WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Sandy Goldman
Case No. D2000-1837
1. The Parties
Complainant is Chanel, Inc., a corporation located in New York, New York, U.S.A.
Respondent is Sandy Goldman, an individual located in Boca Raton, Florida, U.S.A.
2. The Domain Names and Registrar
The domain names at issue are <ishopchanel.com> and <ishopchanel.net> ("Domain Names").
The registrar is Network Solutions, Inc., Huntmar Park Drive, Herndon, Virginia, U.S.A.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on December 28, 2000. Respondent submitted its response on January 31, 2001.
On January 31, 2001, the WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as Panelist.
4. Factual Background
Complainant is a manufacturer, importer and seller of luxury products throughout the world. The CHANEL name and mark have been used in the United States for over 70 years. The name and mark is used for products and also for retail store services. As a result of extensive sales, advertising and media recognition the name and mark is well-known. The mark has been recognized as well-known and famous by the U.S. Courts and in prior proceedings under the ICANN Policy.
Complainant is the owner of many federal and international trademark registrations for the CHANEL mark, including registration in the U.S. dating back to 1925.
In June, 1999, Respondent developed a business concept using the name "iShopChannel". Respondent's plan was to provide cable and Internet video programming focused on Internet retailers. In connection with this plan, Respondent registered the domain name <ishopchannel.com> on June 19, 1999. Respondent later registered the Domain Names on August 28, 1999, because they were obvious misspellings of "iShopChannel". The Domain Names have not been used for an active site.
On August 29, 1999, Complainant sent a letter to Respondent demanding transfer of the Domain Names. Respondent offered to transfer the Domain Names if Complainant would pay $738 to cover the cost of registration and Respondent’s attorney's fees. Complainant refused and initiated this action.
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith.
Respondent claims he had a prior demonstrable business plan involving the use of <ishopchannel.com> and that the Domain Names were registered as misspellings of that name. Respondent further claims that the Domain Names were not registered or used in bad faith.
6. Discussion and Findings
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) 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
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) the domain name has been registered and used in bad faith.
A. Confusing Similarity
CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the phrase term, "ishop", is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business. See Chanel, Inc. v. Estco Technology Group, D2000-0413 (WIPO September 18, 2000)(finding <chanelstore.com> and <chanelfashion.com> confusingly similar to CHANEL). Therefore, I find that the Domain Names are confusingly similar to Complainant's mark as required under Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
This is an unusual case. Respondent claims that it had a prior demonstrable plan to use the name <ishopchannel.com>, which has not been objected to by Complainant. Respondent's claim is supported by the NSI registration records for that domain name and is corroborated by a mock up of the <ishopchannel.com> web page submitted by Respondent. The plans for the iShopChannel appear to be credible and do not appear to involve any attempt to trade on the goodwill of Complainant. Given that the registration of <ishopchannel.com> predates the Policy and the registration of the Domain Names by months, it is highly unlikely that the <ishopchannel.com> domain name would have been registered as a pretext to facilitate a future violation of Complainant's rights.
Assuming a demonstrable plan to make bona fide use of the name iShopChannel, we still must consider whether Respondent has a legitimate interest in the Domain Names. Respondent claims it has a legitimate interest in the Domain Names because they are obvious misspellings of the name he intended to use. Many other owners of valuable names and marks have found it useful to register common misspellings to help consumers find a desired site and to reduce the potential for confusion on the Internet. In the absence of evidence of a scam or scheme to infringe, it seems appropriate to find that this practice is legitimate and not an abusive use of a domain name, at least when the registrant has a demonstrable interest in the correctly spelled name.
Here, I believe that Respondent has shown a demonstrable plan to make bona fide use of the name iShopChannel, and therefore has a legitimate interest in that name. Based on that finding, I believe he has also shown a legitimate interest in registering what is likely to be a common misspelling of that name on the Internet. The facts do not demonstrate that the registration of <ishopchannel.com> or of the Domain Names was part of scheme of abusive registration. The iShopChannel name was registered over two months before the Domain Names. The Domain Names were never used or offered for sale prior to contact from Complainant. Respondent has not engaged in speculation concerning the sale of other domain names.
Based on these facts, I find that Complainant has failed to establish a lack of right or legitimate interest in the Domain Names as required under Paragraph 4(a)(ii) of the Policy.
C. Bad Faith Registration and Use
I also find that Complainant has failed to establish bad faith registration and use.
It does not appear that Respondent registered the Domain Names primarily for the purpose of selling them for profit. They were never used or offered for sale before Complainant contacted Respondent. Even then, Respondent was willing to transfer the Domain Names in exchange for reimbursement of its registration expenses and reasonable attorney’s fees. The amount requested does not seem in excess of out-of-pocket costs directly related to the domain names. It appears to be Complainant's position that a request for anything in excess of the actual registration cost is evidence of bad faith.
To support its position, Complainant relies on China Ocean Shipping (Group) Co. Ltd. v. Cao Shan Hui, D2000-0066 (WIPO March 28, 2000). That case, however, involved a demand for $9000 to transfer the domain name, and does not support Complainant here.
Respondent has not engaged in a pattern of conduct involving the registration and sale of domain names, and states without dispute that it has never engaged in the sale of other domain names. Respondent's registrations do not prevent Complainant from reflecting its mark as a domain name. Respondent is not a competitor seeking to disrupt Complainant's business.
Finally, Complainant admits that the Domain Names have not been used. Thus, it does not appear that Respondent is intentionally attempting to attract Internet users to its web site for commercial gain by creating confusion with Complainant's mark. While I am concerned that use of the Domain Names may indeed create confusion with Complainant, such use is not now taking place and Respondent has provided a plausible reason for registering the domain names that does not involve an intentional attempt to trade on Complainant's mark.
For these reasons, I find that Complainant has failed to show bad faith registration and use of the Domain Names.
This decision is based on the facts as presented and the provisions of the Policy. Further, the question of whether trademark infringement might result from use of the Domain Names is beyond the scope of the Policy and is not addressed by this decision. See Adaptive Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thornton, D2000-0006 (WIPO February 28, 2000); Credit Management Solutions, Inc. v. Collex Resource Management, D2000-0029 (WIPO March 17, 2000);
Complainant has failed to show that Respondent lacks any right or legitimate interest in the Domain Names or that the Domain Names were registered and used in bad faith. Therefore, I find in favor of Respondent and deny Complainant's request for transfer of the Domain Names.
Mark V. B. Partridge