The Complainant is Chrome Hearts LLC of Hollywood, California, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is Shangke of Fuzhou, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2011. On November 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 17, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On November 18, 2011, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 20, 2011. 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 a United States based company that engages in designing, manufacturing and selling of jewelry, leather clothing and furniture, under the mark CHROME HEARTS.
The Complainant was founded in the year 1989 and conducts its business in various cities around the world, including, New York, Tokyo, Paris, Honolulu, London, and many others. Since the year 1991, the Complainant has generated sales at retail of over a billion US dollars.
The Complainant owns, by itself and through an affiliate company, multiple worldwide trademark registrations for the mark CHROME HEARTS. For example: United States trademark registration No. 1665791 – CHROME HEARTS, with the registration date of November 26, 1991; Japanese trademark registration No. 4794003 – CHROME HEARTS, with the registration date of August 13, 2004; the People's Republic of China trademark registration No. 1548602 – CHROME HEARTS (logo), with the registration date of April 7, 2001; the People's Republic of China trademark registration No. 1548601 – CHROME HEARTS (logo), with the registration date of April 7, 2001; and many others.
The Complainant also developed its presence on the Internet and is the owner of the domain name , which contains the CHORME HEARTS trademark, since July 11, 1997.
The disputed domain names were registered by the Respondent on October 23, 2011.
The disputed domain name currently resolves to an offline webpage that displays a "Down for Maintenance" message. The disputed domain name used to resolve to an on-line marketplace, which offered for sale jewelry that appeared to be of the Complainant's, while using the CHROME HEARTS mark.
The disputed domain name currently resolves to a mirror website of the website under the domain name , which operates as an on-line marketplace that offers third party's clothing for sale. The disputed domain name used to resolve to an on-line marketplace, which offered for sale jewelry that appeared to be of the Complainant's, while using the CHROME HEARTS mark. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant argues that the disputed domain names are identical or confusingly similar to the Complainant's trademarks, as they wholly incorporates, as a dominant element, the Complainant's registered trademark CHROME HEARTS.
The Complainant further argues that customers throughout the world recognize the CHROME HEARTS mark with the Complainant.
The Complainant further argues that the disputed domain names are used to sell counterfeit copies of the Complainant's products.
The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain names, since the Respondent does not own relevant trademark registrations, and is not commonly known by the name "Chrome Hearts".
The Complainant further argues that the Complainant had not licensed or authorized the Respondent to use the disputed domain names or the Complainant's trademark.
The Complainant further argues that the Respondent has registered the disputed domain names in an attempt to attract Internet traffic for commercial gain, by intentionally misleading and creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names.
The Complainant further argues that the Respondent’s actions of misleading the public and selling counterfeit jewelry of the Complainant, demonstrate the Respondent's bad faith in registering and using 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. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain names is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain names consist of English words with dictionary meanings: "Chrome" and "Hearts";
b) The websites, to which each of the disputed domain names resolve, are operating, or used to operate, while using the English language;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of proceedings. B. 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 clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns, by itself and through an affiliate company, multiple worldwide trademark registrations for the mark CHROME HEARTS. For example: United States trademark registration No. 1665791 – CHROME HEARTS, with the registration date of November 26, 1991; Japanese trademark registration No. 4794003 – CHROME HEARTS, with the registration date of August 13, 2004; the People's Republic of China trademark registration No. 1548602 – CHROME HEARTS (logo), with the registration date of April 7, 2001; the People's Republic of China trademark registration No. 1548601 – CHROME HEARTS (logo), with the registration date of April 7, 2001; and many others.
The disputed domain names and integrate the Complainant's trademark in its entirety, as a dominant element. The disputed domain names differ from the CHROME HEARTS trademark by the additional word "us" and the additional gTLD suffix “.com”. The dispute domain name also differs from the CHROME HEARTS trademark by the use of hyphens between the three words.
The use of hyphens between the words "chorme", "hearts" and "us" in the dispute domain name does not avoid confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281). The use of the hyphens actually increases the confusing similarity between the disputed domain name and the Complainant's trademarks, as the hyphens function as spaces that exist on the Complainant's trademark.
The addition of the term "us" is also insufficient to avoid confusing similarity as it is a non-distinctive element that is potentially connected with the Complainant's market for its products.
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). See 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).
Also, the addition of the gTLD ".com" 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” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain names are confusingly similar to a trademark, in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain names, the responsibility of coming forward with evidence shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain names.
In the present case, the Complainant has demonstrated that the Respondent lacks 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 that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CHROME HEARTS trademark, or a variation thereof.
The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is 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. D. 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 performed by the Panel, the Complainant owns a registration for the CHROME HEARTS trademark since the year 1991. 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 evidence of bad faith registration and use by the Respondent, if by using the disputed domain names it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain names are resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain names resolved to.
The Complainant provided evidence proving that the Respondent is using the Complainant's trademark, as part of the disputed domain names, in order to intentionally attract Internet users to the website under the disputed domain name, for commercial gain:
The disputed domain name resolves to an on-line market place, which offers goods that are similar to the kind of goods offered by the Complainant.
The disputed domain name used to resolve to an on-line marketplace, which offered for sale jewelry that appeared to be of the Complainant's, while using the CHROME HEARTS mark.
Such use of the disputed domain names is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and the Complainant's use of its CHROME HEARTS mark. This also indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent’s 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”).
Furthermore, the disputed domain names are confusingly similar to the Complainant’s trademark. Previous 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 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 late registration of the disputed domain names, the use of the Complainant’s trademark in the disputed domain names and the similarity between the disputed domain names and the Complainant’s mark, 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. 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: January 3, 2012
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