Chan Luu Inc. v. dan franks
Claim Number: FA1308001513040
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is dan franks (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluujewelry.org>, registered with eNom, Inc.
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 August 2, 2013; the National Arbitration Forum received payment on August 2, 2013.
On August 5, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluujewelry.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 6, 2013, the Forum served the Complaint and all Annexes, including a 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@chanluujewelry.org. Also on August 6, 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 4, 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 <chanluujewelry.org> 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 uses the CHAN LUU mark in connection with its business of selling fashion accessories, clothing, and jewelry goods. Complainant has extensive trademark rights in its CHAN LUU mark, as illustrated through Complainant’s United States Patent and Trademark Office ("USPTO") trademark registrations (e.g., Reg. No. 3,028,982 registered December 13, 2005; Reg. No. 2,869,029 registered August 3, 2004).
Respondent has registered the confusingly similar <chanluujewelry.org> domain name which merely adds the descriptive term “jewelry” and the generic top-level domain (“gTLD”) “.org” to the domain. Thus, there is no meaningful distinction between the mark and the domain name. Respondent is not known by the <chanluujewelry.org> domain name because the WHOIS information lists “dan franks” as the registrant. Complainant has not licensed, authorized, or permitted Respondent to use the CHAN LUU mark for Respondent’s own purposes in domain names. Respondent uses the <chanluujewelry.org> domain name to offer goods in direct competition to those goods sold under the CHAN LUU mark. Some of these goods are believed to be counterfeit CHAN LUU goods. Respondent amplifies the similarity between its goods and CHAN LUU goods by mimicking Complainant’s website templates and using the CHAN LUU mark explicitly throughout this domain name’s resolving websites. Respondent capitalizes on a likelihood that Internet users will confuse Complainant and the CHAN LUU mark as the source or origin of the competing and potentially counterfeit goods sold through the <chanluujewelry.org> domain name’s website and reaps a commercial gain when these confused Internet users purchase these goods expecting to receive CHAN LUU goods. Respondent is knowingly infringing on Complainant’s CHAN LUU mark by making explicit use of the CHAN LUU mark in promoting and soliciting the competing and counterfeited goods sold through the <chanluujewelry.org> domain name. Respondent had constructive notice of Complainant’s registration of the CHAN LUU mark with various national trademark registrars when it registered the <chanluujewelry.org> domain name on January 25, 2013.
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 uses the CHAN LUU mark in connection with its business of selling fashion accessories, clothing, and jewelry goods. Complainant owns extensive trademark rights in its CHAN LUU mark, as illustrated through Complainant’s USPTO trademark registrations (e.g., Reg. No. 3,028,982 registered December 13, 2005; Reg. No. 2,869,029 registered August 3, 2004). Previous panels have found USPTO registration to be sufficient evidence of a complainant’s rights in a trademark. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). Complainant has illustrated that it has Policy ¶ 4(a)(i) rights in the CHAN LUU mark, and that these rights are more persuasive due to the fact that Respondent is also located in the United States.
The domain name adds the descriptive term “jewelry” and the gTLD “.org” to the domain name, and thus there is no meaningful distinction between the mark and the domain name. The domain name is also devoid of any spacing, but neither spacing nor the addition of the gTLD are relevant to this analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel agreed that the confusing similarity of a domain name is amplified when the terms added to the mark merely describe the goods or services that are provided under said mark. Accordingly, the <chanluujewelry.org> domain name is confusingly similar to the 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 is not known by the <chanluujewelry.org> domain name because the WHOIS information lists “dan franks” as the registrant. Complainant has not licensed, authorized, or permitted Respondent to use the CHAN LUU mark for Respondent’s own purposes in domain names. Previous panels have refused to find that a respondent is commonly known by a domain name unless there is some evidence in the record to support such a finding. 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). Since Respondent has failed to provide a Response to this proceeding, and because the WHOIS information simply lists “dan franks” as the registrant, there is no basis for finding that Respondent is commonly known by the <chanluujewelry.org> domain name under Policy ¶ 4(c)(ii).
Respondent uses the <chanluujewelry.org> domain name to offer goods in direct competition to those goods sold under the CHAN LUU mark. Complainant states that some of these goods are believed to be counterfeit CHAN LUU goods. Respondent amplifies the similarity between its goods and CHAN LUU goods by mimicking Complainant’s website templates and using the CHAN LUU mark explicitly throughout this domain name’s resolving websites. The <chanluujewelry.org> domain name resolves to a website featuring an online store selling bracelets under the CHAN LUU mark. In Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), the panel refused to find a Policy ¶ 4(c)(i) bona fide offering when a commercial website was being used to promote goods that were counterfeits of the complainant’s merchandise, and sold in direct competition with the complainant’s legitimate business. There is no basis for finding that the sale of competing counterfeits to Internet users constitutes a Policy ¶ 4(c)(i) bona fide offering of goods or services.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent seeks to unfairly disrupt Complainant’s business by selling counterfeited and competing CHAN LUU goods through the <chanluujewelry.org> domain name’s website. Respondent’s <chanluujewelry.org> domain name features the CHAN LUU mark explicitly in the connection with the solicitation of fashion goods, namely bracelets. In Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel found that it could infer bad faith through commercial disruption on the part of the respondent when the domain name was being used to sell counterfeits under the complainant’s own mark. The Panel here finds that Respondent’s unpermitted sale of fashion goods under the CHAN LUU mark illustrates Policy ¶ 4(b)(iii) bad faith through the disruption of Complainant’s legitimate CHAN LUU business.
Respondent capitalizes on a likelihood that Internet users will confuse Complainant and the CHAN LUU mark as the source or origin of the competing and counterfeit goods sold through the <chanluujewelry.org> domain name’s website. Respondent reaps a commercial gain when confused Internet users purchase these goods expecting to receive CHAN LUU goods. These facts provide a basis for finding that Respondent has acted so as to capitalize on a Policy ¶ 4(b)(iv) bad faith attempt to confuse Internet users into believing that Complainant is the source or origin of these counterfeit goods. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Respondent is knowingly infringing on Complainant’s CHAN LUU mark. Respondent makes explicit use of the CHAN LUU mark in promoting and soliciting the competing and counterfeited goods sold through the <chanluujewelry.org> domain name. Respondent had constructive notice of Complainant’s registration of the CHAN LUU mark with various national trademark registrars. Although some panels have not regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(ii) 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 <chanluujewelry.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 7, 2013
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