WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chanel Inc. v. Software Outlet Case No. D2010-0177 1. The Parties
Complainant is Chanel Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Software Outlet of San Luis Obispo, California, United States of America. 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 February 5, 2010. On February 8, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 9, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 5, 2010.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on March 16, 2010. 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
Complainant has registered numerous trademarks for Chanel and variants thereof in relation to luxury products. Complainant's use of some of these trademarks dates back to at least 1925. In 2008, Respondent registered the disputed domain name. The disputed domain name leads to a “parked” web page at GoD with “Sponsored Listings” for various goods and services. 5. Parties' Contentions A. Complainant
Complainant asserts that it has numerous trademark registrations for CHANEL and variants thereof, dating back to at least 1925, that it has sold millions of dollars of products bearing the CHANEL mark, and that it has conducted extensive marketing and promotional activities for CHANEL products over a period of more than 70 years. Complainant asserts that Respondent registered the disputed domain name on April 23, 2008, and is using the disputed domain name to generate “pay-per-click” revenue from a “‘parking' website”. Complainant asserts that the incorporation of its entire CHANEL mark in the disputed domain name renders the disputed domain name identical or confusingly similar to Complaint's mark, and that the addition of the suffix “gift” “engenders confusion by suggesting that the site is Complainant's authorized website for the sale of Chanel items as gifts.” Complainant asserts that the disputed domain name was registered after Complainant's extensive use of its mark and after Complainant had obtained 29 U.S. federal trademark registrations for the CHANEL mark. Accordingly, Complainant asserts that Respondent's use of the mark, made without permission, could not be bona fide or legitimate. Complainant further asserts that there is no evidence Respondent is or has been commonly known by the disputed domain name, and that Respondent's only use of the disputed domain name is to “misdirect Internet traffic to competing retail and luxury goods companies and websites so that it can generate pay-per-click revenue” – allegedly satisfying both the “no rights or legitimate interests” and the “registered and is being used in bad faith” prongs of paragraph 4(a) of the Policy. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, panelists in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant's trademark registrations demonstrate that Complainant has rights in the mark CHANEL.
The disputed domain name consists of Complainant's CHANEL mark with the generic word “gift” appended to the end, plus the .com gTLD. The addition of a generic word to a trademark does not avoid confusing similarity to the mark. Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant's marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant's mark”). Similarly, the addition of the .com gTLD does not remove the confusing similarity between the disputed domain name and Complainant's trademark. Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003.
Complainant cites several decisions in which panels have found confusing similarity when a respondent adopted a domain name consisting of Complainant's CHANEL mark plus a generic word. Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 ( and confusingly similar to Complainant's mark); Chanel, Inc. AG v. Designer Exposure,WIPO Case No. D2000-1832 ( and confusingly similar to Complainant's mark); Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809 ( and confusingly similar to Complainant's mark); Chanel, Inc. v. IGGI Networks, Inc.,WIPO Case No. D2000-1831 ( confusingly similar to Complainant's mark). This Panel has identified several other decisions involving Complainant's CHANEL mark that have consistent holdings. Chanel Inc. v. Chenying,WIPO Case No. D2009-1705; Chanel, Inc. v. Domain Privacy Group, Inc. / Charlene Newport,WIPO Case No. D2009-0081; Chanel, Inc. v. LaPorte Holdings,WIPO Case No. D2005-0487; Chanel v. 1,WIPO Case No. D2003-0218; Chanel Inc. v. Bontempo,WIPO Case No. D2002-0721; Chanel, Inc. v. Sandy Goldman,WIPO Case No. D2000-1837 (finding confusing similarity but refusing to transfer domain names); Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc.,WIPO Case No. D2000-1833; Chanel, Inc. v. Uraina Heyward,WIPO Case No. D2000-1802; Chanel, Inc. v. B,WIPO Case No. D2000-1126. This Panel agrees that the combination of a generic word with Complainant's CHANEL mark and a gTLD such as .com is confusingly similar to Complainant's mark.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy. “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 [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent's] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by . Rather, the submissions attached to the Complaint indicate that Respondent is using the disputed domain name in connection with “sponsored links” to products that compete with Complainant's products. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009; Humana Inc. v. Henry Tsung,WIPO Case No. D2005-0221 (“Use for a portal linking to websites of the Complainant's competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the Complainant”).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he 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:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] 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 [Respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.”
Complainant asserts that Respondent's sponsored links satisfy bad faith factor (iv). The evidence shows that Respondent's website has sponsored links that offers goods and/or services for sale that compete with Complainant's goods and/or services. “The unauthorized use of Complainant's trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.” Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344; see also Etro S.p.A. v. Domain Registrations,WIPO Case No. D2006-0207; PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162; Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator,WIPO Case No. D2005-0322; Nintendo of America, Inc. v. P, Jerry Radl, and Fusion Media Solutions, Inc.,WIPO Case No. D2001-1020; Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 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 disputed domain name be transferred to Complainant.
Bradley A. Slutsky
Sole Panelist
Dated: April 4, 2010
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