WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Uraina Heyward
Case No. D2000-1802
1. The Parties
The Complainant is: Chanel, Inc. doing business at 9 West 57th Street, New York, New York 10019 U.S.A. The Complainant is represented by Barbara A. Solomon of Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017.
The Respondent is: Uraina Heyward, whose address is 3028 W. 29th Street, Apt. 4E, Brooklyn, New York 11224, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is: "chanelparee.com".
The registrar for the disputed domain name is: Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on December 29, 2000. On January 4, 2001 the Center requested that the registrar NSI check and notify the Center who the registrant was for the disputed domain name "chanelparee.com". On January 9, 2001, NSI reported to the Center that the registrant was the Respondent: Uraina Heyward.
On January 11, 2001 the Center notified the Respondent by e-mail and registered mail with the Complaint and this proceeding officially began. The Respondent did not respond within the twenty (20) day time period stipulated by the Rules, no. 5, and on February 1, 2001 the Respondent was declared in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on February 7, 2001, and the Center proceeded to appoint the Panel on February 9, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by February 23, 2001.
4. Factual Background
The Complainant is a manufacturer and seller of luxury goods. The Complainant states it has been using the "Chanel" trademark in the United States of America for over seventy (70) years. Complainant’s products include women's clothing and women’s and men’s fragrance, cosmetics and skincare products. The Complainant states it has been associated with Paris for years since its founder, Coco Chanel, lived in that city. The Complainant asserts it still maintains a significant corporate presence in Paris and that its packaging often refers to Paris.
The Complainant endeavors to sell its products only in upscale locations such as its own boutiques or other exclusive shops and department stores such as Nordstrom’s and Saks Fifth Avenue.
The Respondent registered the disputed domain name "chanelparee.com" on May 3, 2000. On November 29, 2000, Complainant’s legal counsel wrote to Respondent alleging trademark infringement and insisting that Respondent turn over the disputed domain name to Complainant (Complaint, Exhibit D). The Respondent replied through its legal counsel that the Respondent did not believe the Complainant had the exclusive right to use the name Chanel, and concluded "..my client will not acquiesce to your demand that she forgo all rights to the domain name "chanelparee.com." (Complaint, Exhibit E).
The Complainant is now seeking transfer of the disputed domain name "chanelparee.com" in this proceeding.
5. The Parties’ Contentions
The Complainant’s Contentions:
- The Chanel trademark is strong and famous and has been so adjudicated by United States federal courts.
- Complainant owns 29 registrations for the Chanel mark in the United States, all of which issued before Respondent registered the disputed domain name "chanelparee.com".
- Respondent cannot claim or show any rights to "chanelparee.com" that are superior to Complainant’s rights in the Chanel mark.
- The Respondent is making no use of the Chanel mark at the disputed domain name web page, nor is the Respondent otherwise using the name to make a bona fide offering of goods or services.
- There has never been any relationship between Complainant and Respondent that would give rise to any license, permission or authorization to use the Chanel mark.
- Respondent’s domain name "chanelparee.com" incorporates without alteration Complainant’s Chanel mark which makes it confusingly similar to Complainant’s Chanel trademark. The fact that Respondent has added the term "paree" to the Chanel mark does not alter the analysis, especially since "paree" connotes Paris, with which Chanel and the Chanel mark are inextricably associated.
- The fact that Respondent registered as a domain name a trademark as famous as Chanel is evidence of bad faith since the Respondent can not have been unaware of Complainant’s trademark rights.
- The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent is in default in this proceeding and thus did not file any contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name "chanelparee.com" transferred to it as it requests, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided exemplary copies of its United States principal register "Chanel" trademark registrations and renewals going back more than half a century. The Panel notes, for example: registration no. 1,571,787 dated December 19, 1989 international class 14 for watches; and registration no. 626,035 dated May 1, 1956 for women's handbags.
The Respondent has registered the disputed domain name "chanelparee.com", adopting the Complainant’s incontestably famous trademark Chanel and pairing it with an inventive spelling of the capital of France. The Panel agrees with Complainant that, instead of coining a new and distinct mark, misspelling Paris and adding it to Chanel merely compounds the confusing similarity with Complainant’s trademark since Chanel is automatically associated with France and Paris.
The Panel finds the disputed domain name is confusingly similar to the Complainant’s famous registered trademark.
Legitimate Rights and Interests
The Complainant disavows having given the Respondent authorization to use its trademark. The Respondent is in default and has made no attempt to show how it was using the disputed domain name. The record only shows that the Respondent registered the domain name and did nothing with it.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Policy's bad faith provisions (4(b)(i-iv) are illustrative and not exhaustive ("without limitation"). The Panel finds that the Respondent's conduct, while clearly in bad faith, does not fit the specific examples of the Policy.
The Panel agrees with the Complainant that the Chanel mark is so famous that Respondent had to know about it and that the registration of the mark as a domain name without any color of title or justification is proof of bad faith on the Respondent's part (see Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co. WIPO Case No. D2000-0163, May 1, 2000). The Panel also is convinced that, in coining the domain name "chanelparee.com", the Respondent intentionally compounded the confusion that would result from its adopting the Complainant's famous mark. The Panel also finds the Respondent is in bad faith because it hoarded or warehoused such a famous and valuable mark as a domain name without any legitimate interest in the mark (Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218, June 14, 2000).
To summarize, the Panel finds the Respondent in bad faith registered and used a confusingly similar trademark in which it had no legitimate rights or interests. Therefore, based on the Policy 4(i), the Panel orders that the registrar NSI transfer the disputed domain name, "chanelparee.com", from the Respondent, Uraina Heyward, to the Complainant, Chanel, Inc.
Dennis A. Foster