOIS information for the disputed domain name lists “liju wu” as the registrant. Complainant has not given Respondent authority or permission to use its CHAN LUU mark. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence in the record indicating that respondent was commonly known by the disputed domain name or where complainant has not authorized respondent to use its mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii).
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’s <chanluu-jewellery.com> domain name resolves to a parked website featuring advertisements and links to various third parties from which Respondent presumably acquires revenue. The associated website features links including “Jewelry by Alishan Studio,” “Unique Engagement Rings,” “Shop Laguna Pearls Online,” “Charriol Jewelry USA,” “Fashion Wholesale jewelry,” and “Overstock.com Necklaces.” Previous panels have found that hosting a website featuring links and advertisements that compete or are not associated with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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 therefore finds that Respondent has no rights or legitimate interests in the <chanluu-jewellery.com> domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the <chanluu-jewellery.com> domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Respondent does this by using a confusingly similar domain name to redirect Internet users to a website featuring various links and advertisements, some of which compete with Complainant’s business. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring competing and noncompeting links while collecting revenue from the use represents bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”) The Panel finds that Respondent registered and is using the <chanluu-jewellery.com> domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluu-jewellery.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 19, 2013
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