Chan Luu Inc. v. EMERIC DOMESOR and EMERIC
Claim Number: FA1404001554751
Complainant is Chan Luu Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is EMERIC DOMESOR and EMERIC (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chan-luu-inc.com>, registered with 1api GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2014; the National Arbitration Forum received payment on April 17, 2014.
On April 22, 2014, 1api GmbH confirmed by e-mail to the National Arbitration Forum that the <chan-luu-inc.com> domain name is registered with 1api GmbH and that Respondent is the current registrant of the name. 1api GmbH has verified that Respondent is bound by the 1api GmbH 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 April 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@chan-luu-inc.com. Also on April 22, 2014, 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 May 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, Chan Luu Inc., owns the exclusive rights to the CHAN LUU trademark, which it has used for over 18 years in connection with its highly successful and widely known lines of jewelry, fashion accessories, and clothing.
ii. 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 European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,187,845 registered February 10, 2006).
iii. Complainant has prevailed in numerous UDRP proceedings and panelists have consistently ordered the transfer of other confusingly similar domain names to Complainant.
iv. The subject domain name <chan-luu-inc.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 term “inc” to Complainant’s CHAN LUU mark. Further, the addition of hyphens in the subject domain name does not impact the analysis of confusing similarity. Lastly, the addition of the generic top-level domain name (“gTLD”) “.com” to the subject domain name is irrelevant to the confusingly similar analysis.
v. Respondent is not commonly known by the subject domain name.
vi. Respondent neither has licensed to use the CHAN LUU mark, nor does it have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark.
vii. The WHOIS information for the disputed domain name lists the registrant of the disputed domain name as “Emeric Domesor” and “Emeric.”
viii. Respondent uses the disputed domain name in connection with a phishing scam targeting Complainant’s customers. Respondent designed the website that resolves from the disputed domain name to visually resemble Complainant’s own website. Respondent uses complainant’s own photographs and displays the CHAN LUU trademark prominently at the top of the resolving website. Respondent’s resolving website enables Internet users to create an account by using their personal information, which Respondent intercepts.
ix. Respondent’s fraudulent use of the disputed domain name to run a phishing scheme against Complainant by reproducing Complainant’s own website satisfies Policy ¶ 4(b)(iv) bad faith use and registration.
x. Respondent is attempting to pass itself off as Complainant. Respondent’s website at the subject domain name displays Complainant’s CHAN LUU mark in the same distinct orange color and font as Complainant’s website. Respondent also uses images that are displayed on Complainant’s official website.
xi. There appears to be a link between Respondent and a previous respondent that Complainant pursued legal action against for another domain name, <chanluuusaonline.com>. Respondent uses the contact e-mail “service@chanluuusaonline.com” as a contact e-mail address.
xii. 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
xiii. Respondent registered the <chan-luu-inc.com> domain name on November 1, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAN LUU mark. Respondent’s domain name is confusingly similar to Complainant’s CHAN LUU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chan-luu-inc.com> domain name, and that Respondent registered and uses the domain name 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 contends that it has rights in the CHAN LUU mark under Policy ¶ 4(a)(i). Complainant asserts that it owns the exclusive rights to the CHAN LUU trademark, which it has used for over 18 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 USPTO for the CHAN LUU mark (e.g., Reg. No. 2,869,029, registered August 3, 2004). Complainant also claims to own trademark registration with OHIM (Reg. No. 4,187,845 registered February 10, 2006.). Providing evidence of a registration for a trademark with a recognized trademark authority is sufficient to establish rights in a given mark. See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is irrelevant whether a complainant registers a disputed domain name in the location of respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel concludes that Respondent has rights in the CHAN LUU mark under Policy ¶ 4(a)(i).
Complainant asserts that the subject domain name, <chan-luu-inc.com>, is confusingly similar to Complainant’s CHAN LUU mark. The domain name includes 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. Further, the addition of hyphens and elimination of the space in the subject domain name does not impact the analysis of confusing similarity. Lastly, the addition of the gTLD “.com” to the subject domain name is irrelevant to the confusingly similar analysis. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); 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).”); U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <chan-luu-inc.com> domain name is confusingly similar to Complainant’s CHAN LUU mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the subject domain name. Complainant explains that Respondent is not commonly known by the subject domain name under Policy ¶ 4(c)(ii). Respondent neither has license to use the CHAN LUU mark, nor does it have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark. Complainant additionally states that the WHOIS information for the disputed domain name lists the registrant of the disputed domain name as “Emeric Domesor” and “Emeric.” In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that 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. Consequently, the Panel holds that Respondent is not commonly known by the <chan-luu-inc.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that Respondent is purposely imitating the appearance of Complainant’s official website in order to attract and confuse Internet users. Complainant states that Respondent has designed the resolving website to resemble Complainant’s own website. Respondent uses photographs that are also present on Complainant’s website, and displays Complainant’s trademark prominently at the top of the resolving website in the Complainant’s distinctive orange color. A party which uses a confusingly similar domain name in an attempt to pass itself of as the holder of a trademark does not have rights or legitimate interests in a disputed domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Further, Complainant asserts that Respondent uses the disputed domain name in connection with a phishing scam targeting Complainant’s customers. Complainant states that Respondent designed the website that resolves from the disputed domain name to resemble Complainant’s own website. Complainant argues that Respondent uses Complainant’s own photographs and displays the CHAN LUU trademark prominently at the top of the resolving website. Complainant reveals that Respondent’s resolving website enables Internet users to create an account by using their personal information, which Respondent intercepts. Using a confusingly similar domain name to resolve to a website requesting personal information from Internet users is a phishing scheme and therefore not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the subject domain name in bad faith. Complainant asserts that Respondent uses the confusingly similar domain name to attract Internet users to a website similar to Complainant’s website in order to confuse Internet users and commercially profit. Complainant argues that Respondent’s fraudulent use of the disputed domain name to run a phishing scheme against Complainant by reproducing Complainant’s own website satisfies Policy ¶ 4(b)(iv) bad faith use and registration. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The Panel agrees.
Additionally, Complainant states that Respondent is attempting to pass itself off as Complainant. Complainant explains that Respondent’s website displays Complainant’s CHAN LUU mark in the same distinct orange color and font as Complainant’s website. Further, Complainant contends that Respondent also uses images that are displayed on Complainant’s official website. Using a confusingly similar domain name to resolve to a website that aims to imitate a complainant’s legitimate website indicates bad faith because a respondent is attempting to attract and confuse Internet users who enter the resolving website. 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 . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). The Panel concludes that Respondent registered and is using the <chan-luu-inc.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant additionally contends that 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. The finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
The Panel finds 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 <chan-luu-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 27, 2014.
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