Chan Luu Inc. v. MARILYNBARNES and MARILYNBARNES
Claim Number: FA1311001531379
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is MARILYNBARNES and MARILYNBARNES (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chanluu-inc.com>, registered with GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2013; the National Arbitration Forum received payment on November 22, 2013. The Complaint was submitted in both Chinese and English.
On November 26, 2013, GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. confirmed by e-mail to the National Arbitration Forum that the <chanluu-inc.com> domain name is registered with GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. and that Respondent is the current registrant of the name. GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. has verified that Respondent is bound by the GUANGDONG JINWANBANG TECHNOLOGY INVESTMENT CO. LTD. 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 December 6, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 26, 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@chanluu-inc.com. Also on December 6, 2013, the Chinese 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 December 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Panel Note: Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 <chanluu-inc.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeited CHAN LUU items.
iii. Respondent uses Complainant’s CHAN LUU trademark throughout its website at the subject domain name.
i. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods so as to unfairly disrupt Complainant’s legitimate CHAN LUU enterprise.
ii. Respondent uses the subject domain name to sell counterfeit CHAN LUU goods in a manner that creates a likelihood of confusion vis-à-vis the CHAN LUU mark.
iii. Respondent’s website at the subject domain name displays Complainant’s CHAN LUU mark.
iv. Respondent registered the subject domain name with actual knowledge of Complainant’s rights in its 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, Chan Luu Inc., owns rights to the CHAN LUU trademark, which it 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 (“USPTO”) for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant also owns a trademark registration with the Canadian Intellectual Property Office (“CIPO”) for the CHAN LUU mark (Reg. No. TMA744858, registered August 6, 2009).
Respondent, MARILYNBARNES and MARILYNBARNES, registered the <chanluu-inc.com> domain name on October 31, 2013. Respondent uses the subject domain name <chanluu-inc.com> to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeited CHAN LUU items. Respondent uses Complainant’s CHAN LUU trademark throughout its website.
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 owns rights in its CHAN LUU mark pursuant to Policy ¶ 4(a)(i) through registration with the USPTO and the CIPO. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Respondent’s subject domain name <chanluu-inc.com> is confusingly similar to Complainant’s CHAN LUU mark Policy ¶ 4(a)(i) as it features Complainant’s entire CHAN LUU mark as the dominant portion of the domain name and merely adds the term “inc” to Complainant’s CHAN LUU mark. Respondent’s inclusion of a generic term is inconsequential to a Policy ¶ 4(a)(i) determination. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Respondent’s addition of a hyphen does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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).”). Respondent’s omission of spaces and addition of a gTLD does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). 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)).
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).
Respondent is not commonly known by the <chanluu-inc.com> domain name under Policy ¶ 4(c)(ii). Complainant has not given Respondent permission to use its CHAN LUU mark. The WHOIS information for the disputed domain name lists “MARILYNBARNES and MARILYNBARNES” as the registrant. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the <chanluu-inc.com> domain name to sell goods directly competing with Complainant’s CHAN LUU goods, including CHAN LUU items. Respondent’s disputed domain name links to a webpage selling competing and counterfeit jewelry and accessories, products that bear similarity in style and appearance to the CHAN LUU goods. See Complainant’s Exhibit F. A respondent’s use of a disputed domain name to sell competing and counterfeit products is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Therefore, the Panel finds that Respondent is not using the <chanluu-inc.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.
Respondent uses Complainant’s CHAN LUU trademark throughout its website at the <chanluu-inc.com> domain name. Respondent prominently displays Complainant’s CHAN LUU mark at the top of the subject website and in the same distinctive orange color and similar font as used by Complainant. See Complainant’s Exhibit F. In Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008), the panel found that respondent’s use of the disputed domain name to pass itself off as 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 finds that Respondent’s attempt to pass itself off as Complainant 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.
Respondent uses the <chanluu-inc.com> domain name to sell counterfeit CHAN LUU goods. Respondent’s disputed domain name links to a website that sells jewelry and accessories that directly compete with Complainant or are counterfeit versions of Complainant’s products. See Complainant’s Exhibit F. The Panel finds that Respondent registered and is using the <chanluu-inc.com> domain name in bad faith under Policy ¶ 4(b)(iii) as the sale of counterfeit goods creates an unfair disruption to Complainant’s commercial operations under the CHAN LUU mark. 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).
Respondent’s offering of competing and counterfeit products diverts Internet users from Complainant’s website to Respondent’s website and is bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also 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).
Respondent’s website at the <chanluu-inc.com> domain name displays Complainant’s CHAN LUU mark and incorporates a similar design as the design on Complainant’s CHAN LUU websites. Respondent prominently displays Complainant’s CHAN LUU mark at the top of the subject website and in the same distinctive orange color and similar font as used by Complainant. See Complainant’s Exhibit F. A respondent’s use of a complainant’s mark in the same color and font constitutes an attempt to pass itself off as complainant, showing bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business”).
Respondent registered the <chanluu-inc.com> domain name with actual knowledge of Complainant’s rights in its CHAN LUU mark as evidenced by Respondent’s explicit use of the CHAN LUU mark throughout its website. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chanluu-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 13, 2014
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