Chan Luu Inc. v. Huang HENAN
Claim Number: FA1311001529853
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Huang HENAN (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluuonjp.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2013; the National Arbitration Forum received payment on November 14, 2013.
On November 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chanluuonjp.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 November 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@chanluuonjp.com. Also on November 15, 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 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, Chan Luu Inc., owns the exclusive rights to the trademark CHAN LUU, which is has used for over 17 years in connection with its highly successful and widely-known lines of jewelry, fashion accessories, and clothing.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office for the CHAN LUU mark. Complainant also owns trademark registrations with China’s State Administration for Industry and Commerce for the CHAN LUU mark, as well as registrations with other national registries including, but not limited to, Japan’s trademark registry.
The subject domain name <chanluuonjp.com> is confusingly similar to Complainant’s CHAN LUU mark as it features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the terms “on” and “jp.” The appending of the generic top-level domain (“gTLD”) “.com” to the second level domain name is irrelevant to the confusingly similar analysis.
Respondent has no rights or legitimate interests in the subject domain name. Respondent is not commonly known by the subject domain name. Respondent uses the subject domain name <chanluuonjp.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items. Respondent uses Complainant’s CHAN LUU trademark throughout its website addressed by the subject domain name.
Respondent has registered and is using the subject domain name in bad faith. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods in a manner that unfairly disrupts Complainant’s business. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods by creating the likelihood that Internet users will confuse Complainant as source, sponsor, endorser, or affiliate of the counterfeited and competing goods sold therein.
Respondent’s website at the subject domain name displays Complainant’s CHAN LUU mark.
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.
Complainant owns United States, Chinese, Japanese and other trademark registrations for the CHAN LUU mark.
Complainant’s trademark rights in CHAN LUU predate Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name to sell counterfeit CHAN LUU goods as well as competing goods.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in the CHAN LUU mark via its several trademark registrations with various international trademark agencies, including the USPTO, SAIC and many other national registries. Any one of such registrations is sufficient for Complainant to establish rights in its CHAN LUU mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (finding that the complainant’s various trademark registrations with agencies around the world, including with the USPTO, serve to secure its rights in the claimed mark under the Policy).
The <chanluuonjp.com> domain name incorporates Complainant’s entire CHAN LUU mark less its space, adds the generic term “on,” adds the geographic term “jp,” a country code for Japan, and appends the necessary top level domain name, here “.com,” thereto. Despite the resulting differences between the mark and the at-issue domain name, the domain name is nevertheless confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (concluding that “it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore…the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “Huang HENAN.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the domain name despite the contrary WHOIS indication. The Panel therefore concludes that Respondent is not commonly known by the <chanluuonjp.com> domain name for the purposes of 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).
Respondent uses the <chanluuonjp.com> domain name to sell goods that compete with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU items such as jewelry and accessories. Therefore, Respondent’s use of the <chanluuonjp.com> domain name is made neither in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor in connection with a Policy ¶ 4(c)(iii) 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 Hewlett-Packard Co. v. Inversiones HP Millennium 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
As mentioned above, Respondent’s <chanluuonjp.com>website offers counterfeit and competing jewelry and accessories similar to Complainant’s CHAN LUU products. This endeavor is disruptive to Complainant’s business. Therefore Respondent’s use of the <chanluuonjp.com> website demonstrates bad faith use and registration under 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 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). Additionally, Respondent’s use of the confusingly similar domain name to attract Internet users to its own website for commercial gain demonstrates bad faith under Policy ¶ 4(b)(iv). See 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); see also 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).
Furthermore, Respondent prominently displays Complainant’s CHAN LUU mark using the same distinctive orange color and font as used by Complainant at the top of the webpage addressed by the at-issue domain name. It is thus clear that Respondent is attempting to pass itself off as Complainant. Such intended use of the at-issue domain name is additional compelling evidence that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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, Respondent had actual knowledge of Complainant’s rights in the CHAN LUU mark when it registered the <chanluuonjp.com> domain name. Respondent’s prior knowledge of the CHAN LUU mark is inferred from the mark’s notoriety, from Respondent’s inclusion of the entire CHAN LUU mark followed by the “on” + “jp” terms in the domain name, as well as from the prominent display of the mark on Respondent’s <chanluuonjp.com> website. Notably the “on” + ”jp” terms suggest Complainant’s operations in Japan, a country where Complainant in fact conducts business and owns a registered trademark for CHAN LUU. Registering and using a domain name with knowledge of Complainant’s rights in such domain name indicates Respondent’s bad faith registration and use pursuant to 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 shall be GRANTED.
Accordingly, it is Ordered that the <chanluuonjp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 11, 2013
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