WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chanel Inc. v. hu, huzou, hpahg Case No. D2010-0283 1. The Parties
The Complainant is Chanel Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is hu, huzou, hpahg of the People's Republic of China. 2. The Domain Names and Registrars
The disputed domain name is registered with B, Inc. The disputed domain names , , and are registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2010. On February 24, 2010, the Center transmitted by email to Xin Net Technology Corp. and B, Inc. a request for registrar verification in connection with the disputed domain names. On February 25, 2010, Xin Net Technology Corp. and B, Inc. transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On March 1, 2010, the Center transmitted by email to the parties a communication in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. In response to a notification by the Center regarding the identity of the Respondent, the Complainant filed amendments to the Complaint on March 3, 2010 and March 5, 2010 respectively.
The Center verified that the Complaint together with the amendments to 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 the Respondent of the Complaint, and the proceedings commenced on March 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 1, 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.
The Panel notes the Complainant's request that English be the language of the proceeding, and further that the Respondent, although provided with copies of the Center's case-related documents in both English and Chinese, has not elected to respond to either this request or to the Complaint. Based on the evidence in the case file, the Panel also notes that the Respondent at one time used English exclusively to operate the websites at the disputed domain names. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English. 4. Factual Background
The Complainant is a company, which engages, in the manufacture, import and sale of luxury products including bags, shoes, clothing, fragrances, skin care products, jewelry, sunglasses and other accessories throughout the world.
The Complainant expended significant resources throughout the years in promotion and advertisement worldwide. Over the last five years, the Complainant has spent over USD250 Million on advertising and promotion.
The Complainant and its affiliated companies are the owners of multiple trademark registrations for the mark CHANEL around the world. For example: United States (hereinafter, “US”) trademark registration No. 0195360 – CHANEL, with the registration date of February 24, 1925; US trademark registration No. 0195360 – CHANEL & design, with the registration date of April 25, 1933; US trademark registration No. 0626035 – CHANEL, with the registration date of May 1, 1956; United Kingdom of Great Britain and Northern Ireland (hereinafter, “UK”) trademark registration No. 602372 – CHANEL, with the filing date of November 14, 1938; UK trademark registration No. 921775 – CHANEL, with the filing date of February 28, 1968; Chinese trademark registration No. 75977 – CHANEL, with the registration date of July 15, 2007; and many others.
The Complainant also has a presence on the Internet and is the owner of the following domain name, which contains the name “chanel” . The Complainant is using this domain name in connection with its activities.
The Respondent registered the disputed domain names on the following dates:
- was registered on September 27, 2009;
- was registered on November 6, 2009;
- was registered on July 2, 2009;
- was registered on July 12, 2009;
- was registered on June 9, 2009.
The disputed domain names used to resolve to a website which promoted the sale of goods and accessories that carried the CHANEL mark.
Currently, the disputed domain names resolve to a parking webpage, which offers pay-per-click links in various fields. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the CHANEL trademark, owned by the Complainant, seeing that they incorporate the trademark as a whole.
The Complainant further argues that it has exclusive rights to the CHANEL trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the CHANEL mark.
The Complainant further argues that the Respondent is not making a legitimate use of the CHANEL mark.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent promoted goods under the disputed domain names, which bear the CHANEL trademark, without the Complainant's consent. The Complainant argues that the disputed domain names are being used to connect to a website that traffics in counterfeit goods. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent was using the disputed domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its CHANEL mark and products at the time the Respondent registered the disputed domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a sound basis that the rights in the mark shown on the trademark certificate belong to its respective owner. The CHANEL trademark is registered in the name of the Complainant and its affiliated companies in various jurisdictions around the world. For example, US trademark registration No. 0195360 – CHANEL, with the registration date of February 24, 1925; US trademark registration No. 0195360 – CHANEL & design, with the registration date of April 25, 1933; US trademark registration No. 0626035 – CHANEL, with the registration date of May 1, 1956; UK trademark registration No. 602372 – CHANEL, with the filing date of November 14, 1938; UK trademark registration No. 921775 – CHANEL, with the filing date of February 28, 1968; Chinese trademark registration No. 75977 – CHANEL, with the registration date of July 15, 2007; and many others.
The disputed domain name differs from the registered CHANEL trademark by the additional words “bag” and “sale”, and the gTLD “.com”.
The disputed domain name differs from the registered CHANEL trademark by the addition of “bage” and the word “shop”, and the gTLD “.com”.
The disputed domain name differs from the registered CHANEL trademark by the additional words “hand” and “bags”, and the gTLD “.org”.
The disputed domain name differs from the registered CHANEL trademark by the additional hyphen and word “sale”, and the gTLD “.com”.
The disputed domain name differs from the registered CHANEL trademark by the additional word “sale”, and the gTLD “.net”.
The above captioned domain names integrate the Complainant's trademark CHANEL in its entirety, as a dominant element. The additions do not serve sufficiently to distinguish or differentiate these disputed domain names from the Complainant's CHANEL trademark, especially as they represent accessories, which are regularly sold under the CHANEL trademark by the Complainant, and services regularly rendered by the Complainant.
Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of a generic top-level domain (gTLD) to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” “.org” or “.net” are without legal significance since use of a gTLD is technically required to operate the domain names and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain names.
The result is that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CHANEL trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant, along with its affiliated companies, own registrations for the CHANEL trademark since the year 1925. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain names led Internet users to websites, which promoted the sale of accessories, some of which carried the CHANEL mark. The Respondent's use of the name “chanel” to promote similar or identical goods to the goods being sold by the Complainant clearly evidences that the Respondent registered these disputed domain names with knowledge of the Complainant and of the use the Complainant is making in the mark CHANEL and subsequent intent to trade off the value of these. The Respondent's previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made of these disputed domain names to offer quasi-identical goods to the ones the Complainant manufactures and markets (as well as counterfeit goods) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The disputed domain names currently resolve to a parking webpage, which offers pay-per-click links in various fields. Previous WIPO UDRP panels have asserted the following: “It appears clear in this case from the use made of the Domain Name that the Domain Name was registered with a view to taking advantage of “domain name parking” or “pay per click” services pages in order to generate revenue for the Respondent. It is now well-known how these sorts of “domain name parking” or “pay per click” service pages operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to those sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name … The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page” (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715).
The Panel cites the following similar case with approval:
And also, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic' bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Further, the disputed domain names are confusingly similar to the Complainant's trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the use of the CHANEL trademark in the domain names and the previous use made by the Respondent of the disputed domain names, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names 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 disputed domain names , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 14, 2010
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