Chan Luu Inc. v. Eiji Ootsuru / Ootsuru Eiji
Claim Number: FA1310001525469
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Eiji Ootsuru / Ootsuru Eiji (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com>, registered with GMO Internet, Inc. d/b/a Onamae.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2013; the National Arbitration Forum received payment on October 18, 2013. The Complaint was submitted in both Japanese and English.
On October 21, 2013, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the National Arbitration Forum that the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 October 28, 2013, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of November 18, 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@xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com. Also on October 28, 2013, the Japanese 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 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant made the following contentions.
1. Complainant, Chan Luu Inc., established its jewelry business in 1995. Complainant has expanded its business to include fashion accessories and clothing.
2. 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). Complainant is also the owner of a trademark registration with the Japan Patent Office (“JPO”) for the CHAN LUU mark (Reg. No. 4,884,138, registered July 29, 2005).
3. The domain name when transliterated from Japanese to English, features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name, and merely adds the descriptive terms “bracelet” and “mail order” 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.
4. Respondent has no rights or legitimate interest in the subject domain name.
i. Respondent is not commonly known by the subject domain name.
ii. Respondent uses the subject domain name, <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com>, to redirect users to another website selling goods directly competing with Complainant, including counterfeit CHAN LUU items.
iii. Respondent extensively uses Complainant’s CHAN LUU trademark throughout its website and redirected site.
5. 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. Respondent’s website at the subject domain name displays Complainant’s CHAN LUU mark.
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
Respondent failed to submit a Response in this proceeding.
1. Complainant established its jewelry business in 1995.The business includes fashion accessories and clothing.
2. 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). Complainant is also the owner of a trademark registration with the Japan Patent Office (“JPO”) for the CHAN LUU mark (Reg. No. 4,884,138, registered July 29, 2005).
3. Respondent registered its <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name on September 22, 2013.
4. The disputed domain name is used to redirect internet users to another website selling goods directly competing with those of Complainant, including counterfeit CHAN LUU items.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings to be Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant argues that it established its jewelry business in 1995. Complainant contends that it expanded its business to include fashion accessories and clothing. 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). See Exhibit F. Complainant also alleges that it is the owner of a trademark registration with the JPO for the CHAN LUU mark (Reg. No. 4,884,138, registered July 29, 2005). See Exhibit E. In Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010), the panel found that a trademark registration with the JPO, among others, was sufficient for complainant to establish rights in its mark under Policy ¶ 4(a)(i). Thus, because Complainant has registered its CHAN LUU mark with the JPO and other trademark agencies, the Panel finds that Complainant has established its rights in the CHAN LUU mark pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHAN LUU mark. Complainant claims that Respondent’s <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name, when transliterated from Japanese to English, features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name, and merely adds the descriptive terms “bracelet” and “mail order” to Complainant’s CHAN LUU mark. Complainant argues that its CHAN LUU mark is extensively used in connection with bracelets and the phrase “mail order” is merely descriptive of Complainant’s retailing services. The Panel finds that Respondent’s addition of descriptive terms is inconsequential to a Policy ¶ 4(a)(i) determination. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). In the alternative, the Panel notes that Respondent’s <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name, as it currently appears, includes Complainant’s CHAN LUU mark along with a string of letters, numbers, and hyphens. The Panel finds that Respondent’s addition of extra letters, numbers, and hyphens to Complainant’s CHAN LUU mark does not negate a Panel from finding confusing similarity under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Lastly, Complainant contends that the addition of the gTLD “.com” to portions of the subject domain name is irrelevant to the confusingly similar analysis. The Panel also notes that Respondent removes the space in Complainant’s CHAN LUU mark in its disputed domain name. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found 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). Accordingly, the Panel holds that Respondent’s removal of spaces and addition of a gTLD is irrelevant to Policy ¶ 4(a)(i). Thus, the Panel concludes that Respondent’s <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHAN LUU mark and to use it in its domain name, merely adding the Japanese equivalent of the descriptive words “bracelet” and “mail order” thus suggesting that the domain name relates to Complainant’s jewelry and selling it by mail order;
(b) Respondent uses the domain name to redirect internet users to another website selling goods directly competing with those of Complainant, including counterfeit CHAN LUU items;
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name. Complainant alleges that Respondent’s name, as listed in the WHOIS information for the disputed domain name, is “Eiji Ootsuru / Ootsuru Eiji.” See Exhibit A. Further, Complainant asserts that it has not given Respondent permission to use its CHAN LUU mark. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant argues that Respondent uses the subject domain name <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> to redirect users to another website selling goods directly competing with Complainant, including counterfeit CHAN LUU items. Complainant contends that once an Internet user enters the disputed domain name, the user is redirected to another Japanese language site, <chanluu-chanluubraceletmailorder.com>. See Exhibit I. Complainant argues that once the user clicks on the red button in the middle of the webpage to access the site, the user is then redirected to another webpage, <highfashionbracelet.com>, where competitive goods are sold. Id. Prior panels have held that redirecting Internet users from a disputed domain name to another commercial website to sell counterfeit or competing goods for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Consequently, the Panel holds that Respondent is not using the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.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;
(f) Complainant asserts that Respondent excessively uses Complainant’s CHAN LUU trademark throughout its website and redirected site. Complainant claims that Respondent prominently displays Complainant’s CHAN LUU mark on its website and title bar tab of the webpage. See Exhibit I. In Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008), the panel determined that 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). Accordingly, the Panel holds that Respondent’s use of the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name to attempt to pass itself off as Complainant does not evidence a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant asserts that Respondent uses the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name to sell counterfeit CHAN LUU goods. The Panel observes that Respondent’s disputed domain name resolves to a webpage purporting to offer jewelry and accessories that are either counterfeit CHAN LUU products or directly compete with Complainant’s products. See Exhibit I. Prior panels have held that a respondent’s use of a disputed domain name to offer counterfeit or competing goods disrupts complainant’s business 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).”). Therefore, the Panel finds that Respondent’s use of the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant claims that Respondent uses the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name to sell counterfeit CHAN LUU goods. The Panel notes that Respondent’s disputed domain name resolves to a website selling competing and counterfeit products, such as jewelry and accessories. See Exhibit I. The Panel notes that Respondent’s use of the CHAN LUU mark in its confusingly similar domain name attracts users to its website for which Respondent presumably commercially gains through its sale of counterfeit and competing goods. Therefore, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also 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).
Thirdly, Complainant contends that Respondent’s website at the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name displays Complainant’s CHAN LUU mark. Complainant claims that Respondent prominently displays Complainant’s CHAN LUU mark on its website and title bar tab of the webpage. See Exhibit I. As the Panel determines that Respondent has attempted to pass itself off as Complainant, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Fourthly, Complainant asserts that Respondent registered the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.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 on the website resolving from the disputed domain name. Thus, the Panel finds that, due to the Respondent’s use of Complainant's CHAN LUU mark throughout its website, 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).
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the CHAN LUU mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--chanluu-6v4f9b2a9c4jlgqexab1iqh2396ponoa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 22, 2013
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