Chan Luu Inc. v. Thomas Mittelstra
Claim Number: FA1306001505932
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Thomas Mittelstra (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuinc.com>, registered with GoDaddy.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2013; the National Arbitration Forum received payment on June 20, 2013.
On June 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 June 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@chanluuinc.com. Also on June 24, 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 July 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Respondent is not commonly known by the subject domain name. Respondent is not a licensee or authorized user of Complainant’s marks, nor is Respondent allowed to use the CHAN LUU mark as it pleases.
ii. The <chanluuinc.com> domain name does not resolve to an active website.
i. Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
ii. Respondent’s failure to make use of the domain name evidences Respondent’s bad faith under Policy ¶ 4(a)(iii).
iii. Respondent’s knowledge of Complainant’s CHAN LUU mark when it registered the subject domain name evidences bad faith under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends 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 argues that it has operated a website accessible at <chanluu.com>, which provides information on the clothing, jewelry, and accessories sold under the CHAN LUU trademark. Complainant claims 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). The Panel notes that although Respondent appears to reside in Germany, the Panel determines that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent operates, so long as it demonstrates rights in the mark under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel concludes that Complainant has established rights in its CHAN LUU trademark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that the <chanluuinc.com> domain name features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name, and merely adds the generic term “inc” to Complainant’s CHAN LUU mark. The Panel determines that Respondent’s inclusion of the generic term “inc” does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The Panel notes that Respondent removes the spaces in Complainant’s CHAN LUU mark in its domain name. Lastly, Complainant argues that the addition of the gTLD “.com” to portions of the disputed domain name is irrelevant to the confusingly similar analysis. The Panel holds that Respondent’s removal of spaces and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel holds that Respondent’s <chanluuinc.com> domain name is confusingly similar to Complainant’s CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent is not commonly known by the subject domain name. Complainant asserts that Respondent’s name, as listed in the WHOIS information for the disputed domain name, is “Thomas Mittelstra.” Complainant claims that it has not given Respondent permission to use its CHAN LUU mark. Prior panels have found that a respondent does not have rights and legitimate interests in the domain name where respondent was not authorized to register the domain name and failed to submit evidence that it is commonly known under the disputed domain name. 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). Accordingly, the Panel determines that Respondent is not commonly known by the <chanluuinc.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that the <chanluuinc.com> domain name does not resolve to an active website. The Panel notes that Respondent’s domain name resolves to a website showing the error message “The connection has timed out. The server at chanluuinc.com is taking too long to respond.” The Panel finds that Respondent’s failure to make an active use 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant alleges that Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Panel notes that Respondent’s <chanluuinc.com> domain name links to a webpage featuring the error message “The connection has timed out. The server at chanluuinc.com is taking too long to respond.” In Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) even though respondent had not used the domain name because “it makes no sense whatsoever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” Accordingly, the Panel finds that Respondent is using the <chanluuinc.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by diverting Internet users to its own website for commercial gain.
Complainant asserts that Respondent’s failure to make use of the domain name evidences Respondent’s bad faith under Policy ¶ 4(a)(iii). Respondent’s <chanluuinc.com> domain name resolves to a website displaying the error message “The connection has timed out. The server at chanluuinc.com is taking too long to respond.” In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. Therefore, the Panel finds that Respondent’s failure to make an active use of the disputed domain name evidences bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent’s knowledge of Complainant’s CHAN LUU mark when it registered the <chanluuinc.com> domain name evidences bad faith under the Policy. Complainant claims that its worldwide trademark registrations provide constructive notice of Complainant’s CHAN LUU mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Complainant
has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluuinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 25, 2013
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