Chan Luu Inc. v. xin li
Claim Number: FA1311001529655
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is xin li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chanluujapanese.com> and <jpchanluu.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2013; the National Arbitration Forum received payment on November 13, 2013.
On November 13, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluujapanese.com> and <jpchanluu.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@chanluujapanese.com and postmaster@jpchanluu.com. Also on November 14, 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 December 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
i. Complainant owns the CHAN LUU mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,869,029, registered August 3, 2004).
ii. Complainant owns the CHAN LUU mark through numerous trademark registrations worldwide, including registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,497,350, registered on September 7, 2009).
iii. Complainant uses the CHAN LUU mark in connection with jewelry, clothing, and accessories. Complainant established its jewelry business in 1995, and now has gained international recognition with sales in stores like Bloomingdales, Saks Fifth Avenue, and Isetan.
iv. Complainant has used the website <chanluu.com> since 2006.
i. Policy ¶ 4(a)(i)
1. The <chanluujapanese.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as the domain name includes the CHAN LUU mark in its entirety with the addition of the geographically descriptive term “japanese.” Similarly, the <jpchanluu.com> domain name is confusingly similar to Complainant’s mark as the domain name includes the CHAN LUU mark in its entirety with the addition of the geographically descriptive term “jp,” which is the abbreviation for Japan. The addition of a generic top-level domain (“gTLD”), such as “.com,” is irrelevant to the confusingly similar analysis.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the subject domain names. Respondent is not commonly known by the disputed domain names. Complainant has not licensed or otherwise permitted Respondent to use the CHAN LUU mark. Further, the WHOIS record indicates that the domain names were registered by “xin li.”
2. Respondent is not making a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain names.
3. The <chanluujapanese.com> domain name resolves to a website that offers for sale counterfeit CHAN LUU items.
4. Respondent displays Complainant’s logo at the top of the landing page with the same distinctive font and orange color. See Ex. H. Respondent also uses Complainant’s copyright-protected photographs, which Respondent took from Complainant’s own website.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain names to sell counterfeit CHAN LUU goods. Such use is disruptive to Complainant’s business and is therefore demonstrative of Respondent’s bad faith.
2. Respondent registered the confusingly similar domain names to misdirect Internet users searching for Complainant’s website to Respondent’s website. Accordingly, Respondent’s registration and use of the domain names satisfies the requirements of Policy ¶ 4(b)(iv).
3. Respondent’s efforts to pass itself off as Complainant are evidence of bad faith.
4. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CHAN LUU mark.
1. Respondent’s <chanluujapanese.com> and <jpchanluu.com> domain names are confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <chanluujapanese.com> and <jpchanluu.com> domain names.
3. Respondent registered or used the <chanluujapanese.com> and <jpchanluu.com> domain names 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 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 the CHAN LUU mark in connection with jewelry, clothing, and accessories. Complainant claims to own the CHAN LUU mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant also claims to own the CHAN LUU mark through numerous trademark registrations world-wide, including registrations with SAIC (e.g., Reg. No. 5,497,350, registered on September 7, 2009). The Panel finds that Respondent’s numerous trademark registrations are sufficient to establish Complainant’s rights in the CHAN LUU mark. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <chanluujapanese.com> domain name is confusingly similar to Complainant’s CHAN LUU mark as the domain name includes the CHAN LUU mark in its entirety with the addition of the geographically descriptive term “japanese.” Similarly, Complainant argues that the <jpchanluu.com> domain name is confusingly similar to Complainant’s mark as the domain name includes the CHAN LUU mark in its entirety with the addition of the geographically descriptive term “jp,” which is the abbreviation for Japan. In Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002), the panel wrote, “Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.” Further, Complainant contends that the addition of a generic top-level domain (“gTLD”), such as “.com,” is irrelevant to the confusingly similar analysis. Previous panels have consistently held that the addition of a gTLD to a domain name is irrelevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also agrees that the removal of a mark’s spacing is not considered a serious modification to a domain name. See, e.g., HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the inclusion of the terms “japanese” and “jp” and the gTLD “.com” are insufficient to distinguish the domain names from the mark pursuant to 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 argues that Respondent is not commonly known by the disputed domain names. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the CHAN LUU mark. Complainant also contends that the WHOIS record indicates that “Xin Li” is the registrant of the disputed domain names. Based on the information on the record and Respondent’s failure to submit a response to the proceeding, the Panel finds that Respondent is not commonly known by the disputed domain names. 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).
Complainant also argues that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that the disputed domain names resolve to a website that offers for sale counterfeit CHAN LUU items. Complainant has included screenshots of the resolving and reachable pages for the domain names at issue in Exhibit H. For comparison, Complainant includes screen captures of Complainant’s own websites in Exhibit I. Previous panels have found that a respondent’s use of the domain name to sell counterfeit goods does not constitute 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). Therefore, the Panel finds that Respondent’s use of the disputed domain names in an effort to sell counterfeit goods in competition with Complainant does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii), respectively.
Complainant further alleges that Respondent purports to be Complainant through its use of the resolving website. Complainant urges that Respondent displays Complainant’s logo at the top of the landing page with the same distinctive font and orange color. See Ex. H. Further, Complainant demonstrates that Respondent also uses Complainant’s copyright-protected photographs, which Respondent took from Complainant’s own website. In line with Complainant’s argument, previous panels have failed to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent passes itself off as the complainant or diverts Internet traffic from the complainant to the respondent’s own website. In 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. Given the stark visual similarities of Respondent’s website to Complainant’s website, the Panel is persuaded that Respondent’s use of the disputed domain names to attract and direct users to competing commercial websites is calculated to pass Respondent off as Complainant, and therefore is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent uses the disputed domain names to sell counterfeit CHAN LUU goods. Complainant argues that such use is disruptive to Complainant’s business and is therefore demonstrative of Respondent’s bad faith. Previous panels have been persuaded in similar circumstances. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel concluded that the complainant’s business was disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products. The Panel recalls that Complainant has provided screenshots as evidence that Respondent is attempting to sell counterfeit goods, purportedly genuine CHAN LUU goods, through the disputed domain names. See Exhibit H. Because Respondent is using the disputed domain names in connection with a website to sell counterfeit goods purportedly belonging to Complainant and thereby disrupting Complainant’s business, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered the confusingly similar domain names to misdirect Internet users searching for Complainant’s website to Respondent’s website. Complainant asserts that Respondent uses the domain names to sell counterfeit CHAN LUU goods, creating the impression that the disputed domains are affiliated with Complainant. Complainant further asserts that Respondent commercially benefits from the resulting confusion, and argues that such a scheme is evidence of Respondent’s bad faith. Previous panels agree. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel found evidence of bad faith where the respondent attempted to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products. At present, Complainant has provided evidence that Respondent has attempted to commercially gain from the confusion generated by Respondent’s efforts to sell counterfeit CHAN LUU goods. See Exhibit H. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s efforts to pass itself off as Complainant are further evidence of bad faith. Complainant urges that Respondent displays Complainant’s logo at the top of its website with the same distinctive font and orange color. Further, Complainant demonstrates that Respondent uses Complainant’s copyright-protected photographs, which Respondent took from Complainant’s own website. Complainant has included screenshots of the resolving and reachable pages for the domain names at issue in Exhibit H, as well as screen captures of Complainant’s own websites in Exhibit I for comparison. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has published Complainant’s logo as well as copyrighted photographs from Complainant’s website into Respondent’s own website, illustrating Respondent’s bad faith attempt to pass itself off as Complainant online. 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.”).
Finally, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CHAN LUU mark. Previous panels have found evidence of bad faith where the respondent had knowledge of the complainant’s rights in the mark at the time of registration. 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"). The Panel infers that Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark given Respondent’s use of CHAN LUU photographs and logo on the resolving page associated with the <chanluujapanese.com> and <jpchanluu.com> domain names. The Panel finds that Respondent registered the disputed domain names in bad faith on this basis.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluujapanese.com> and <jpchanluu.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 23, 2013
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