Chan Luu Inc. v. Hong Kou and Hong Kou
Claim Number: FA1309001521179
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Hong Kou and Hong Kou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluutojapan.com>, registered with GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2013; the National Arbitration Forum received payment on September 24, 2013.
On October 8, 2013, the Forum sent notice to GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. that it had failed to verify the status of the <chanluutojapan.com> domain name and that this failure would be reported to ICANN. The Forum commenced this proceeding in the English language on October 8, 2013.
On October 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@chanluutojapan.com. Also on October 8, 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.
On October 28, 2013, GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. confirmed by e-mail to the National Arbitration Forum that the <chanluutojapan.com> domain name is registered with GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD., that the registration agreement for the domain name is in the Chinese language, and that Respondent is the current registrant of the name. GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. has verified that Respondent is bound by the GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT 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”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <chanluutojapan.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <chanluutojapan.com> domain name.
3. Respondent registered and uses the <chanluutojapan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its CHAN LUU mark to identify fashion merchandise and holds trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029 registered on August 3, 2004) and wth China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349 registered on August 21, 2009).
Respondent registered the <chanluutojapan.com> domain name on June 22, 2013, and uses it to promote and sell goods that compete directly with CHAN LUU products.
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.”).
The Panel finds that Complainant has rights in its CHAN LUU mark through registration with the USPTO and SAIC under Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Respondent’s <chanluutojapan.com> domain name merely adds “to” and the geographic descriptor “japan” to Complainant’s CHAN LUU mark. These changes do not distinguish the <chanluutojapan.com> domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the addition of a gTLD and the deletion of a mark’s spacing are never serious considerations under Policy ¶ 4(a)(i).); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Likewise, as the panel in Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), found that the use of geographic terms enhanced the confusing similarity of the domain name. The Panel thus finds that Respondent’s <chanluutojapan.com> domain name is confusingly similar to the CHAN LUU mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant points out that Respondent’s listed name in the WHOIS information for the domain name is “hong kou”—a name Complainant duly notes bears no similarity to the <chanluutojapan.com> domain name. Complainant states that it has not permitted Respondent to use the CHAN LUU mark in domain names, and that no license or endorsement has been given to Respondent to use of the mark. In the case of St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel took into account all available evidence, and when finding no indication that the respondent was known by the domain name, the panel declined to make any finding under Policy ¶ 4(c)(ii). The Panel finds that Respondent is not known by the <chanluutojapan.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <chanluutojapan.com> domain name to promote and sell goods that compete directly with CHAN LUU products. The Panel notes that the <chanluutojapan.com> domain name resolves to a website promoting fashion merchandise similar to that sold through Complainant’s CHAN LUU mark. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel found that there could not be a finding of either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, when the domain name was used to promote an online store that competed with the complainant’s business. The Panel finds that Respondent’s competing use of the <chanluutojapan.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant further argues that some of the goods sold on the <chanluutojapan.com> domain name’s website are in fact counterfeit goods that falsely bear the CHAN LUU mark. The Panel finds that Respondent is selling counterfeit CHAN LUU goods, further evidence that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), where the panel could find nothing bona fide or legitimately noncommercial about the use of a disputed domain name to sell counterfeit merchandise.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s sale of counterfeit merchandise through the <chanluutojapan.com> domain name is clearly an attempt to disrupt the Complainant’s CHAN LUU business, bad faith under Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (finding that the goods sold on the respondent’s website were mere counterfeits of the complainant’s goods, and thus respondent’s actions in regards to the domain name constituted Policy ¶ 4(b)(iii) bad faith.)
Complainant also argues that Respondent seeks to confuse Internet users into believing that the goods sold through the confusingly similar domain name are endorsed or authorized by Complainant, deceiving them into paying money for goods that compete with or are counterfeit versions of CHAN LUU goods. The Panel agrees and finds that Respondent’s use of the <chanluutojapan.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See 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 also argues that Respondent registered the <chanluutojapan.com> domain name with actual knowledge of Complainant’s rights in the CHAN LUU mark. Given Respondent’s explicit use of the CHAN LUU mark at the resolving website, the Panel agrees and finds that Respondent had actual knowledge of the CHAN LUU mark, further evidence of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluutojapan.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 5, 2013
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