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 James Hart of Bromley, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 8, 2011, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On December 8, 2011, GoD, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 December 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2012.
The Center appointed Joan Clark as the sole panelist in this matter on January 26, 2012. 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 trademark CHROME HEARTS registered in the United States on November 26, 1991, under registration number 1665791.
The Respondent is the owner of the disputed domain name , which was registered with the Registrar GoD on November 8, 2011 with a projected expiry date of November 8, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it and its affiliated company, Chrome Hearts Japan Ltd., are the worldwide owners of the CHROME HEARTS trademarks and service marks and that the Complainant is the manufacturer of Chrome Hearts-branded products and has established a chain of Chrome Hearts-named boutiques around the world. The Complainant asserts that it has been designing, manufacturing and selling artistically styled leather goods, apparel, jewellery, handbags, furniture and accessories since as early as 1989 all bearing the trademark CHROME HEARTS. The Complainant cites well-known entertainers who have been seen wearing Chrome Hearts-branded products and states that its products have been praised and recognized in numerous articles appearing in trade publications and publications directed to the general public around the world. The Complainant also states that its products have generated sales at retail of over a billion dollars, and that the CHROME HEARTS trademarks have come to identify in the United States and throughout the world high-quality leather fashions, jewellery and accessories designed and manufactured by the Complainant.
The Complainant further states it has been using the domain name since July 11, 1997.
The Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name, affirming it has not authorized or licensed the Respondent to use the CHROME HEARTS trademarks, that the Respondent is not commonly known by the disputed domain name and that there can be no legitimate business reason for the Respondent to own or use the disputed domain name.
The Complainant continues that the domain name was registered and is being used in bad faith, adding that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website on which the Respondent is selling counterfeit Chrome Hearts products, thereby wrongfully trading on the goodwill established by the Complainant in and to the CHROME HEARTS trademarks.
The Complainant has produced a print-out including many pages of the Respondent’s website for the disputed domain name which show products, in particular jewellery, described, for example, as “Chrome Hearts rings”, “Chrome Hearts pendants”, “Chrome Hearts silver earrings” (Annex 3 to the Complaint).
Furthermore the Complainant states that the Respondent is a “repeat infringer” of the CHROME HEARTS trademarks and that the Complainant previously filed a complaint against the Respondent based upon the Respondent’s ownership of the domain name , which the Respondent had used to advertise and sell counterfeit Chrome Hearts-branded jewellery. The Complainant states that the Center issued a decision in that matter in favour of the Complainant, awarding it ownership of the domain name . In addition, the Complainant refers to the wrong address information used by the Respondent in purchasing infringing domain names, and states that the given address in Bromley, United Kingdom, is not a real address for the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark CHROME HEARTS. The term “Chrome Hearts”, appearing at the very beginning of the disputed domain name before the generic term “outlet”, is the first, predominant and significant part of the disputed domain name and creates confusion with the trademark CHROME HEARTS.
The Complainant declares that it, and its affiliated company, Chrome Hearts Japan Ltd., are the worldwide owners of the CHROME HEARTS trademarks, and provides the date and registration number for the trademark CHROME HEARTS which it has listed as registered in the name of the Complainant in the United States, as well as other trademarks including CHROME HEARTS and designs also listed as registered in the name of the Complainant in the United States. Although the Complainant has not produced copies of the certificates of registration for these marks, the information contained in the Complaint has been certified on behalf of the Complainant and has not been refuted by the Respondent.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks CHROME HEARTS and CHROME HEARTS & Designs in which the Complainant has rights, and the first condition to be fulfilled for the Complaint to succeed has been met.
It is not necessary for the Panel to consider references to numerous other trademarks consisting of or including the trademark CHROME HEARTS, which the Complainant’s evidence indicates to be registered in the name of Chrome Hearts Inc. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and this assertion has not been refuted by the Respondent, who has failed to reply. In view of the statements of the Complainant and the absence of any evidence to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the second condition required to be fulfilled for the Complaint to succeed has been met. C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name shortly after this Complainant filed with the Center an earlier complaint against the Respondent for his use of another domain name . A decision was rendered in that case (Chrome Hearts LLC v. James Hart,WIPO Case No. DCC2011-0005) on November 18, 2011 in favour of the Complainant awarding it ownership of . The Respondent’s registration and use of the disputed domain name, so soon after his ownership of the domain name was challenged, indicates his determination to continue to use a domain name confusingly similar to the trademark CHROME HEARTS. The purpose of the registration and use on the Respondent’s website of the disputed domain name was clearly in this Panel’s view to lure Internet visitors to his website by confusing it with the Complainant’s widely used trademark CHROME HEARTS. This is all the more egregious as the products advertised by the Respondent on his website under the disputed domain name are claimed by the Complainant to be counterfeit Chrome Hearts products, a claim not refuted by the Respondent.
The Panel finds that the disputed domain name was registered and has been used in bad faith. The third condition required to be fulfilled in order for the Complaint to succeed has been met. 7. Decision
For 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 the Complainant.
Joan Clark
Sole Panelist
Dated: February 9, 2012
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