Chan Luu, LLC v. Domains By Proxy, LLC et al.
Claim Number: FA1512001653436
Complainant: Chan Luu, LLC of Los Angeles, California, United States of America.
Complainant Representative: Tucker Ellis, LLP of Los Angeles, California, United States of America.
Respondent: bristol jordan of culver city, United States of America.
Domains By Proxy, LLC of Scottsdale, Arizona, US.
REGISTRIES and REGISTRARS
Registries: Wild Bloom, LLC
Registrars: 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 Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: December 21, 2015
Commencement: December 22, 2015
Response Date: December 22, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submits that it has used the CHAN LUU trademark for over 18 years in connection with its highly successful and widely known lines of jewelry.
The Complainant claims to be the registered owner of the mark CHAN LUU. The Complainant submits that the Respondent is using the confusingly similar domain name <chanluu.jewelry> to host a commercial parking page with pay-per links to directly competitive goods. Complainant further submits that the Respondent has no legitimate right and interest in the subject domain name under the Policy. Complainant’s use of the CHAN LUU trademark predates Respondent’s use of the subject domain name by many years, for the same goods and services as those offered by Respondent. The Complainant has neither licensed nor authorized the Respondent for the use of its “CHAN LUU” trademark. The Complainant submits that it has no affiliation with the Respondent and that there is no other reason that any person or company other than the Complainant and its licensees own the domain name at issue. The Complainant submits that the string “chanluu” is identical to the CHAN LUU trademark, and the term “jewelry” is descriptive of Complainant’s goods. The Complainant has relied on a number of decisions to support his case.
Even though the Respondent has defaulted, URS Procedure 1.2.6 requires the Complainant to establish a prima facie case, proven by clear and convincing evidence in each of the following three elements, in order to obtain an order for suspension of the domain name.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has established that it has used the CHAN LUU trademark for many years in connection with its successful and widely known lines of jewelry. The Complainant has further established that it has secured registrations for the “CHAN LUU” trademark in various jurisdictions. The mark “CHAN LUU” registered by the Complainant is distinctive of its business. The Respondent has registered the domain name in dispute, i.e., <chanluu.jewelry> thus wholly incorporating the trademark “CHAN LUU” of the Complainant, which is found to sufficiently establish identity/confusing similarity. In fact the registering of the domain name with the `.jewelry’ extension adds to confusion as to affiliation and sponsorship between the complainant and the respondent.
There is thus identity and confusing similarity between the Complainant’s trademark and the Respondent’s domain name.
2. No Rights or Legitimate Interests:
The Complainant is a registered proprietor of the mark CHAN LUU. The Complainant has a national trademark registration of “CHAN LUU” and has been using the trademark for a long time. The Complainant has stated that the Respondent has no affiliation with the Complainant. Further, the Complainant has shown that the Respondent is not making legitimate use of the domain name <chanluu.jewelry>. As the Respondent has not replied to the specific complaints made by the Complainant, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has thus proved that the Respondent does not have any rights or legitimate interests in the domain name.
3. Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name <chanluu.jewelry>. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3 ....
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location.”
The Complainant has to prove that the Registrant has registered and used the domain name in bad faith. The trademark “CHAN LUU” is not a dictionary word and is a well established trademark of the Complainant. It is further seen that the Respondent is not making use of this website with bona fide offerings of goods or services in any commerce. The Respondent has not sold any goods or services under the mark “CHAN LUU”. Neither is the Respondent making any legitimate non-commercial use, nor fair use of this domain name. However, as per the documents submitted by the Complainant, the Respondent used the subject domain name to host a commercial parking page with pay-per-click links to goods directly competitive with Complainant. Thus, it is clear that the Respondent’s registration and use of the impugned domain name is in bad faith.
As the Respondent has defaulted, and proof of service is evident, the Examiner has based the above findings on prima facie evidence and conclusions as provided by the Complainant.
The current status (last accessed on 29/12/2015) however shows that the domain name is now parked free.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<chan luu.jewelry>
Prathiba M. Singh, Examiner
Dated: December 29, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page