Chan Luu Inc. v. Netfirms
Claim Number: FA1309001519499
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Netfirms (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluujpfine.com>, registered with Domain.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2013; the National Arbitration Forum received payment on September 13, 2013.
On September 16, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluujpfine.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 September 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@chanluujpfine.com. Also on September 18, 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 October 9, 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 Respondent to Complainant.
A. Complainant
a. Complainant, Chan Luu Inc., owns the exclusive rights to the trademark CHAN LUU, which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories.
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).
c. The subject domain name <chanluujpfine.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 “jp” and “fine” 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 interests in the subject domain name.
i. Respondent is not commonly known by the subject domain name.
ii. Respondent uses the subject domain name <chanluujpfine.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items.
iii. Respondent excessively uses Complainant’s CHAN LUU trademark throughout its website at the subject domain name.
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. The only reason for Respondent’s registration of the confusingly similar domain name, and the hosting of the website at the domain name, is to unlawfully misdirect users searching for Complainant to Respondent’s website.
iii. Respondent’s website at the subject domain name displays Complainant’s CHAN LUU mark.
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
Respondent failed to submit a Response in this proceeding.
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 Netfirms of Burlington, MA, USA. Respondent’s registrar’s address is listed as the same as Respondent’s. Respondent registered the <chanluujpfine.com> domain name on July 19, 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 argues that it owns the exclusive rights to the trademark CHAN LUU, which it has used for over 17 years in connection with its highly successful and widely known lines of jewelry, clothing, and accessories. Complainant contends that it is the owner of trademark registrations with the USPTO for its CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). See Exhibit F. The Panel notes that Respondent appears to reside within the United States. The Panel finds that Complainant’s registration of the CHAN LUU mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant contends that the domain name <chanluujpfine.com> is confusingly similar to Complainant’s CHAN LUU mark. Complainant claims that the disputed domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the terms “jp” and “fine” to Complainant’s CHAN LUU mark. Complainant argues that the term “jp” is plainly geographically descriptive of Complainant’s CHAN LUU mark. The Panel finds that Respondent’s addition of a geographic identifier or a generic term does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Lastly, Complainant claims 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 Respondent also removes the space in Complainant’s CHAN LUU mark in the disputed domain name. The Panel finds that Respondent’s inclusion of a gTLD and omission of spaces is inconsequential 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 Respondent’s <chanluujpfine.com> is confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
Respondent makes 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 Respondent is not commonly known by the subject domain name. Complainant claims that Respondent’s name, as listed in the WHOIS information for the subject domain name, is “Netfirms.” See Exhibit A. Complainant asserts that it has not given Respondent permission to use its CHAN LUU mark. The Panel finds that, based on the WHOIS record and lack of evidence, Respondent is not commonly known by the <chanluujpfine.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent uses the subject domain name <chanluujpfine.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. The Panel notes that Respondent’s domain name resolves to a website purporting to sell jewelry and accessories that may be counterfeit or competitive to Complainant’s goods. See Exhibit H. The Panel finds that Respondent’s use of a domain name to sell competing or counterfeit goods is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant claims that Respondent excessively uses Complainant’s CHAN LUU trademark throughout its website at the <chanluujpfine.com> domain name. Complainant asserts that Respondent prominently displays Complainant’s CHAN LUU mark at the top of the subject website. See Exhibit H. In Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008), the panel found that the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). The Panel here finds that Respondent’s attempt to pass itself off as Complainant does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
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.
Complainant asserts that Respondent uses the <chanluujpfine.com> domain name to sell counterfeit CHAN LUU goods. The Panel notes that Respondent’s domain name links to a webpage that sells counterfeit or competing jewelry and accessories. See Exhibit H. Previous panels have held that a respondent’s use of a domain name to sell counterfeit or competing goods disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See 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); see also 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).”). The Panel here finds that Respondent is disrupting Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that the only reason for Respondent’s registration of the confusingly similar domain name, and the hosting of the website at the domain name, is to unlawfully misdirect users searching for Complainant to Respondent’s website. The Panel notes that Respondent’s <chanluujpfine.com> domain name resolves to a website that appears to be selling counterfeit and competing goods. See Exhibit H. Respondent’s use of the disputed domain name to mislead consumers to its own website to sell counterfeit or competing goods, indicates that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). 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 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 contends that Respondent’s website at the <chanluujpfine.com> domain name displays Complainant’s CHAN LUU mark. Complainant asserts that Respondent prominently displays Complainant’s CHAN LUU mark at the top of the domain website. See Exhibit H. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel determined that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated [c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” The Panel here finds that Respondent’s attempts to pass itself off as Complainant demonstrates bad faith use and registration pursuant to 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 <chanluujpfine.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 22, 2013
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