WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chrome Hearts LLC v. Tony Lou Case No. D2009-0964 1. The Parties
The Complainant is Chrome Hearts LLC, of California, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is Tony Lou, of Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2009. On July 17, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 17, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 21, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 29, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2009.
The Center appointed Jon Lang as the sole panelist in this matter on September 3, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the owner of the CHROME HEARTS family of trademarks, registered for use with, inter alia, retail store services, apparel, jewelry, eyewear, handbag, and other fashion accessories. Included in its family of trademarks, by way of example, is the trademark CHROME HEARTS (Reg. No. 1,665,791) first used in July 1989 and registered in the United States of America on November 26, 1991, for Jewelry, bags, clothing and belt buckles. The Complainant has been using the domain name since July 11, 1997. During this period, the Complainant has spent substantial sums advertising and promoting its CHROME HEARTS-branded products and the CHROME HEARTS-named retail boutiques. 5. Parties' Contentions A. Complainant
The Respondent registered the disputed domain name, on October 20, 2008, (the Domain Name). It is “substantially identical” to the Complainant's domain name with the addition of the word “my” before “chromehearts”. The Respondent is primarily using the website to advertise and sell counterfeit CHROME HEARTS-branded merchandise on its Internet Store. The Complainant believes the Domain Name is identical or confusingly similar to trademarks and service mark in which Complainant has rights.
There can be no legitimate business reason for Respondent's use of the Chrome Hearts trademarks in connection with the Domain Name.
By using the Domain Name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site. Thus, the Complainant believes that the Domain Name has been registered and is being used in bad faith and creates a likelihood of confusion in the market place. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Domain Name incorporates the Complainant's trademark in its entirety but adds the word “my” immediately before it. The suffix “.com” is to be disregarded for comparison purposes so the issue is whether the addition of “my” turns what would otherwise be an identical Domain Name into one that is confusingly similar for the purposes of this element of the Policy.
In Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903, it was said “As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096 (“parts” added to mark EAUTO in ); Caterpillar Inc. v. Off Road Equipment Parts, NAF Case No. FA0008000095497 (“parts” added to mark CAT in ); Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd.,WIPO Case No. D2000-0995 (“-parts” added to mark KOMATSU in ).”
Whilst incorporation of a complainant's trademark in its entirety in a domain name containing other elements (e.g. “my”) will not always lead to a finding of confusing similarity, given the fame of the Complainant's trademark and its web presence, (most likely the reason for the Respondent registering the Domain Name in the first place) this Panel is of the view that the Domain Name is confusingly similar to the Complainant's trademark. In other words, an Internet user may form the view that the owner of the Domain Name is also the owner of the trademark to which it is similar, or at least that there is some form of association between the Respondent and the Complainant. The addition of “my” does little to distinguish the Domain Name from the Complainant or its trademark.
Other UDRP panels have reached similar results in this kind of case. For instance, in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 where the disputed domain name was and a transfer was ordered, the panel stated: “Therefore, the Sole Panelist finds that the matter in the Domain Name other than the Microsoft mark is non-distinctive and descriptive.” B. Rights or Legitimate Interests
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. There is no suggestion that the Respondent is licensed by or affiliated with the Complainant. A respondent can show it has rights to or legitimate interests in a domain name in other ways however. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the Domain Name and, given the website to which the Domain Name resolves which appears to be very much commercial in nature (selling similar products to that sold by the Complainant), it cannot be said that there is legitimate noncommercial or fair use. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that promotion of a website to which a confusingly similar domain name resolves and which has as its key offering similar (competing) products (jewelery) to that offered by the trade mark owner (using its trade mark for such purpose), could be a bona fide offering of goods or services.
In Drexel University v. David Brouda,WIPO Case No. D2001-0067 the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” This appears to be the case here.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. Indeed, there is no evidence before this Panel to contradict or challenge any of the contentions of the Complainant. This Panel finds therefore that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The burden to demonstrate such rights or legitimate interests therefore falls on the Respondent. As the Respondent has not come forward with a Response or taken any other action to address the Complaint, this Panel finds the Complainant has also fulfilled the requirements of this element of the Policy. C. Registered and Used in Bad Faith
It seems likely that the Respondent was aware of the Complainant and its marks when the Domain Name was registered. There seems to be no other obvious explanation for the Respondent to choose this particular name to register. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Again, this appears to be the case here. Accordingly, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jon Lang
Sole Panelist
Dated: September 16, 2009
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