ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chanel, Inc. v. shuai chi, chishuai Case No. D2022-5037 1. The Parties The Complainant is Chanel, Inc., United States of America, represented by SILKA AB, Sweden. The Respondent is shuai chi, chishuai, Singapore. 2. The Domain Name and Registrar The disputed domain name
is registered with GMO Internet, Inc. d/b/a DiscountDomain.com and Onamae.com (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 30, 2022. On January 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Whois Privacy Protection Service by onamae.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on January 10, 2023. On January 5, 2023, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On January 5, 2023, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on January 11, 2023. In accordance with page 2 the Rules, paragraph 5, the due date for Response was January 31, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2023. The Center appointed Masato Dogauchi as the sole panelist in this matter on February 15, 2023. 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 Whereas the Respondent has not submitted any formal response, the following information from the Complaint is found to be the factual background of this case. The Complainant is a subsidiary of the Chanel group, founded at the beginning of 20th century, which has been creating, developing, manufacturing and distributing ready-to-wear, leather goods, fashion accessories, eyewear, fragrances, makeup, skincare, jewelry and watches. The Complainant is the owner of, inter alia, a number of CHANEL trademarks such as: - United States of America Registration for CHANEL No 195360, registered on February 24, 1925; - United States of America Registration for CHANEL No 1079438, registered on December 13, 1977; - United States of America Registration for CHANEL No 1177400, registered on November 10, 1981; - United States of America Registration for CHANEL No 1241265, registered on June 7, 1983. The Complainant registered the domain name on March 12, 2013. However, the registration was let to expire on March 12, 2017. The disputed domain name was registered on August 24, 2022, and resolves to a webpage with some football-related posts referring to events which took place in the football season 2021/2022. The website refers to a company, with which the Complainant has no relationship. 5. Parties' Contentions A. Complainant The Complainant's contentions are divided into three parts as follows: First, the Complainant asserts that the disputed domain name is confusingly similar to its CHANEL trademark, since the CHANEL trademark is incorporated in full in the middle of the disputed domain name. Incorporation of the terms "active" and "outlet", which are both related to the Complainant's activities, together with the CHANEL trademark allegedly does not prevent a finding of confusing similarity. And, the generic Top-Level Domain ("gTLD") ".com" does not have capacity to dispel confusing similarity between the disputed domain name and the CHANEL trademark. Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not a licensee of the Complainant and it has not received any consent, permission or acquiescence from the Complainant to use its CHANEL trademark in association with the registration of the disputed domain name. And, no evidence is found that the Respondent has been commonly known by the term "activechaneloutlet" and owns any trademark rights in the term "activechaneloutlet". Third, the Complainant asserts that the Complainant's CHANEL trademarks were registered and have been in use well before the registration of the disputed domain name which was done on August 24, 2022. And, page 3 considering that the CHANEL trademark is famous all over the world and the same domain name with the disputed domain name was previously held by the Complainant, the Complainant contends that it is impossible to believe that the Respondent would have chosen the disputed domain name if the Respondent did not have the CHANEL trademark and the Complainant's activities in mind at the time of registration of the disputed domain name. The fact that the disputed domain name resolves to a webpage with some footballrelated posts referring to events which took place in the football season 2021/2022 shows that the disputed domain name is being used in order to misdirect Internet users searching for information about the Complainant. Furthermore, the Respondent's use of a privacy registration service for the disputed domain name is an additional indication for a finding of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the registration agreement. However, the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In the present case, the Registrar has confirmed that the language of the Registration Agreement is Japanese. The Panel determines that the language of this proceeding shall be English rather than Japanese on the following grounds: - the Complainant requested to that effect; - the Respondent surely has become aware of this case filed by the Complainant and did not reply to the notification in both English and Japanese by the Center that the Respondent was invited to indicate its objection, if any, to the Complainant's request for the language by the specified due date; - the disputed domain name is formed by letters in Roman characters (ASCII) and not in Japanese script; - the use of Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response from the Respondent. 6.2. Substantive Matters In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant's contentions and other evidence submitted by the Complainant. In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and page 4 (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the CHANEL trademark. The last part of the disputed domain name ".com" represents one of the gTLD, which is irrelevant in the determination of the confusing similarity between the disputed domain name and the CHANEL trademark. The CHANEL trademark in its entirety is found in the disputed domain name, which is same as the Complainant's trademark. Such inclusion is by itself enough to have the disputed domain name confusing similar to the Complainant's CHANEL trademark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Where the Complainant's trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0. Therefore, in this case, incorporation of the terms "active" before the CHANEL trademark and "outlet" after it, does not prevent a finding of confusing similarity. Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The above requirement provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests There is no evidence at all that shows the Respondent is commonly known by the name "activechaneloutlet". The Respondent is not affiliated with the Complainant or authorized or licensed to use the Complainant's CHANEL trademark. Since the Respondent did not reply to the Complainant's contentions in this proceeding, the Panel finds on the available record that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0. The above requirement provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith In consideration that the Complainant is one of the subsidiaries of a long-established, famous group of companies creating, developing, manufacturing and distributing ready-to-wear, leather goods, fashion accessories, eyewear, fragrances, makeup, skincare, jewelry and watches, and that the same domain name with the disputed domain name was previously held by the Complainant, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the trademark at the time of registration of the disputed domain name. Therefore, it is found that the Respondent registered the disputed domain name in bad faith. With regard to the requirement that the Respondent is using the disputed domain name in bad faith, it is found that the disputed domain name resolves to the website with some football-related posts referring to events which took place in the football season 2021/2022. No connection is found between the disputed domain name and the above contents of the website. The Complainant asserts in this proceeding that the disputed domain name is being used in order to misdirect Internet users searching for information about the Complainant. Since the Respondent did not reply to the above submissions, it is found that the disputed domain name is being used in bad faith. page 5 The above requirement provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied. ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied. 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. /Masato Dogauchi/ Masato Dogauchi Sole Panelist Date: February 27, 2023
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