Chan Luu Inc. v. liping huang and huang liping
Claim Number: FA1309001521997
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is liping huang and huang liping (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <topchanluujapan.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2013; the National Arbitration Forum received payment on September 30, 2013. Complainant submitted a Chinese language Complaint to the National Arbitration Forum on October 14, 2013.
On October 7, 2013, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <topchanluujapan.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 October 14, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 4, 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@topchanluujapan.com. Also on October 14, 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 November 7, 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.
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 requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < topchanluujapan.com > 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 its CHAN LUU mark in connection with the retail of products including clothing, jewelry, and accessories and owns interests in the CHAN LUU mark through registrations of the mark with various trademark agencies around the world, including the United States Patent and Trademark Office (e.g., Reg. No. 2,869,029 registered August 3, 2004), as well as the Chinese State Administration of Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,349 registered August 21, 2009). The <topchanluujapan.com> domain name is confusingly similar to Complainant’s CHAN LUU mark because the domain name fully incorporates the mark merely adds the generic word “top” and the geographic indicator “Japan.”
Respondent is not commonly known as <topchanluujapan.com>, because the WHOIS information lists the registrant of the disputed domain name as “liping huang” and “huang liping,” and Complainant has not authorized Respondent to use its CHAN LUU mark in a domain name. Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the domain name is being used to offer goods that directly compete with the goods offered by Complainant under its CHAN LUU mark. Some of these competing goods are counterfeit versions of Complainant’s CHAN LUU products. Respondent is using the disputed domain name to pass itself off as Complainant, which is further evidence that Respondent’s use is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent has demonstrated bad faith registration and use of the <topchanluujapan.com> domain name under Policy ¶ 4(b)(iii), because the domain name attracts Complainant’s potential customers and diverts them to a website offering products that compete with those offered by Complainant under its CHAN LUU mark, including counterfeit versions of Complainant’s CHAN LUU products. Respondent has also demonstrated bad faith registration and use of the <topchanluujapan.com> domain name under Policy ¶ 4(b)(iv) because the disputed domain name is likely to create confusion with Complainant’s CHAN LUU mark, and Respondent is profiting from this confusion in the form of increased traffic to its own commercial website. Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant further exemplifies Respondent’s bad faith registration and use of the <topchanluujapan.com> domain name. Respondent registered the disputed domain name with actual notice of Complainant and its rights in the CHAN LUU mark, which can be inferred from the content of Respondent’s commercial website, on June 28, 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 its CHAN LUU mark in connection with the retail sale of products including clothing, jewelry, and accessories. Complainant owns interests in the CHAN LUU mark through registrations of the mark with various trademark agencies around the world, including the USPTO (e.g., Reg. No. 2,869,029 registered August 3, 2004), as well as the SAIC (e.g., Reg. No. 5,497,349 registered August 21, 2009). Previous panels have found that a complainant sufficiently establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark with numerous trademark offices around the world. See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Accordingly, Complainant’s registration of its CHAN LUU mark with various agencies around the world sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).
The <topchanluujapan.com> domain name is confusingly similar to Complainant’s CHAN LUU mark because the domain name fully incorporates the mark and merely adds the generic word “top” and the geographic indicator “Japan.” The disputed domain name also deletes the space found between words in the CHAN LUU mark and adds the generic top-level domain (“gTLD”) “.com.” However, it has been previously held that a domain name’s elimination of the space found between words in a mark and addition of a gTLD is irrelevant for the purposes of a confusing similarity analysis. 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)). Also, a domain name’s addition of a generic term or a geographic identifier does not sufficiently establish the domain name’s distinctiveness from a complainant’s mark under the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The word “top” in the <topchanluujapan.com> domain name is a generic term that does not distinguish the disputed domain name from Complainant’s CHAN LUU mark. Similarly, the added term “Japan” is plainly a geographic term and thus does not establish the disputed domain name’s distinctiveness from Complainant’s CHAN LUU mark. Accordingly, the disputed domain name is confusingly similar to Complainant’s CHAN LUU mark pursuant to 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 commonly known as <topchanluujapan.com>, because the WHOIS information lists the registrant of the disputed domain name as “liping huang” and “huang liping,” and Complainant has not authorized Respondent to use its CHAN LUU mark in a domain name. A respondent is not commonly known by a disputed domain name where the complainant has not authorized the respondent to use its mark and there is no evidence in the record, including the WHOIS information, to suggest that respondent is commonly known by the disputed domain name. See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel accepts Complainant’s contention that it did not authorize Respondent’s use of its CHAN LUU mark and concludes that the WHOIS information tends to suggest Respondent is commonly known as “liping huang” or “huang liping,” and not as <topchanluujapan.com>. Nothing else in the record suggests that Respondent is commonly known as <topchanluujapan.com>, and the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the domain name is being used to offer goods that directly compete with the goods offered by Complainant under its CHAN LUU mark. Complainant further alleges that some of the jewelry offered for sale on Complainant’s website are counterfeit versions of Complainant’s CHAN LUU products. It has previously been determined that the use of a disputed domain name to offer products that directly compete with those offered by the complainant under its mark is not protected under Policy ¶¶4(c)(i) or 4(c)(iii). 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).”). Similarly, previous panels have held that the use of the a disputed domain name to offer counterfeit versions of the complainant’s goods is not protected under Policy ¶¶4(c)(i) or 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). In the instant proceedings, according to screenshots provided by Complainant, Respondent’s website resolving from the <topchanluujapan.com> domain name offers numerous bracelets that are very similar in style and color to those offered by Complainant on its website. Accordingly, the at-issue website is offering products that directly compete with the products offered by Complainant and/or counterfeit versions of Complainant’s CHAN LUU goods. Therefore, Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Respondent is using the disputed domain name to pass itself off as Complainant, which is further evidence that Respondent’s use is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). Previous panels have concluded that a respondent that uses a disputed domain name to pass itself off as the complainant is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Previous panels have found that a respondent attempts to pass itself off as the complainant by blatantly posting the complainant’s mark, or by formatting its website so that it is nearly identical to the complainant’s website. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent that attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also 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). In the instant proceeding, screenshots provided by Complainant show that Respondent’s website blatantly displays Complainant’s CHAN LUU mark in the upper left hand corner, and the website is substantially similar in format and style to Complainant’s website.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has demonstrated bad faith registration and use of the <topchanluujapan.com> domain name under Policy ¶ 4(b)(iii), because the domain name attracts Complainant’s potential customers and diverts them to a website offering products that compete with those offered by Complainant under its CHAN LUU mark, including counterfeit versions of Complainant’s CHAN LUU products. It has previously been held that a respondent demonstrates bad faith disruption under Policy ¶ 4(b)(iii) where the respondent uses a domain name that appropriates the complainant’s mark for the purpose of selling products that directly compete with those offered by the complainant or counterfeit versions of products offered by the complainant. 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 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).
Finally, Respondent registered the disputed domain name with actual notice of Complainant and its rights in the CHAN LUU mark, which can be inferred from the content of Respondent’s commercial website. It has previously been determined that a respondent demonstrates bad faith registration and use of a disputed domain name where the respondent registers the domain name with actual notice of the complainant and its rights in a trademark. 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). Previous panels have inferred that a respondent registered the disputed domain name with actual notice of the complainant and its mark where there is a clear link between the complainant’s mark and the content associated with the disputed domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Respondent’s website purports to offer bracelets that are very similar to those offered under Complainant’s official website. The Panel finds that there is a clear link between Complainant’s CHAN LUU mark, which is that is used in connection with the retail of jewelry, and the at-issue website, which offers various bracelets for sale. Accordingly, the Panel infers that Respondent had actual notice of Complainant and its CHAN LUU mark at the time it registered the disputed domain name, which further evidences Respondent’s bad faith registration and use of the <topchanluujapan.com> domain name pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) 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 <topchanluujapan.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 8, 2013
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