Complainant is Shabby Chic Brands, LLC of Los Angeles, California, United States of America (“United States”, represented by Ladas & Parry, United States.
Respondent is Belle Escape, Donna Jensen of Granite Bay, California, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with FastDomain Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the Domain Name. On April 19, 2012, FastDomain, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the 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 Respondent of the Complaint, and the proceedings commenced on April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Response was filed with the Center on May 12, 2012.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 21, 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
Complainant’s predecessor was founded by designer Rachel Ashwell in 1989. Today Complainant has stores located in Santa Monica, California, and New York, New York, United States, and London, United Kingdom of Great Britain and Northern Ireland. The merchandise Complainant offers through its stores and authorized dealers includes bedding, furniture, accessories and vintage items. Complainant has authorized furniture dealers across the United States and Canada.
Complainant owns trademark registrations around the world for the mark SHABBY CHIC in its entirety or incorporating it. These United States trademark registrations include Registration No. 1,753,006 for SHABBY CHIC, (which issued on February 16, 1993 and covers retail furniture store services) and Registration No. 1,759,914 for SHABBY CHIC (which issued on March 23, 1993 and covers furniture, fabrics and linens for furniture and home furnishings, and unfitted fabric slip covers) both of which are incontestable (collectively, “the SHABBY CHIC Mark” or “the Mark”). Complainant also has owned the domain name since September 9, 1996, through which it advertises and promotes its Shabby Chic brand goods.
Respondent began selling furniture and home décor in 2008 through an online store at the website “”. Respondent sells furniture of various styles including cottage chic, French shabby chic, French country, Tuscan and coastal cottage. Respondent markets itself through its website using search engine optimization (SEO), social media and online advertising. Respondent has acquired dozens of keyword-URLs that map to the main style categories and furniture types on its website. Examples of registered domain names that are redirected to Respondent’s domain name or a page on the associated website include: , , , and .
Respondent registered the Domain Name on March 17, 2010. 5. Parties’ Contentions A. Complainant
Complainant owns trademark registrations for the SHABBY CHIC Mark worldwide, including in the United States, which demonstrate Complainant’s rights in the Mark under the Policy. The Domain Name incorporates the distinctive portion of Complainant’s SHABBY CHIC Mark in its entirety and merely appends the generic term “French”. Thus, it is confusingly similar to the Mark under the Policy. The addition of the gTLD “.com” serves no purpose in distinguishing the Domain Name from the SHABBY CHIC Mark because gTLDs are a functional necessity rather than an arbitrary trademark choice.
Without Complainant’s authorization or consent, Respondent registered a domain name that is confusingly similar to the SHABBY CHIC Mark and is using it to divert Internet traffic to its website “” through which it offers competing goods for sale. Numerous panels have found such use does not constitute a bona fide offering of goods or services under the Policy nor a legitimate noncommercial or fair use of the domain under the Policy. Complainant has not authorized, licensed or consented to Respondent’s registration and use of the Domain Name incorporating the SHABBY CHIC Mark or any confusingly similar variation of Complainant’s Mark in connection with the identical services that Complainant provides under its Mark. Furthermore, to Complainant’s knowledge, there are no current trademark applications or registrations in the name of Respondent for any mark incorporating the SHABBY CHIC Mark anywhere in the world. Moreover, nothing in the WhoIs information related to the Domain Name indicates that Respondent is commonly known by “shabby chic”.
Respondent registered and is using the Domain Name in bad faith insofar as the Domain Name is confusingly similar to Complainant’s SHABBY CHIC Mark and Respondent is using it to divert Internet users to a website through which it sells directly competing goods. Furthermore, Respondent was clearly aware of Complainant’s rights in the SHABBY CHIC Mark when it acquired the Domain because the Domain Name is confusingly similar to Complainant’s SHABBY CHIC Mark and Respondent sells goods through the associated website that are identical to those goods provided by Complainant under the Mark. The Panel should find that Respondent’s registration and use of the Domain Name despite actual or constructive knowledge of Complainant’s trademark rights, establishes Respondent’s bad faith registration and use of the Domain Name. B. Respondent
“Shabby chic” is a common interior design style where furniture and furnishings are either chosen for their appearance of age and signs of wear and tear or where new items are distressed to achieve the appearance of an antique. This type of furniture is sold by thousands of retailers that do not sell Complainant’s furniture but rather sell “shabby chic” style furniture made by numerous other manufacturers, for example: the websites “” and “www.french”. The “shabby chic” design predates the establishment of Complainant and it was not created by Rachel Ashwell, predecessor of Complainant. Respondent is using the term “shabby chic” as a genre of products or fair use under The Lanham (Trademark) Act, not a company or any specific product associated with it.
Respondent was launched in June 2008 and since its inception it has had a subcategory called “shabby cottage chic” products that incorporated the term “shabby chic” in the descriptions and numerous advertisements promoting its shabby chic style furniture. In March of 2010, Respondent registered the Domain Name that redirects anyone searching on the term “French shabby chic” to Respondent’s collection of French “shabby chic” style furniture. Yet Complainant is filing this proceeding nearly four years after Respondent’s launch and two years after Respondent registered the Domain Name, which indicates that no consumer confusion exists. The fact is that consumers understand that “shabby chic” is a style of furniture and décor that is broadly sold by hundreds of retailers. Moreover, given the high average order size for both Respondent and Complainant (Belle Escape’s average order size exceeds “$1,000”) and the importance a consumer places on buying a piece of furniture, customers will take great care in choosing the products sold by both companies.
There are dozens of domains that incorporate the phrase “shabby chic”, such as , or , none of which are registered by Complainant. Moreover, the domain name is registered by another company specializing in French “shabby chic” style furnishings and points to a website “” called Chichifurniture. Because there are hundreds of online stores selling “shabby chic” style furniture that incorporate the term “shabby chic” into the domain name or title, consumers understand that a URL which includes this term will lead them to a store that sells “shabby chic” style furniture and not just furniture made by Complainant.
Respondent has used terms like “shabby chic” and “French shabby chic” on the homepage, in its public blog and in advertisements since 2008. The term “French shabby chic” perfectly describes the style of furniture Respondent sells under the Vintage French category. This is the category that the website “www.” contains. This furniture has French forms (e.g., Louis XV, Baroque, Rococo) with an aged, cottage-style feel. Belle Escape is known for this type of furniture, whereas Complainant is not.
Respondent registered the Domain Name for the sole purpose of directing customers to the French “shabby chic” style furniture on its website. The term “shabby chic” is not exclusively associated with Complainant. It is a common design style that is broadly used to describe something new that has an aged look. Adding the generic term “French” to “shabby chic” denotes that Respondent’s furniture has a French form, such as Louis XV, Rococo or Baroque.
Registering keyword domain names is a common SEO technique that helps consumers find the right products when they search by an interior design style, such as coastal, cottage, French country, shabby chic or another style. Respondent has registered dozens of keyword domain names for the sole purpose of directing traffic to its website and not to re-sell them or prevent another company from promoting their mark or website. These domain names include: ; ; ; ; ; ; ; and . The fact that Respondent registered five keyword domain names (four related to French-style furniture) on the same day, March 10, 2009, demonstrates that it was not doing anything in bad faith against Complainant. 6. Discussion and Findings A. Supplemental Submissions
The Panel must determine as a preliminary matter whether Complainant’s Supplemental Filing and Respondent’s reply to it, should be considered, consistent with the Policy and the Rules.
No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental filings by either party to the administrative proceeding without leave from the Panel. Paragraph 12 of the Rules provides that in addition to the complaint and response, the Panel may request, in its sole discretion, further statements or documents from either of the parties. But the Policy and the Rules demonstrate a strong preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr.,WIPO Case No. D2000-0427.
If a party wants to file a supplemental submission, the better practice under the Rules is to first seek the Panel’s permission to do so and to provide an explanation of why a further submission is warranted. Custom Bilt Metals v. Conquest Consulting,WIPO Case No. D2004-0023. Appropriate reasons a party may proffer for requesting permission include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, the desire to bring new, relevant legal authority to the attention of the Panel, or the need to rebut factual arguments that could not have been anticipated in the Complaint. Id. Conversely, a mere desire to reargue the same issues already submitted is not a valid reason for additional submissions. Id. There are advantages of seeking permission first, including: (1) if the Panel determines that a further submission is warranted, requesting permission first provides the Panel with the ability to set a schedule that is fair to both parties; and (2) if the Panel decides not to accept a supplemental submission or to focus the scope of the submission, having the Panel’s input would save the parties some or all of the expense in preparing any further submissions. Id.
Complainant did not seek the Panel’s permission to file its Supplemental Filing nor did it explain why such a submission is warranted. In its Supplemental Filing, Complainant mentions in passing that the Parties corresponded before it commenced this proceeding. The record is silent, however, regarding whether Complainant might have known or anticipated the arguments Respondent raised here. Giving Complainant the benefit of the doubt, the Panel has assumed that Complainant may not have been aware of, or could not have anticipated, what Respondent would be arguing in order to address such arguments in the Complaint. Having reviewed Complainant’s Supplemental Filing with that perspective, the Panel has considered Complainant’s sections “Trademark Rights”, “Laches” and section on bad faith. The section on rights or Legitimate Interests sets forth in part legal background and argument that belonged more properly in Complainant’s prima facie case and the argument regarding whether Respondent “has been commonly known” does not seem properly responsive to Respondent’s arguments. Thus, for these reasons the Panel has not considered this portion of Complainant’s Supplemental Filing.
Respondent also did not seek the Panel’s permission to file its submission, but because the Panel has agreed to accept part of Complainant’s supplemental submission, the Panel must next decide whether to consider any portion of Respondent’s Supplemental Filing. The Panel has not considered Respondent’s sections on trademark rights or laches insofar as the information and arguments could have been provided in Respondent’s Response and was largely repetitive of what was provided therein. Insofar as the Panel did not consider Complainant’s section on rights or legitimate Interests it has not considered Respondent’s responsive section. B. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which it has rights.
Respondent maintains that the SHABBY CHIC Mark is generic. Complainant strongly opposes such a notion in its Supplemental Filing. The Panel finds that Respondent has not carried its burden of proving that the Mark is generic. Indeed, the Panel finds that Complainant has satisfied this element by virtue of the trademark registrations (e.g., Registration Nos. 1,753,006 and 1,759,914) for the SHABBY CHIC Mark issued by the United States Patent and Trademark Office that are now incontestable. As stated in the discussion following paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), the consensus view is: “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”
The Panel further finds that the Domain Name is confusingly similar to the SHABBY CHIC Mark insofar as the Domain Name incorporates the Mark in its entirety in the Domain Name and appends a generic or descriptive term to it. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”). Furthermore, the addition of the generic top-level domain (gTLD) “.net” is not a distinguishing element insofar as use of a gTLD is required, necessary and functional to indicate use of a name on the Internet. Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel therefore finds that Complainant satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy, Complainant is required to make at least a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Once that prima facie case has been made, the burden of production shifts to Respondent to show it has rights or legitimate interests in the Domain Name. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The burden of proof always remains on Complainant to establish that Respondent lacks rights or legitimate interests in the Domain Names. See paragraph 2.1 of the WIPO Overview 2.0. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice 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) has been commonly known by the Domain Name, even if it had not acquired 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.
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name for reasons that include: (i) Respondent registered a domain name that is confusingly similar to the SHABBY CHIC Mark without Complainant’s authorization or consent; (ii) Respondent is using the Domain Name to divert Internet traffic to its website at “” through which it offers competing goods for sale; (iii) Complainant has not authorized, licensed or consented to Respondent’s registration and use of a domain name incorporating the SHABBY CHIC Mark of a confusingly similar variation of the Mark in connection with the identical services that Complainant provides under its Mark; (iv) to Complainant’s knowledge, there are not current trademark applications or registrations in the name of Respondent for any mark incorporating the SHABBY CHIC Mark anywhere in the world; and (v) nothing in the WhoIs information related to the Domain Name indicates that Respondent is commonly known as “shabby chic”. The Panel finds that these allegations are sufficient to sustain the required prima facie showing that Respondent lacks rights and legitimate interests in the Domain Name.
Respondent argues that “shabby chic” is not exclusively associated with Complainant. Rather it describes a common interior design style where furniture and furnishings are either chosen for their appearance of age and signs of wear and tear or where new items are distressed to achieve the appearance of an antique. Respondent further maintains that the term “French shabby chic” perfectly describes the style of furniture it sells under the “Vintage French” category on its website (the category of furniture style that the Domain Name points to). According to Respondent, this furniture has French forms such as Louis XV, Baroque and Rococo with an aged, cottage-style feel. Respondent argues the term “shabby chic” is being used to refer to a genre of products not to refer to a company or any specific product associated with it.
Complainant takes umbrage with any notion that the SHABBY CHIC Mark is generic and rejects the idea that Respondent has a supportable argument that it has been known as “French shabby chic” or anything other than “Belle Escape”.
Pursuant to the consensus view for paragraph 2.2 of WIPO Overview 2.0 (“Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?”), factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include: the status and fame of the trademark; whether the respondent has registered other domain names containing dictionary words or phrases; and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning. The mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services) may not of itself confer rights or legitimate interests in the domain name. Normally, to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).
Although the parties dispute who originated the “shabby chic” phrase and when, it is clear from the evidence of record and the Panel’s own Internet searching that “shabby chic” is used ubiquitously on the Internet by many third parties on their websites or in their domain names to describe an interior design style and a style of furniture and furnishings (e.g., ; ; ; and ). With regard to furniture, for example, the style combines a “shabby” (e.g., by choosing furniture/furnishings for their appearance of age and signs of wear and tear or by distressing new furniture/furnishings to look like an antique), with a “chic” or “elegant” look. HGTV, a cable-television channel operating in the United States and Canada, sums up what is echoed on many websites: “Whether you call it cottage, English country or just plain romantic, shabby chic accessories and distressed furniture create a comfortably elegant home”. See “/shabby-chic-decorating/package/index.html”.
It is undisputed that since 2008, when Respondent began its on-line furniture business, Respondent has used terms like “shabby chic” and “French country” for example on its public blog . And it is undisputed that since Respondent registered the Domain Name in March 2010, it directs Internet traffic to its “vintage French” style furniture featured on its website. These uses were well before Complainant commenced these proceedings.
The Domain Name directs Internet traffic to Respondent’s website where it sells “Vintage French” style furniture which is further categorized into styles that include: “cottage chic”, “French chic”, “French shabby”, “shabby and chic”, “shabby chic” and “vintage French”). For purposes of search engine optimization, in addition to acquiring the Domain Name, Respondent has acquired dozens of other domain names that are descriptive of, and map to, its main style categories and furniture types such as , , , and . In fact, at the same time Respondent registered the Domain Name, it registered , , , and .
A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the disputed domain name is confusingly similar to the registered mark of the complainant. See, e.g., Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the products or services offered. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031. Respondent has presented sufficient evidence demonstrating that it is using the Domain Name based on its commonly used or relied upon meaning to describe the style of furniture and furnishings it is selling and not to trade off of Complainant’s rights in its SHABBY CHIC Mark.
Accordingly, the Panel finds that Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.
There is no evidence that Respondent has engaged in an abusive pattern of registering domain names to prevent Complainant or other trademark owners from reflecting their marks in corresponding domain names,1 or that Respondent registered the Domain Name primarily for the purpose of disrupting Complainant’s business or to sell the Domain Name to Complainant (and Respondent denies this). And while Respondent clearly is using the Domain Name to attract Internet users to its website for commercial gain, the record as a whole is consistent with Respondent’s use of the Domain Name in its common ordinary meaning or descriptive sense. See Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc.,WIPO Case No. D2012-0454 (concluding that Complainant failed to establish bad faith registration and use of the domain name at issue because, among other things, Respondent’s registration of the domain name “was akin to registering a common word as a domain name. In such an instance, a domain name holder generally acquires rights on a first-come, first served basis.”) The Panel is unable to conclude on the record before it that Respondent registered and is using the Domain Name in bad faith. E. Laches
Respondent seems to raise the issue of laches arguing that Complainant has filed this proceeding nearly four years after Respondent’s launch and two years after it registered the Domain Name which indicates no consumer confusion. Complainant first argues that the doctrine of laches does not generally apply in proceedings under the Policy citing to numerous cases. It further maintains that Complainant was not aware of Respondent’s registration and use of the Domain Name until July 2010 and it is within its right to take a reasonable period of time to pursue alternative methods to resolve the dispute, alluding to correspondence with Respondent. Furthermore, Complainant points out that Respondent has not shown that it has or will suffer injury due to the alleged delay.
Although courts in the United States have barred the recovery of damages on the theory of laches, they generally have not done so in trademark actions where the relief sought is prospective injunctive relief. See Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. As stated by that panel, “the remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches.” Id. However, the Panel notes the unanimous three-member panel decision in New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045 that laches is “a valid defense in any domain dispute where the facts so warrant.”
In the present proceeding, the Panel concludes that Respondent has not proven the defense of laches. 7. Decision
For the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Sole Panelist
Dated: June 5, 2012
1 The record reflects only that Respondent owns a number of other furniture style-related domain names comprised of common descriptive words or phrases.
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