WIPO Domain Name Decision D2001-1181 for chantellebra.com, chantellebras.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chantelle v. Marvin Anhalt

Case No. D2001-1181

1. The Parties

The Complainant is Chantelle, a French corporation with its principal place of business at Cachan, France. The Complainant is represented by Maître Guillaume Marchais, Paris, France.

The Respondent is Mr. Marvin Anhalt, with a postbox address in Englewood Cliffs, NJ, USA. The Respondent is represented by Mr. Stephen H. Sturgeon of Stephen H. Sturgeon & Associates, PC, Attorneys, of Potomac, Maryland, U.S.A.

2. The Domain Names and Registrar

The domain names at issue are and . The domain names are registered with Network Solutions Inc. of Herndon, Virginia, U.S.A. ("the Registrar"). The names were first registered with the Registrar on October 22, 2000.

3. Procedural History

The Complaint submitted by Chantelle was received on September 27, 2001, (electronic version) and October 4 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center"). Amendments to the Complaint were made by the Complainant before notification of the Complaint was given to the Respondent.

On October 3, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain names at issue are registered with it.

- Confirm that the person identified as the Respondent is the current registrant of the domain names.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the building contact for the domain names.

- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

- Indicate the current status of the domain name.

By email dated October 3, 2001, the Registrar advised WIPO Center as follows:

- It is the Registrar of the domain names and .

- The Respondent is shown as the "current registrant" of the domain names and as the administrative and billing contact.

- The UDRP Policy is in effect.

- The domain name registrations are currently in "active" status.

- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

- The advice from the Registrar that the domain names in question are in "active" status indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.

- Having verified that the Amended Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on October 12, 2001, transmitted by post-courier and by email a notification of the Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to the Registrar and ICANN.

- The Complainant elected to have its Complaint resolved by a sole Panelist; it has duly paid the amount required of it to the WIPO Center.

- The Respondent was advised that a Response to the Amended Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on November 2, 2001 (electronic) and November 6, 2001 (hard copy).

- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Panelist in the case.

- The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

- On November 27, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by December 11, 2001. However, in view of the additional filings referred to below, the decision will be forwarded by December 21, 2001.

- The Panel prepared a decision on the basis of the documents filed and forwarded to the WIPO Center for formatting on December 11, 2001. However, on December 7, 2001, Complainant sought, even at that late stage and without prior leave from the Panel, to file a Reply to the Respondents Response. The Response had been served on Complainant on November 2, 2001.

- The Panel considered that the Reply, although filed extremely late, raised issues, which ought to be considered in order for the Panel to reach a correct result. The Panel therefore instructed WIPO Center to issue the following procedural direction.

"1. The Complainant to advise within one working day (no later than December 13, 2001);

(a) why it has presumed to file this document without first seeking the leave of the Panel and

(b) what grounds, if any, exist for the filing of this document now, given that the Response was served on the Complainant on November 2, 2001.

(c) The document shall be submitted in electronic form and in hard copy (one original and four copies) to the WIPO Center and shall also be copied to the Respondent in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, Para. 2(h).

2. The Respondent is invited within 2 working days (no later than December 17, 2001) to thereafter file;

(a) any comments strictly confined to the matters raised by the complainant in its purported reply, but only on the second and third criteria. The Respondent must realise that any document must be concise and not range over generalities.

(b) In particular, the Respondent should address:

- the effect on his defence of the domain name being registered by him personally and not by Olga�s and

- the effect of his failure to reply to the cease and desist letters from the Complainant.

3. Once the Complainant�s explanation has been received, the Panel will decide whether to consider the Reply document. Only if the Panel so decides, will the Panel need to consider the Respondent�s further filing, if any.

(a) If the document is considered then it shall be submitted in electronic form and in hard copy (one original and four copies) to the WIPO Center and shall also be copied to the Complaint in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, Para. 2(h).

4. The parties are referred to the Administrative Panel�s interim orders in D2000-0596 on the topic of late filings: .

In explanation of its tardiness, the Complainant stated that it was obliged to conduct extensive searches in the United States to ascertain whether the Respondent�s company was a distributor of its products. It claimed ignorance of the deadline for the Panel and asserted that there was no prohibition against supplementary filings.

This attitude needs correction for this and for other cases. The Rules provide for only one filing by each side. The incentive should be for each party to "get it right" first time. The Panelist is entitled to request further filings. There is no right for either party to the process unilaterally to assume that there is a right to a supplementary filing. Nor should one attempt to be filed without the consent of the Panel first sought and obtained. The addenda to the decisions in D2000-0596, state the position on supplementary filings correctly. As for being unaware of the deadline imposed on the Panel under the Rules, it is axiomatic that it is the responsibility of parties using the UDRP to be familiar with the Policy and the Rules.

The Respondent availed himself on December 18, 2001, of the right to make a second submission in reliance upon the Procedural Order. In the result, the Panel decided in the interests of fairness, to consider both the Complainant�s Reply and the Respondent�s second submission.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

4. Factual Background

The Complainant produces women�s underwear and hosiery and has been in business since 1939. It owns trademarks for the name "Chantelle" as follows:

(a) French No. 1 492 361, first registered November 26, 1963;

(b) International No. 2R 160 643, registered with WIPO on the basis of the French mark (17 countries are designated);

(c) European Community No. 1 469 261 (application only, filed January 21, 2000);

(d) US No. 1 636 190, registered February 26, 1991.

All the above marks, except the EC mark, relate to women�s undergarments and other apparel. The EC mark relates to telecommunications and various computer uses. On March 2, 2001, and April 12, 2001, the Complainant wrote a "cease and desist" letter to the Respondent to which he has made no reply.

5. Parties� Contentions (In Summary)

Complainant

The Complainant�s submissions, as recorded in its Complaint, are surprisingly brief. They allege, in summary:

(a) Confusing similarity because the name "Chantelle" is concerned with women�s underwear and the disputed domain names add words denoting a particular item of underwear, i.e. bra or bras;

(b) Respondent has no rights or legitimate interests in the names;

(c) Respondent has registered the domain names to prevent the Complainant from reflecting the mark in corresponding domain names � thus evidencing bad faith;

(d) Respondent�s failure to reply to the Complainant�s letters indicates bad faith.

Respondent

Complainant has only registered as a mark the two syllables "CHANTELLE". The domain names in question, and , are different from the trademarked word "CHANTELLE". The registration of two syllables does not give a registrant the right to all domain names containing the two syllables. The holder of a trademark on two syllables is not entitled to obtain all domain names that contain the two syllables. If the panel were to make this determination, then, for example, the registrant of the syllables "micro" would have a precedent for obtaining the domain name , and many other variations thereof. A decision of this type would create an extremely unfortunate precedent. This principle is supported by UDRP case law such as J. Crew v C (WIPO D2000-0054).

Complainant has failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain name. Complainant only makes some unsupported statements that do not relate to the issue of the Respondent�s "legitimate interest in the domain name" for purposes of the UDRP.

Although the Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name, and the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, the Respondent does have legitimate rights in the domain name.

Section 4(c) of the Uniform Domain Name Dispute Resolution Policy provides as follows:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent is an officer of the corporation Olga�s Corset and Specialty Shop ("Olga�s"), incorporated in the State of New York in 1977. Since its incorporation, Olga�s has been engaged in the sale of women�s lingerie. Since August 2000, the company has been purchasing Chantelle products from Chantelle for the explicit purpose of resale of those products. As a part of the retail sale of the products, the company has marketed and advertised the products as being Chantelle products. This marketing and retailing of the products under the brand name of "Chantelle" should have been known to Chantelle, which does not sell on a retail basis, but only on a wholesale basis to authorized distributors. As a demonstration of this fact, the website of the Complainant only displays products and does not offer them for sale. The products can only be purchased from an authorized retailer. Exhibit E to the Response displays an invitation to staff of Olga�s to attend a showroom display of Chantelle products. Exhibit F displays a number of advertisements in which Olga�s advertises the sale of Chantelle products.

Because Olga�s is a bona fide, authorized distributor of Complainant�s products, there is an absolute right to use the trademark "Chantelle" in the marketing and sale of Complainant�s products. UDRP decisions have held that this is a fair use. The Respondent exhibited invoices for women�s apparel from the Complainant�s New York office addressed to the Respondent. The Respondent also exhibited an invitation, postmarked October 27, 2000, addressed to Olga�s Lingerie & Corset Shop inviting Olga�s to its New York showroom for a �market week�. Respondent exhibited advertisements stating �we carry every major brand� including Chantelle.

In Koninklijke Philips Electronics N.V. v. Cun Siang Wang, (WIPO Case No. D2000-1778, March 15, 2001) it was said:

It is a widely recognized principle of trademark law, sometimes referred to as "exhaustion of rights", that the owner of a trademark cannot object to the resale of goods which it has placed on the market bearing the mark unless there is some good reason, such as interference which might affect the quality of the goods: see for example the decisions of the US Supreme Court in Prestonettes v Coty (1924) 264 US 359, the German Federal Supreme Court in Case I ZR 85/71 Cinzano v Java [1974] 2 CMLR 21 and the European Court of Justice in Case 16/74 Centrafarm v Winthrop [1974] ECR 1183. This principle reflects the fact that the primary function of a trademark is to identify the trade original or at any rate the person responsible for the quality of the product.

And further:

Where the principle of exhaustion applies, it has also been recognized that a trader is permitted to advertise goods using the mark under which they were placed on the market, provided that it does not do so in a way which causes confusion or damage to the reputation of the mark: see, for example, Volkswagenwerk v Church (CA9, 1969) 411 F2d 350, 161 USPQ 769, Case C-337/95 Parfums Christian Dior v Evora (ECJ, 1997) [1997] EC 1-6013 and Case C-63/97 BMW v Deenik (ECJ, 1999) [1999] ECR 1-905. If this is the position under the applicable trademark law or laws, the Panel considers that a trader in genuine branded goods can have a legitimate interest in using a domain name incorporating the brand name for a website promoting and selling the branded goods, provided that the trader does not use the domain name so as to cause confusion, for example by indicating that the website is approved by the brand owner. (Emphasis added).

The above principles support Respondent�s contention that Respondent does have a legitimate interest in having the domain name. The Respondent did not register the domain name in bad faith but had a legitimate interest.

Complainant must prove bad faith both at the time of registration and in the current use of the domain name. A close examination of Complainant�s filing does not provide adequate proof to support the allegation that Respondent acted in bad faith, both at the time of registration and in the current use of the domain name.

The Complainant�s arguments are inadequate on this criterion. The statements of Complainant do not prove that there was bad faith � both at the time of registration and in the current use of the domain name.

Although the Complainant has the burden of proving bad faith, and the Respondent does not have the burden of proving that there is not bad faith, there is evidence to prove that there was not bad faith.

Section 4(b) of the Uniform Domain Name Dispute Resolution Policy, provides that certain circumstances shall be evidence of bad faith, viz:

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

Respondent contends under this heading:

1. Neither Respondent, his company, nor any of their associates has registered or acquired the domain name in question for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

2. Neither Respondent, his company, their business activities nor any of their associates has registered the domain name in question in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Furthermore, neither Respondent, his company, their business activities nor any of their associates have engaged in a pattern of such conduct.

3. Neither Respondent, his company, their business activities nor any of their associates has registered the domain name for the purpose of disrupting the business of the Complainant or any competitor.

4. By using the domain name in question, neither Respondent, his company, their business activities nor any of their associates has attempted to attract, for commercial gain, internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant�s alleged mark as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on a website or location.

5. Neither Respondent, his company, their business activities nor any of their associates has ever sold or attempted to sell any domain name.

6. Neither Respondent, his company, their business activities nor any of their associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark / service mark.

The above assertions were supported by affidavits from the Respondent and one an Olga�s employee.

Complainant Reply

Respondent has given no evidence of authority from the Complainant to register any domain names in his own right.

Complainant knew of Olga�s as a distributor of its products but not of the Respondent who registered the names. No distributor is entitled under trademark law to register domain names using the Complainant�s mark. Respondent had no legitimate interest in the names. He must have known of the Complainant'� mark and its world-wide fame when he registered the names. He is benefiting from the fame of the Complainant�s well-known mark. See Chanel Inc. v Heyward (WIPO D2000-1602).

Respondent�s Further Submissions

Olga�s is a family business owned, managed and operated by Respondent and his mother. Respondent is Vice-President and secretary of the corporation. Respondent comes within para 4(c)(i) of the Policy (cit. supra). The fact that he registered the name as an individual to market his company�s wares does not disentitle him to the benefit of Para 4(c)(i) since he had a substantial connection with the business which legitimately markets the Complainant�s goods.

The lack of response by Respondent to the Complainant�s �cease and desist� letters is of no consequence. Complainant, on its own admission, did not know of Respondent�s connection with an authorised distributor. When the WIPO process commenced, Respondent duly provided an answer, unlike the situation in other cases.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no legitimate rights or interests in respect of the domain name; and

- The domain name has been registered and used in bad faith.

In the Panel�s view the domain names are confusingly similar to the Complainant�s marks. The mark "Chantelle" is clearly associated with women�s underwear. The mere addition of a name denoting a particular item of women�s underwear could confuse the internet user into thinking that the website was associated with the Complainant and with a particular category of its products, ie bras.

The situation is similar to that in UBS A.G. v book publishers Inc (WIPO D2001-0637). The mark "UBS" was well-known in respect of financial and banking services. Despite the addition in the domain name of the words "private banking", the name was held to be confusingly similar to the mark. See also to the same effect Harrods Ltd v A B Kohler & Co (WIPO decision D2001-0544, July 31, 2001) where the words "jewelry" and "watch" were added in the domain name to the mark "harrods".

The Panel does not find helpful references to broad general statements in previous decisions concerning the aim of the UDRP. Each case has to be considered on its own merits under the stated criteria. In the present case, the inference of confusing similarity between mark and domain names is not difficult.

With regard to the second criterion, it is usually sufficient for a complainant to allege that the Complainant has given no rights or interests in the marks to the Respondent, in the absence of any other evidence. However, in the present case the Respondent cites paragraph 4(c) of the Policy (supra). He supports his claim to a right or interest by asserting that, as a Vice-President of a company which legitimately retails the goods of the Complainant which is a wholesaler only, he is entitled to register and use a domain name incorporating the Complainant�s mark for a website promoting and selling goods branded with the mark, provided that the distributor does not use the website so as to cause confusion. Although the Respondent does not say why he registered the domain names under his own name and not that of the company, Olga�s which is the authorised retailer, the inference that he did so as some kind of trustee for the company is as easy to draw that he did so for his own personal gain. Where inferences are equally available to be drawn, the Panel must consider who bears the onus of proof.

This is one of those cases where the Panel considers that the Complainant has not discharged the onus of proof. The Complainant supplied only very brief documentation which, at first blush, indicated that the Respondent might well have been the archetypal cyber-squatter and not someone with whose company the Complainant had a business relationship.

Only a Court can properly determine the legitimacy of the Respondent�s allegations of legitimacy, which are however sufficient to deny the Complaint in the meantime on the grounds that the second criterion has not been established. The Panel is not able to determine disputed factual matters. The Respondent has sworn that he is not seeking to transgress in the ways set out in paragraph 4(b) of the Policy. Only a Court can test the genuineness of those assertions.

The extracts from the Philips decision (D2000-1778) (supra) are enough to justify this course. The Complainant has not tried to distinguish that case. The Panel has considered the Chanel case cited by the Complainant. That case was undefended. A similar result may have occurred in this case, had it been undefended. The situation may well be different in the future should Olga�s cease to be an authorized retail distributor for the Complainant. In that event, the Complainant may well be justified in submitting a fresh complaint on the grounds of changed circumstances since the first complaint was determined. It could be that there is some relevant provision in the distribution agreement (if any) between the Complainant and Olga�s. However, neither party adverted to a written agreement and the onus was on the Complainant to prove its case.

Respondent has filed affidavits asserting that neither he nor his associates have registered or acquired the names for the purposes of:

(a) Selling or renting;

(b) Misleadingly to divert customers;

(c) Tarnishing the Complainant�s mark;

(d) Attracting users to the site.

Because the Complainant has failed on the second criterion, it is not necessary to rule on the third criterion in Article 4(a) � relating to good faith registration and use. However, the Respondent would have had some difficult under this head. It would have been easy for him to have replied to the Complainant pointing out Olga�s distribution rights. It is not enough blithely to say that he did not need to reply. A timely and reasoned reply to a �cease and desist� letter is always helpful in establishing a defence of legitimacy.

7. Decision

The Panel declines to make any order transferring or cancelling the registration of the domain names and .

Hon. Sir Ian Barker QC
Sole Panelist

Dated: December 20, 2001

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