Chan Luu Inc. v. juan huang / huang juan
Claim Number: FA1309001518373
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is juan huang / huang juan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <japanchanluustore.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2013; the National Arbitration Forum received payment on September 6, 2013. The Complaint was submitted in both Chinese and English.
On September 12, 2013, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <japanchanluustore.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 23, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 15, 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@japanchanluustore.com. Also on September 23, 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 October 21, 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.
Complainant requests that the domain name be transferred from Respondents to Complainant.
A. Complainant
a. Complainant, Chan Luu Inc., established its jewelry business in 1995. Complainant has expanded its business to include fashion accessories and clothing.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant is also the owner of trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009).
c. The subject domain name <japanchanluustore.com> is confusingly similar to Complainant’s CHAN LUU mark. The domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the terms “japan” and “store” to Complainant’s CHAN LUU mark. Lastly, the addition of the generic top-level domain (“gTLD”) “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis.
d. Respondent has no rights or legitimate interest in the subject domain name.
i. Respondent is not commonly known by the subject domain name.
ii. Respondent uses the subject domain name <japanchanluustore.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items.
iii. Respondent prominently displays Complainant’s CHAN LUU mark at the top of the subject website and in the same distinctive orange color and confusingly similar font as that used by Complainant.
e. Respondent has registered and is using the subject domain name in bad faith.
i. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods.
ii. Respondent’s website at the subject domain name displays Complainant’s CHAN LUU mark.
iii. Respondent registered the subject domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark as evidenced by Respondent’s explicit use of the CHAN LUU mark.
B. Respondent
Respondents failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings 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.
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 listed as Juan Huang and Huang Juan of what appears to be Beijing, China. Respondents’ registrar’s address is listed Chengdu, China. Respondents registered the <japanchanluustore.com> domain name on June 27, 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 claims that it established its jewelry business in 1995. Complainant argues that it has expanded its business to include fashion accessories and clothing. Complainant contends that it is the owner of trademark registrations with the USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). See Exhibit F. Complainant argues that it is also the owner of trademark registrations with China’s SAIC for the CHAN LUU mark (e.g., Reg. No. 5,497,349, registered August 21, 2009). See Exhibit E. The Panel notes that Respondents appear to reside in China. The Panel finds that Complainant’s registration of the CHAN LUU mark with China’s SAIC and the USPTO sufficiently demonstrate its 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).”).
Complainant alleges that the subject domain name <japanchanluustore.com> is confusingly similar to Complainant’s CHAN LUU mark. Complainant contends that Respondents’ <japanchanluustore.com> domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the terms “japan” and “store” to Complainant’s CHAN LUU mark. The Panel finds that Respondents’ inclusion of geographic or generic terms do not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
Complainant also contends that the addition of the gTLD “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis. The Panel notes that Respondents remove the space in Complainant’s CHAN LUU mark. The Panel finds that Respondents’ removal of spaces and addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. 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 finds that Respondents’ <japanchanluustore.com> is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
Respondents make no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
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 Respondents are not commonly known by the <japanchanluustore.com> domain name. Complainant claims that Respondents’ name, as listed in the WHOIS information for the subject domain name, is “juan huang” and “huang juan.” See Exhibit A. Complainant further asserts that it has not given Respondents permission to use its CHAN LUU mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. The Panel here finds that, based on the WHOIS record and lack of other evidence in the record, Respondents are not commonly known under the <japanchanluustore.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondents use the subject domain name <japanchanluustore.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. The Panel notes that Respondents’ domain name resolves to a Chinese language webpage purporting to sell competing and counterfeit CHAN LUU jewelry and accessories. See Exhibit I. Prior panels have held that a respondent’s use of a domain name to sell counterfeit or competing items is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). The Panel finds that Respondents are not using the <japanchanluustore.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondents prominently display Complainant’s CHAN LUU mark at the top of the <japanchanluustore.com> website and in the same distinctive orange color and confusingly similar font as that used by Complainant. See Exhibit I. The Panel finds that Respondents’ attempts to pass off as Complainant through the disputed domain name, is not using the <japanchanluustore.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
Respondents make no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondents have not provided a response to this action the Respondents have failed to meet their burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondents use the <japanchanluustore.com> domain name to sell counterfeit CHAN LUU goods. The Panel notes that Respondents’ <japanchanluustore.com> domain name resolves to a Chinese language website which purportedly sells competing and counterfeit CHAN LUU jewelry and accessories. See Exhibit I. The Panel finds that Respondents’ use of the domain name to sell competing and counterfeit goods disrupts Complainant’s business, demonstrating bad faith use and registration under 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 the above diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
The Panel again notes that Respondents’ <japanchanluustore.com> domain name links to a Chinese language website attempting to sell competing and counterfeit CHAN LUU jewelry and accessories. See Exhibit I. The Panel notes that Respondents presumably financially benefit from the operation of the disputed domain name. Prior panels have held that a respondent’s use of a disputed domain name to sell competing and/or counterfeit items for commercial gain demonstrates bad faith use and registration of the domain name. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also 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). The Panel here finds the above use by Respondents to be further support for the conclusion that Respondents registered and are using the <japanchanluustore.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondents’ website at the <japanchanluustore.com> domain name displays Complainant’s CHAN LUU mark. Complainant contends that Respondents prominently display Complainant’s CHAN LUU mark at the top of the <japanchanluustore.com> website and in the same distinctive orange color and confusingly similar font as that used by Complainant. See Exhibit I. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” The Panel here finds that Respondents are attempting to pass themselves off as Complainant, thereby showing bad faith use and registration under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
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 <japanchanluustore.com> domain name be TRANSFERRED from Respondents to Complainant.
Darryl C. Wilson, Panelist
Dated: November 4, 2013
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