Chan Luu Inc. v. N/A / Momoko Nakamura
Claim Number: FA1308001517019
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is N/A / Momoko Nakamura (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluujapanshop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2013; the National Arbitration Forum received payment on August 28, 2013.
On September 5, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <chanluujapanshop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@chanluujapanshop.com. Also on September 5, 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 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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
i. Respondent is not commonly known by the subject domain name.
ii. Respondent uses the subject domain name <chanluujapanshop.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items.
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 hosting the website at the domain name, is to unlawfully misdirect users searching for Complainant to Respondent’s website.
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
1. Respondent has not submitted a Response to this case. Respondent registered the <chanluujapanshop.com> domain name on May 20, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 decides 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 established its CHAN LUU jewelry business in 1995 in Los Angeles, California. Complainant contends 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 asserts 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 E. Complainant also owns a trademark registration with the JPO for the CHAN LUU mark (Reg. No. 4,884,138, registered July 29, 2005). Id. The Panel notes that Respondent appears to reside in Japan. Therefore, the Panel determines that Complainant’s registration of the CHAN LUU mark with the JPO and USPTO sufficiently proves its rights in the mark under Policy ¶ 4(a)(i). See Implus Footcare, LLC v. Ellison, FA 1406760 (Nat. Arb. Forum Oct. 24, 2011) (finding that trademark registrations, including those with the Japanese Patent Office, are sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <chanluujapanshop.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 “shop” to Complainant’s CHAN LUU mark. Complainant claims that the term “japan” is plainly geographically descriptive of Complainant’s CHAN LUU mark. Complainant also claims that the term “shop” is merely descriptive of Complainant’s retailing services. The Panel determines that Respondent’s inclusion of a geographic or generic term to Complainant’s mark in its domain name does not differentiate Respondent’s 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). Lastly, Complainant argues 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 removes the space in Complainant’s CHAN LUU mark for its use in the disputed domain name. The Panel holds that Respondent’s inclusion of a gTLD and removal of a space is inconsequential to a Policy ¶ 4(a)(i) 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)). Therefore, the Panel concludes that Respondent’s <chanluujapanshop.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
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 contends 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 <chanluujapanshop.com> domain name is “N/A” and/or “Momoko Nakamura.” See Exhibit A. Complainant argues that it has not given Respondent permission to use its CHAN LUU mark. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Consequently, the Panel determines that Respondent is not commonly known by the <chanluujapanshop.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the subject domain name <chanluujapanshop.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. The Panel observes that Respondent’s disputed domain name resolves to a website selling jewelry and accessories that are competitive with Complainant’s business or counterfeit versions of Complainant’s products. See Exhibit H. Prior panels have held that a respondent’s use of a domain name to sell competing or counterfeit goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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); see also 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). Therefore, the Panel finds that Respondent is not using the <chanluujapanshop.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.
Complainant contends that Respondent uses the <chanluujapanshop.com> domain name to sell counterfeit CHAN LUU goods. The Panel notes that Respondent’s disputed domain name leads to a webpage offering competing or counterfeit jewelry and accessories. See Exhibit H. Prior panels have held that a respondent’s use of a domain name to sell competing or counterfeit products disrupts Complainant’s legitimate business, evidencing bad faith use and registration pursuant to 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 this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). Thus, the Panel holds that Respondent’s <chanluujapanshop.com> domain name is disruptive to Complainant’s business under 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. Complainant asserts that Respondent’s website displays Complainant’s CHAN LUU mark, as well as counterfeit items bearing the CHAN LUU name. See Exhibit H. The Panel holds that Respondent’s use of the <chanluujapanshop.com> domain name to make commercial sales by selling counterfeit items constitutes attraction for commercial gain 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 contends that Respondent uses the <chanluujapanshop.com> domain name to pass itself off as Complainant, claiming that imitating Complainant’s website is evidence of bad faith registration and use. Complainant argues that the resolving website displays the CHAN LUU mark. See Complainant’s Exhibit H. The Panel notes that Complainant’s exhibit bears the CHAN LUU logo in a similar orange color as that of Complainant’s own website, and advertises jewelry for sale, including bracelets similar in style to Complainant’s distinctive bracelets. Compare Complainant’s Exhibit H with Complainant’s Exhibit I. The Panel determines that Respondent registered and uses the <chanluujapanshop.com> domain name in bad faith under Policy ¶ 4(a)(iii) by attempting to pass itself of as Complainant’s website and business, as shown by the screen shots of Respondent’s resolving website. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant alleges that Respondent registered the <chanluujapanshop.com> 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. Complainant contends that Respondent’s imitation of Complainant’s website to pass itself off as Complainant is evidence that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <chanluujapanshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 6, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page