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national arbitration forum

 

DECISION

 

Chan Luu Inc. v. PrivacyProtect.org / Domain Admin

Claim Number: FA1308001516364

 

PARTIES

Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA.  Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chanluufashion.com>, registered with Shanghai Yovole Networks, Inc.

 

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 August 23, 2013; the National Arbitration Forum received payment on August 23, 2013.

 

On August 27, 2013, Shanghai Yovole Networks, Inc. confirmed by e-mail to the National Arbitration Forum that the <chanluufashion.com> domain name is registered with Shanghai Yovole Networks, Inc. and that Respondent is the current registrant of the name.  Shanghai Yovole Networks, Inc. has verified that Respondent is bound by the Shanghai Yovole Networks, 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 September 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@chanluufashion.com.  Also on September 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 30, 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.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant established a jewelry business in 1995, and has grown to expand its business to include fashion accessories and clothing, which are sold throughout the world in major retail stores. Complainant has operated a website accessible at the <chanluu.com> domain name since 2006, which provides information on Complainant’s products sold under the CHAN LUU mark, as well as retail store services. Complainant has made extensive use of the CHAN LUU mark by advertising in a variety of media, and has been featured numerous times in fashion editorials and magazines. Complainant registered the CHAN LUU mark with numerous trademark authorities globally, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,869,029 registered August 3, 2004), the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 956,354 registered September 28, 2006), and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349 registered August 21, 2009). See Complainant’s Exhibit E.

 

Respondent registered the <chanluufashion.com> domain name, which includes the entire CHAN LUU mark, rendering the domain name confusingly similar to the mark. Respondent is not commonly known by the disputed domain name, based on evidence in the WHOIS information that suggests otherwise. Respondent has plainly made a commercial use of the domain name, as the resolving website hosts a commercial operation which sells goods directly competing with Complainant’s business. Respondent registered and is using the disputed domain name to disrupt Complainant’s business and to make a commercial profit for its own purposes. Respondent displays Complainant’s mark at the resolving website, which includes many visual similarities with Complainant, including protected photographs. Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluufashion.com> domain name.

 

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 PrivacyProtect.Org/Domain Admin of Queensland, Australia. Respondent’s registrar’s address is listed as Shanghai, China. Respondent       registered the <chanluufashion.com> domain name on July 23, 2012.

 

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 claims that its trademark registrations for the CHAN LUU mark with the USPTO (e.g., Reg. No. 2,869,029 registered August 3, 2004), the MIIP (e.g., Reg. No. 956,354 registered September 28, 2006), and the SAIC (e.g., Reg. No. 5,497,349 registered August 21, 2009), are evidence of its rights in the mark in satisfaction of the Policy. The panel in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), held that the complainant had established rights in its claimed mark through its holding of several trademark registrations throughout the world. The Panel here finds that by providing evidence of its multiple trademark registrations, Complainant’s rights in its CHAN LUU mark prevail under Policy ¶ 4(a)(i), despite Respondent’s residence in Australia. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that the <chanluufashion.com> domain name is confusingly similar to the CHAN LUU mark, as the dominant portion of the domain name features Complainant’s mark in its entirety, adding only the descriptive word “fashion.” Complainant claims that it uses the CHAN LUU mark extensively in connection with fashion accessories, which strongly supports a finding of confusing similarity between the mark and the domain name at issue. The panel in Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004), stated that the disputed domain names were confusingly similar to the complainant’s mark, as each domain name included the mark in its entirety, while adding descriptive terms which described the complainant’s business. Complainant also alleges that the addition of the generic top-level domain (“gTLD”) “.com” is insufficient to avoid a finding of confusing similarity. Previous panels have agreed that a gTLD added to a mark fails to distinguish a domain name from a mark. 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.”).

 

The Panel finds that the <chanluufashion.com> domain name omits the space between the words of Complainant’s mark, and that spacing left out of a mark in a domain name does not remove confusing similarity. 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)). The Panel concludes that the <chanluufashion.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 argues that Respondent is not commonly known by the <chanluufashion.com> domain name, citing Respondent’s lack of license or legal relationship with Complainant that would entitle Respondent to use the CHAN LUU mark. The Panel notes that the WHOIS information identifies the registrant as “PrivacyProtect.org / Domain Admin.” The Panel finds the WHOIS information persuasive, as well as Complainant’s claim that Respondent has no permission to use the mark in a domain name, and concludes that Respondent cannot be commonly known by the <chanluufashion.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant states that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chanluufashion.com> domain name, due to Respondent’s use of the resolving website to sell both competing goods and counterfeit goods. Complainant submits Exhibit G as evidence, showing Respondent’s use of the domain name, which includes photographs showing bracelets for sale. The Panel finds that by offering products for sale by competing entities, and counterfeit products, Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).

 

Complainant further contends that Respondent has lifted photographs, logos, and other copyrighted content from the legitimate <chanluu.com> website in order to recreate its own website in a way visually resembling Complainant’s. Complainant submits a screenshot of its own website as Exhibit H, and implores the Panel to compare its website with Respondent’s resolving website, depicted in Exhibit G. The Panel notes that Respondent’s website displays Complainant’s CHAN LUU mark at the top of the page, in the same orange color and similar font, and includes photographs that appear to be taken from Complainant’s website. The Panel finds that Respondent uses Complainant’s logo and photographs at its own website, and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii), by attempting to pass itself off as Complainant. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

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 argues that Respondent’s bad faith registration and use of the <chanluufashion.com> domain name is shown in its effort to disrupt Complainant’s business by offering both competing goods and counterfeit goods at the resolving website. Complainant alleges that by selling such products under the guise of being associated with Complainant, Respondent causes disruption to Complainant’s operations. Previous panels have stated that disruption to a complainant’s business by appropriating the complainant’s mark to divert consumers to the respondent’s competing business, and to offer counterfeit goods, is evidence of bad faith registration and use. 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).”); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). The Panel here finds that Respondent registered and uses the <chanluufashion.com> domain name in bad faith under Policy ¶ 4(b)(iii), due to Respondent’s use of the domain name to market both competing and counterfeit items at the resolving website.

 

Complainant also argues that Respondent’s bad faith registration and use are apparent due to its efforts to make a profit from the resolving website. Complainant claims that Respondent registered and uses a domain name that is confusingly similar to Complainant’s mark in order to redirect Internet users to a website offering goods in direct competition with Complainant’s goods, and to sell counterfeit CHAN LUU goods. The Panel finds that Respondent registered and uses the <chanluufashion.com> domain name in bad faith under Policy ¶ 4(b)(iv) in bad faith, as a result of Respondent’s selection of a domain name bearing confusing similarity to Complainant’s mark, and using the resolving website to sell competing and counterfeit goods to Complainant’s potential customers. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).

 

Complainant urges the Panel to find bad faith on Respondent’s part due to its use of the <chanluufashion.com> domain name to display Complainant’s CHAN LUU mark, as well as many visual similarities with Complainant’s own website. Complainant claims that the resolving website includes Complainant’s copyright-protected photographs, its logo, and other similarities. The Panel finds that Respondent’s appropriation of Complainant’s images and intellectual property at the resolving website constitutes an attempt to pass itself off as Complainant, and concludes that making an effort to appear to be associated with Complainant in such a manner is evidence of Respondent’s attempt to pass off and bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

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 <chanluufashion.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                      Darryl C. Wilson, Panelist

                                       Dated: October 14, 2013

 

 

 

 

 

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