WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. AG v. Designer Exposure
Case No. D2000-1832
1. The Parties
The Complainant is Chanel, Inc., a company having a place of business at 9 West 57th Street, New York, USA.
The Respondent is Designer Exposure with an address at 14 Gillies Avenue Newmarket, Auckland, New Zealand.
2. The Domain Names and Registrar
The domain names at issue are <chanelclothing.com> and <chanelaccessories.com>. The domain name registrar is Registrars.com.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on December 27, 2000, and in hard copy on January 4, 2001.
On January 8, 2001, the Center transmitted a request for registrar verification to Registrars.com in connection with this case.
On January 8, 2001, Registrars.com sent via email to the Center a verification response confirming that the Respondent is the registrant and the contact for administrative, billing, and technical is Maria Williams with the same address as the Respondent.
On January 9, 2001, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On January 10, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by January 29, 2001. The notification was sent to the Respondent by courier and fax and to the administrative, billing and technical contact by email. The email appears to have been transferred without receipt of any "undeliverable" notice.
Respondent did not file a response by the due date. The Center sent a notification of respondent default to the Respondent by email on January 30, 2001.
Complainant elected a single-member Panel. On February 2, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist, and set February 15, 2001 as the deadline for issuance of a decision.
4. Factual Background
Because there is no response, the following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.
"(i) Chanel has used and owned the trademark and trading name CHANEL in the U.S. for over 70 years… Chanel is a recognized leader and one of the most recognized and respected names in the fields of beauty, fashion and accessories.
(ii) Complainant has built the value of the CHANEL mark through sales of millions of dollars of products bearing the CHANEL mark, and through extensive marketing and promotional activities over a period of more than 70 years. Chanel’s products include, among other items, women’s and men’s fragrance, cosmetics and skincare; women’s clothing and accessories; jewelry; watches; handbags and other leather goods…
(iii) Chanel’s clothing and accessories businesses are extraordinarily well known and the CHANEL mark is uniquely associated with such goods.
(iv) Chanel advertises its products, as well as its brand, on television, radio and in numerous magazines and print publications.
(v) Complainant sells and distributes its products through numerous channels of trade, including its own CHANEL retail stores, exclusive retail boutique stores, and exclusive department stores…Currently, there are in excess of 2500 outlets in the U.S. that sell CHANEL products.
(vi) …Chanel owns 29 registrations for the CHANEL mark in the United States some dating back to 1925 and all of which were issued before Respondent registered <chanelclothing.com> and <chanelaccessories.com>. Many of these registrations are for clothing and accessories. Of the 29 CHANEL registrations, 22 are incontestable meaning that under U.S. law, the registrations are conclusive evidence of Chanel’s exclusive rights in the CHANEL mark…
(viii) U.S. courts have held the CHANEL mark to be well known and distinctive…Chanel, Inc. v. Smith, 178 U.S.P.Q. 630, 631 (N.D. Cal. 1973).
(ix) In addition, in proceedings before WIPO, panelists have repeatedly recognized that the CHANEL mark is world famous. Chanel, Inc. v. Estco Technology Group, WIPO D2000-1126."
"(ii) Although <chanelclothing.com> and <chanelaccessories.com> were both registered on December 16, 1999, there are no active web sites attached to either domain name and it does not appear that there ever were any functioning websites. Instead, all that appears is a parking page that is provided by the registrar…
(iv) Respondent appears to be in the business of selling what it calls "designer recycled garments."…although the domain names at issue are owned by Designer Exposure of Aukland, New Zealand, Designer Exposure appears to be based in California. Although Designer Exposure purports to sell genuine designer goods, including those of Chanel, it has never received Chanel’s permission to do so nor has Chanel ever worked with Designer Exposure to ensure that Designer Exposure is selling bona fide Chanel merchandise as opposed to counterfeit or infringing merchandise.
(v) On August 29, 2000, Chanel, by outside counsel, sent a letter to Designer Exposure advising that the registration of the domain names violates the Uniform Domain Name Dispute Resolution Policy and requesting that the domain names be transferred to Chanel…Maria Williams, the Director of Designer Exposure, sent a letter on September 14 stating that they would respond formally by September 28…Despite the promise to provide a substantive response, no such response was ever forthcoming from Designer Exposure."
5. Parties’ Contentions
Complainant makes the following allegations. The factual elements of such allegations are generally accepted as true in the circumstances of this case in light of the Complainant's supporting documents and in the absence of a response from the Respondent. The legal issues are discussed in the next section of this decision.
In respect of the domain names being identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Complainant alleges that:
"(ii)…The existence of its numerous federally registered, incontestable, valid and subsisting registrations for the CHANEL mark in the United States Patent and Trademark Office…is sufficient to establish Complainant’s rights... the extensive use made by Chanel of its mark and trade name throughout the United States for more than seventy years, combined with the extensive sales and advertising under the CHANEL mark, make it abundantly clear that Chanel has significant rights in its CHANEL mark so that it can invoke the Policy.
(iii) Respondent's domain names chanelclothing.com and chanelaccessories.com incorporate without alteration Complainant's registered CHANEL mark making it confusingly similar to Complainant's CHANEL trademark…The fact that Respondent has added the generic terms "clothing" and "accessories" to the CHANEL mark only increases confusion given the strong association Chanel has with such products. The domain names are clearly meant to create an association with Complainant."
Complainant contends that the Respondent has no rights or legitimate interests in the domain names and relies on the following elements:
"(iv) First, the registrations were obtained after Complainant had obtained 29 federal trademark registrations for its CHANEL mark and after Complainant had been extensively using its CHANEL mark. Given that the CHANEL mark has been recognized by courts and WIPO as being famous, and given the substantial use of the mark in the U.S. where Respondent is located, there can be no conceivable bona fide or legitimate use of chanelclothing.com or chanelaccessories.com…
(v) Second, there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use chanelclothing.com or chanelaccessories.com each of which incorporates in whole Complainant's CHANEL trademark and each of which is clearly meant to refer to Chanel and its products…
(vi) Third, there is no evidence that Respondent is or has ever been known by the name Chanel or by either of the domain names. While Respondent was given the opportunity to explain why it adopted the domain names, it chose instead to ignore Chanel’s cease and desist letters, giving rise to the inference that Respondent has no legitimate rights.
(vii) Fourth, Respondent is not using the names in connection with a bona fide offering of goods or services, nor is Respondent making legitimate noncommercial or fair use of the names…
(viii) Fifth, although the domain names have been registered since December, 1999, Respondent has never established any functioning web site under either name. This failure to use the domain names further supports a finding of no legitimate interest…
(ix) Finally, Respondent lacks the right to use Complainant’s CHANEL mark as part of its domain names since chanelclothing.com and chanelaccessories.com falsely suggest that Chanel is or may be associated with the domain name registrant, may be authorizing or sponsoring any eventual web site at the names, or that Chanel is offering information about, selling, or guaranteeing materials sold at the web sites associated with the domain names or with the domain name registrant…
(x) Where, as here, the CHANEL mark is venerable and distinctive, it is not reasonably possible for Respondent to demonstrate any legitimate interest in a domain name consisting in whole or in part of the CHANEL mark. Indeed, by using the famous CHANEL mark as the primary and leading part of a domain name, Respondent seeks to use the fame of Complainant’s mark to entice consumers."
Complainant further alleges that the domain names were registered and used in bad faith by the Respondent based on a number of elements, the most relevant of which are:
"(xv) Fourth, bad faith can also be found from the fact that Respondent is located in the U.S. where Complainant has 29 registrations for the CHANEL mark. Clearly, Respondent knew of the fame of the CHANEL mark when it registered chanelclothing.com and chanelaccessories.com. Under U.S. trademark law, Respondent is deemed to have been on constructive, if not actual, notice of Complainant's rights in its CHANEL mark before it registered chanelclothing.com and chanelaccessories.com. Given this awareness, it is evident that the registration and use of the domain name was in bad faith. See Cellular One Group v. Paul Bryan, WIPO D2000-0028…
(xvi) Fifth, there can be no dispute that CHANEL is an immediately recognizable and famous mark that exclusively identifies Complainant. Indeed, courts and prior WIPO panels have already held this to be the case. Nor could there be any dispute that chanelclothing.com and chanelaccessories.com would be associated in consumers’ minds with Chanel. Given that Respondent has no connection with Complainant, has never been authorized by Complainant to use or register the domain names, has never been authorized to resell Chanel products and has never received any verification from Chanel that the goods it is selling are legitimate, the very fact that Respondent has registered chanelclothing.com and chanelaccessories.com establishes bad faith use and registration. In addition, the CHANEL mark and, by extension, chanelclothing.com and chanelaccessories.com, are so obviously connected with Complainant that the use of this domain name by someone who has no connection to Complainant or its goods or services suggests "opportunistic bad faith"…"
The Respondent did not contest the above allegations of the Complainant.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent 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 domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Similarity of the Domain Names and Trademark.
Complainant has established its rights in the trademark "CHANEL" with numerous trademark registrations in the USA (Complaint, Exhibit B).
This Panelist finds that <chanelclothing.com> and <chanelaccessories.com> are confusingly similar to the trademark "CHANEL". The addition of the generic terms "clothing" and "accessories" is not sufficient to avoid confusion: see Chanel, Inc. v. Estco Technology Group, Case No. 2000-0413 (WIPO, Sept. 18, 2000) (For the domain names "chanelstore.com" and "chanelfashion.com", the Panel held that "The addition of the generic terms "store" and "fashion" is not sufficient to avoid confusion.")
Therefore, the Complainant has satisfied the first requirement.
B. Respondent's Rights and Legitimate Interests.
The Complainant has established that the CHANEL mark is well known in the USA.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark. Therefore prior to any notice of this dispute, the Respondent had not used the domain names in connection with any bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain names or is making a legitimate noncommercial or fair use of the domain names within the meaning of Paragraph 4 (c) (ii) or (iii) of the Policy.
By not submitting a response, the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or a legitimate interest in the domain names.
Therefore, this Panelist concludes on the basis of the evidence of the Complainant that the Respondent has no rights or legitimate interests in the domain names.
C. Bad Faith Registration and Use.
The panelist is satisfied that the CHANEL trademark is very well known in most countries of the world, including the United States and New Zealand.
The Panelist finds that the Respondent knew or should have known of the Complainant’s mark at the time Respondent registered the domain names at issue given the widespread use and fame of the CHANEL mark: see Expedia, Inc. v. European Travel Network, Case No. D2000-0137 (WIPO, April 18, 2000); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, Case No. 2000-0226 (WIPO, April 3, 2000).
The domain names in dispute are so clearly connected with the well-known CHANEL mark that its very use by the Respondent who has no connection with Complainant’s names or products suggests opportunistic bad faith: see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, Case No. 2000-0226 (WIPO, April 3, 2000); Veuve Cliquot Ponsardin v. The Polygenix Group Co., Case No. 2000-163 (WIPO, May 1, 2000); GA Modefine SA v. Armani International Investment, Case No. D2000-0305 (WIPO, June 26, 2000), GA Modefine SA v. AES Optics, Case No. Case No. D2000-306 (WIPO, June 26, 2000).
In the circumstances, the Panelist is satisfied that in this case as well the "internet mechanics make it inevitable that many persons looking for the owners and originators of "Chanel" fashion products would end up at the Respondent's web sites..." (See Chanel, Inc. v. Estco Technology Group, Case No. 2000-0413 (WIPO, Sept. 18, 2000). As a result, the Panelist is satisfied that the Respondent can only have intended to profit from the Complainant's trademark in violation of Paragraph 4 (b) (iv) of the Policy.
Therefore, based on the Complainant’s evidence and in the absence of any response by the Respondent, bad faith can be inferred from Respondent’s registration and use of domain names consisting wholly or partly of the Complainant’s well-known trademark.
For the foregoing reasons, the Panelist holds:
(a) that the domain names are confusingly similar to the CHANEL trademark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) that the Respondent has registered and is using the domain names in bad faith.
Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panelist decides that the domain names <chanelclothing.com> and <chanelaccessories.com> must be transferred to the Complainant.
Thomas H. Webster