Chan Luu Inc. v. TA DE and TADE
Claim Number: FA1312001535109
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is TA DE and TADE (“Respondent”), Macau.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mallchanluujapans.com>, registered with Domain.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2013; the National Arbitration Forum received payment on December 17, 2013.
On December 18, 2013, Domain.com confirmed by e-mail to the National Arbitration Forum that the <mallchanluujapans.com> domain name is registered with Domain.com and that Respondent is the current registrant of the name. Domain.com has verified that Respondent is bound by the Domain.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 December 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2014 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@mallchanluujapans.com. Also on December 19, 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 January 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <mallchanluujapans.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.
2. Respondent does not have any rights or legitimate interests in the <mallchanluujapans.com> domain name.
3. Respondent registered and uses the <mallchanluujapans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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), used in connection with jewelry, clothing, and accessories.
Respondent registered the <mallchanluujapans.com> domain name to August 7, 2013, and uses it to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit 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 Panel finds that Complainant has sufficiently proved its rights in the CHAN LUU mark under Policy ¶ 4(a)(i) through its registration with the USPTO. The Respondent appears to reside in Macau. However, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registers its mark in the jurisdiction in which Respondent resides, so long as Complainant can establish its rights in the mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <mallchanluujapans.com> domain name features Complainant’s CHAN LUU mark as the dominant portion of the domain name, and merely adds the terms “mall” and “Japans.” The Panel finds that Respondent’s inclusion of generic or geographic terms is inconsequential to a Policy ¶ 4(a)(i) analysis. See 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); see also 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). Likewise, the removal of spaces and addition of a gTLD does not differentiate the disputed domain name from Complainant’s mark 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)). Consequently, the Panel finds that Respondent’s <mallchanluujapans.com> domain name is confusingly similar to Complainant’s CHAN LUU mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <mallchanluujapans.com> domain name, and states that it has not given Respondent permission to use its CHAN LUU mark. Respondent is listed in the WHOIS information as “TA DE” and “TADE,” bearing no resemblance to the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Thus, the Panel fnds that Respondent is not commonly known under the <mallchanluujapans.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <mallchanluujapans.com> domain name to sell goods directly competing with Complainant’s CHAN LUU goods, including counterfeit CHAN LUU goods. The Panel notes that the disputed domain name links to a website offering competing and counterfeit jewelry and accessories. Previous panels have concluded that a respondent’s use of a disputed domain name to sell competing products or counterfeit products 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. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); 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 <mallchanluujapans.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 asserts that Respondent excessively uses Complainant’s CHAN LUU trademark throughout its website at the <mallchanluujapans.com> domain name, displaying the mark at the top of the website, at times in the same distinctive orange color and confusingly similar font as those used by Complainant. The Panel finds that Respondent is attempting to pass itself off as Complainant is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <mallchanluujapans.com> domain name to sell counterfeit CHAN LUU goods. This disrupts Complainant’s business, and is evidence that Respondent has registered and is using the <mallchanluujapans.com> domain name in bad faith according 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).
The Panel notes that Respondent uses the disputed domain name to offer to the public competing and counterfeit jewelry and accessories, presumably for profit. The Panel thus finds that Respondent’s use of the <mallchanluujapans.com> domain name is also bad faith pursuant to 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).
Respondent is attempting to pass itself off as Complainant by using Complainant’s CHAN LUU mark, and the same color scheme and font that Complainant uses. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), where the panel found that the disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” The Panel likewise finds that Respondent has registered and is using the <mallchanluujapans.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent registered the <mallchanluujapans.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. The Panel agrees and finds that Respondent had knowledge of Complainant’s trademark rights when it registered the disputed domain name, further evidence of 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mallchanluujapans.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 20, 2014
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