'  '












 'BugTraq:   '





:

:


WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Christian Dior Couture & Chloé v. Konstantinos Zournas

Case No. D2008-1440

1. The Parties

The Complainants are Christian Dior Couture of Paris, France, and Chloé, of Paris, France, represented by Cabinet Sabatier, of Paris, France.

The Respondent is Konstantinos Zournas, of Athens, Greece.

2. The Domain Name and Registrar

The disputed domain name <chloedior.com> is registered with Moniker Online Services LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2008. On September 23, 2008, the Center transmitted by email to Moniker Online Services LLC. a request for registrar verification in connection with the disputed domain name. On September 23, 2008, Moniker Online Services LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on October 2, 2008. The due date for Response was October 22, 2008. The Response, below referred to as the initial Response, was received on October 20, 2008.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 30, 2008. 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.

On November 24, 2008, the Center issued Administrative Panel Order No. 1, in which the Panel noted that the Complaint was brought by Christian Dior Couture as the sole Complainant, claiming rights in the mark DIOR and that the disputed domain name apparently included not only the mark DIOR, but also the mark of a third party, Chloé, which the Complainant stated has rights in the trademark CHLOE. The Panel also noted that the Complainant had provided evidence of Chloé having consented to the transfer order sought by the Complainant. The Order also noted that in the Panel’s view, to the extent that the Complainant sought to rely on the CHLOE mark, it would be appropriate for Chloé to formally join the action as co-Complainant.

The Panel therefore invited the Complainant to amend its Complaint to include Chloé as a formal co-Complainant and to include such additional submissions (if any) that Chloé wished to put before the Panel, by December 1, 2008. The Respondent was granted 14 days from that date to file an additional response.

The Center acknowledged receipt of an amended Complaint on November 28, 2008, and thereby transmitted a copy to the Respondent. The Respondent filed an additional response with the Center on December 3, 2008.

The amended Complaint includes Chloé as a formal Complainant, so that Christian Dior Couture and Chloé are joint co-Complainants in these proceedings.

4. Factual Background

The Complainant Christian Dior Couture is the registered owner of the trade mark DIOR, inter alia registered for luxury and clothing-related goods as an international trade mark (No. 2R 156 609 in classes 14, 16, 18, 20, 22, 23, 24, 26, 28 and 34); a Greek trade mark (No. 120146 in classes 14, 18, and 25); and a French trade mark (No. 1214593 in classes 14, 25, and 34).

The joint Complainant Chloé is the registered owner of the trade mark CHLOE, inter alia registered for luxury and clothing-related goods as a community trade mark (No. 003683661 in classes 3, 9, 14, 18, and 25) and Greek trade marks (Nos. 62596 (stylized); 77064; 90536; 90549; and 85016, all filed on or before October 17, 1991).

The disputed domain name was registered by the Respondent on December 13, 2003.

5. Parties’ Contentions

A. Complainant

The Complainants by their amended Complaint assert that the disputed domain name is identical to the marks CHLOE and DIOR. By agreement, the co-Complainant Chloé has granted permission for a transfer of the disputed domain name to Christian Dior Couture.

The Complainants assert that the designations DIOR and CHLOE are arbitrary and distinctive and well-known trade marks in relation to which the Complainants have spent millions of dollars in advertising and promotion. The two marks at issue thus have come to represent very valuable goodwill for their owners. The Complainants assert that Christian Dior Couture and Chloé have a formidable presence on the Internet including by way of the websites <diorcouture.com> and <chloe.com>.

According to the Complainants, the disputed domain name is identical to the marks CHLOE and DIOR, in which the Complainant and Chloé have superior rights.

The Complainants assert that the Respondent registered the disputed domain name on December 13, 2003, when the fame of both relevant trade marks was already well established. The website to which the disputed domain name resolves contains links to adult material. The Complainant Chloé sent a cease and desist letter to the Respondent on July 16, 2007, requesting transfer of the disputed domain name. The Respondent in his reply of July 16, 2007 claimed that the disputed domain name referred to an actress in the adult content industry. On July 27, 2007 Chloé requested that the Respondent provide proof of that fact and of his affiliation with the actress and/or that he had rights to commercially use the disputed domain name, to which no reply has been received to date. The disputed domain name is not the name of the Respondent nor his business or trade name. He has not received a license, contract or authorization to register or use the disputed domain name from either or both the Complainants.

The Complainants assert that the use of the domain name containing a famous mark to route users to adult content websites is not a legitimate noncommercial or fair use. Further, the Respondent registered the disputed domain name with full knowledge of the Complainants’ prior use and ownership of the relevant famous marks, for the purpose of taking advantage of their notoriety to obtain financial gain from attracting viewers to his website.

According to the Complainants, the Respondent has registered and monetized numerous domain names, many of which incorporate famous trade marks owned by third parties.

The Complainants contend that the Respondent’s acts constitute bad faith under section 4(b)(iv) of the Policy. His use of the disputed domain name is causing great damage to the Complainants, in that it causes confusion and deceptively leads consumers to believe there is an affiliation between those parties and the Respondent. The Complainants allege that “Use of another’s trade mark to generate sponsored revenue from internet advertising is a ‘classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy’ and constitutes registration and use in bad faith.” (Citing McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353). In addition, the use of the disputed domain name is diluting the relevant trade marks by tarnishing them by association with unsavory and degrading material (citing NAF Claim No. 96466 and Ty, Inc., Complainant v. O.Z. Names, Respondent, WIPO Case No. D2000-0370 in support).

By reason of the Respondent’s acts the Complainants have been damaged and their businesses disrupted and irreparable harm will result if the Respondent is allowed to retain the disputed domain name.

B. Respondent

In the Response to the amended Complaint, the Respondent states that he has nothing to add to his initial Response in relation to the question of similarity between the Complainants’ marks and the disputed domain name. The initial Response asserted that the sole Complainant was (as was then indeed the case) Christian Dior Couture, which, according to the Respondent, the UDRP does not permit to file a complaint on behalf of Chloé. Thus the initial Response was mainly directed to the question of similarity with a domain name incorporating the Complainant Christian Dior Couture’s mark and the mark of an unrelated party which had not joined the Complaint. Of the three cases cited by the Complainant concerning domain names confusingly similar to two marks, two were according to the Respondent irrelevant as they concern companies about to merge or start a joint venture. In the third case, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 (concerning the domain name <viagra-nascar.com>), the panel only considered the Complainant’s mark in its analysis. The panel considered whether an order to transfer the disputed domain name would result in interference with a third party mark holder’s rights.

In terms of rights and legitimate interests, the initial Response asserted that the name “Chloe” is a very common first name and that the name “Dior” is a fairly common surname, including in the United States of America. On the Internet a number of people named Dior can be found, including ordinary people listed in White Pages and several Hollywood actors and adult performers. The Complainant cannot deny that Dior is a surname as its founder was Mr. Christian Dior.

Further the initial Response asserted that Chloe Dior is a real person, or at least the stage name of a real person who is an American porn actress. Adoption of stage names by actors was said by the Respondent to be a common practice, aimed at preserving anonymity in the adult industry. The initial Response provided examples of a number of famous actors who are known by stage names, such as Cary Grant. Four such actors have filed complaints under the UDRP and prevailed in relation to their stage names (citing inter alia Ice-T (Tracy Marrow p/k/a "ICE-T" v. iceT.com a/k/a Sverrir Geirmundsson, WIPO Case No. D2000-1234); Carmen Electra (Carmen Electra, a/k/a Tara Leigh Patrick v. Network Operations Center, WIPO Case No. D2003-0852); and Sade (HELEN FOLSADE ADU known as SADE v. QUANTUM COMPUTER SERVICES INC, WIPO Case No. D2000-0794)). The adult performer Chloe Dior has used that name since the start of her career in 2001, and continues to use it today. The name has become a distinctive common law mark indicating the source of her performance services.

The Respondent registered the contested domain name 2 years after Chloe Dior started her career in adult entertainment, 3.5 years before the email of demand received from Chloé, and 5 years before notice of these UDRP proceedings. The said Chloé Representative in correspondence with the Respondent also implicitly admitted that the person Chloe Dior existed and was known to be an adult actress.

The initial Response asserted that the Complainant has no greater right or legitimate interest in the name “Chloe Dior” than the Respondent himself.

The latter is admittedly not known as “Chloe Dior”. But the Respondent asserts that, as noted by many Panels in the past, the domain name owner does not have to be known as or formally associated with the name incorporated in the disputed domain name. The Respondent cites Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D2000-1532, “For all the reasons set out above, the users of the internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorized or in some way connected with the figure themselves” (also cited in support are Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313; The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; and Anna Nicole Smith c/o CMG Worldwide v. DNS Research, Inc., NAF Claim No. 220007).

According to the initial Response, a simple Internet search for “Chloe Dior” yields innumerable third party websites that have no connection with the Complainant Christian Dior Couture or Chloé. Instead the results are related to the actress Chloe Dior and her activities as an adult entertainer. Many other websites are dedicated to her (e.g. <xxxchloedior.org>), all of which have adult content like the Respondent’s website. The same result is obtained if “chloedior” is entered as a search term on Google. Many other domain names use the surname Dior (e.g. <kiannadior.com>, <christinadior.com>, and <delanadior.com>) and in Christian Dior Couture S.A. v. Domain Administrative Jeffbhav, WIPO Case No. D2002-0493, relating to <diore.com>, the panel held that on all the evidence it was not convinced that a person entering “www.diore.com” would reasonably assume that the given domain name would resolve to the Complainant’s website or one affiliated with it.

The Respondent further asserted in his initial Response that the failure of the Complainant to take action for a period of almost 5 years after registration of the disputed domain name also indicates that it did not believe its claims were truly warranted. Delay can make it difficult to infer bad faith (citing WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975); can amount to acquiescence and waiver of rights (citing Anna Nicole Smith c/o CMG Worldwide v. DNS Research, Inc., NAF Claim No. 220007,); and may be indicative of the fact that the great harm complained of is actually non-existent (citing Caracol Primera Cadena Radial Colombiana S.A. v. ABCSites, Inc., WIPO Case No. D2003-0880).

The Respondent asserted in his initial Response that he is a fan of the actress Chloe Dior and acquired the disputed domain name for that reason, and that he has the intention to put up a fan website about her in the future resolving to the disputed domain name. Therefore he has a legitimate interest despite the fact he is not commonly known by the disputed domain name nor has acquired a relevant trade mark. The fan site will not be about Christian Dior Couture but about Chloe Dior the actress, so it is irrelevant that the Respondent’s intention to start up a fan site does not create a legitimate interest in the DIOR mark or in the CHLOE mark. The Complainants have no rights in the actress Chloe Dior’s name. In WIPO Case No. D2000-1313 supra the respondent’s intention to establish a fan site was held to defeat a finding of abusive bad faith cybersquatting.

The initial Response asserted, and the additional Response repeats, that the Respondent is also a web developer and develops themed portals, and is using the disputed domain name temporarily in connection with third party paid search advertising and as an adult search portal. In his Response to the Amended Complaint he asserts that he owns other adult domain names such as <pornstars.info> and <barbitwins.com>.

The initial Response asserts that the Respondent uses the disputed domain name to provide links to adult websites because Chloe Dior is an adult performer who has featured in many movies. This, the Respondent asserts, supports his rights in the disputed domain name. Operating adult websites has been found to constitute legitimate use under the policy; citing, inter alia, Etam plc v. Alberta Hot Rods ( WIPO Case No. D2000-1654, where redirection to an adult site logically related to the domain name was found to be legitimate use); Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706; The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743; and Mattel, Inc. v. Konstantinos Zournas, NAF Claim No. 1203398. According to the Respondent the Complainant needs to do more than simply point to its mark and to lack of permission to use the mark DIOR to establish absence of a legitimate interest (citing Microsoft Corporation v. Avi Goldman, WIPO Case No. D2003-0044).

In his additional Response the Respondent adds, in relation to rights or legitimate interests, that there is another very similar case to the present, Sanofi-aventis, Aventis Inc. v. Allegra Bonner/Domains by Proxy, Inc., WIPO Case No. D2007-1618, relating to the domain name <allegrashock.com>, in which the respondent Allegra Shock was held to have rights or legitimate interests.

In terms of bad faith, the initial Response asserts that the disputed domain name was not acquired for the purpose of selling it to the Complainant. There was no evidence of an offer to sell to the Complainant for almost 5 years. There was no bad faith registration because Chloe Dior is a real person. The disputed domain name was not registered to prevent the Complainant using it because the Complainant (at that time only Christian Dior Couture) was not known as “Chloe Dior”, and had no such mark, so there cannot be a “corresponding” domain name being used in bad faith. Further the disputed domain name consists of a very common first name and surname, which again indicates absence of bad faith.

In the initial Response the Respondent admits that he has registered a number of domain names, but contends that that does not in itself constitute bad faith. He asserts that he acquires domain names with the intent to develop them and has many active websites. He has registered domain names incorporating common words, generic and short terms, useful phrases and geographical terms, which is not itself an act of bad faith and not an illegitimate business. The Respondent asserts that he has not engaged in a pattern of conduct of registering infringing domain names – registering a few, in the Complainant’s submission “questionable”, domain names does not amount to a pattern given the total number of domain names in the Respondent’s possession. A substantial portfolio is not objectionable per se, as has been found in a number of UDRP decisions (the Respondent cites, inter alia, Mercer Human Resource Consulting, Ltd., Mercer Human Resource Consulting Inc. v. Konstantinos Zournas, WIPO Case No. D2007-1425; Sustainable Forestry Management Limited v. SFM.com and James M. van Johns "Infa dot Net" Web Services, WIPO Case No. D2002-0535; Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445; and WIPO Case No. D2006-0975 supra).

The initial Response asserts that there is no evidence that the Respondent registered the disputed domain name with Christian Dior Couture in mind, as the latter’s mark (prior to the filing of the Amended Complaint) is DIOR and not “CHLOE DIOR”. Nor is the Respondent a competitor of the Complainant; as the actress Chloe Dior is in the adult entertainment field there is no incursion into the Complainant’s completely different field of activity. The Respondent asserts in his initial Response that he is making a legitimate commercial use of the disputed domain name without misleading intent and without intent to tarnish the (then only) Complainant’s marks. The Respondent’s website does not resemble the content or appearance of the Complainant’s websites. Someone looking for the Complainant would not visit the Respondent’s website. The Respondent is using the disputed domain name in the context of the text it contains, which refers to an adult actress, in line with the adult oriented contents of the website. No user would have difficulty distinguishing between the two websites.

Nor has the Respondent attempted to attract, by creating the likelihood of confusion with the Complainant’s mark, Internet users for commercial gain. There is very little likelihood of confusion. The “www.chloedior.com”website has nothing to do with fashion, and the two websites have coexisted peacefully for many years. His is a generic adult search page which was used as a holding or under construction page during the time the “fan page for Chloe Dior was designed and implemented’. There is no requirement that a domain name registrant use or have any use for a domain name at the time of registration, and that is so even for a domain name that might be similar to an existing trademark (citing PROM Software, Inc. v. Reflex Publishing, Inc., WIPO Case No. D2001-1154. The Respondent’s website is and was used as an adult webpage, as archived pages demonstrate, at the very least between 2004 and 2007.

The initial Response asserts that the Respondent uses the domain name in connection with a bona fide offering of goods and services, (i.e., providing links to adult DVDs and adult websites). The Respondent specializes in the development of Internet properties and portals and is not acting in bad faith. There is no linking through to clothes and shoes and the sole act of providing a generic directory webpage does not amount to bad faith. Use of a domain name to generate paid advertising has been found to be a legitimate commercial activity in other cases (citing e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031). Pay-per-click websites are not in and of themselves unlawful or illegitimate (citing Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489; Fratelli Carli S.p.A. v. Linda Norcross, WIPO Case No. D2006-0988; and McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc., WIPO Case No. D2007-0676). Adult click-through traffic by itself is not evidence of bad faith if there is no other evidence of bad faith, and there is none such here because Chloe Dior is indeed an adult entertainer. She is widely known as such and so nobody could be misled when visiting the Respondent’s website.

The Respondent asserts in his initial Response that the Complainant does not have unfettered rights to the surname Dior because of its trade mark registration. It cannot have superior rights or rights to the name of an adult entertainer named Chloe Dior, as it has no rights in any “Chloe Dior” mark. The Complainant’s rights do not extend to any services offered at the Respondent’s website nor is it likely to provide such services in the future.

Finally the initial Response refers to the very similar case of Aventis, Aventis Pharma SA v. Domain King, WIPO Case No. D2004-0977, as establishing very similar facts and being persuasive in his favour. In his additional Response, the Respondent makes reference to Sanofi-aventis, Aventis Inc v. Allegra Bonner/Domains by Proxy, Inc., supra, relating to the domain name <allegrashock.com>, in which the panel held that the domain name was not registered in bad faith.

The Respondent also seeks a declaration of reverse domain name hijacking on the part of the Complainant, in that the Complainant must have been aware of the reputation of the actress Chloe Dior, indeed this was implicit in some of the correspondence conducted on behalf of Chloé with the Respondent. The Respondent alleges that the Complainant was aware of material facts that it chose to ignore and failed to disclose in the Complaint, although they were material and honest practice in the context of the UDRP required their disclosure.

6. Discussion and Findings

For the complainant to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trade mark 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 used in bad faith.

These are cumulative requirements so that if the Complainant fails to satisfy one element, the remedy requested must be denied.

A. Identical or Confusingly Similar

By virtue of the Amended Complaint, Christian Dior Couture and Chloé are joint Complainants in this matter. The relevant comparison is therefore between the trade marks DIOR and CHLOE, and the disputed domain name. The latter wholly incorporates the two trade marks in an unaltered form and without any further additions. Each of the marks is noticeable and recognizable in the disputed domain name. The wholesale inclusion of the two marks renders the disputed domain name at the very least confusingly similar to the Complainants’ marks.

The Panel therefore finds that the contested domain name is confusingly similar to the Complainants’ trade marks DIOR and CHLOE.

B. Rights or Legitimate Interests

By virtue of the Policy, any of the following circumstances demonstrates a Respondent’s rights or legitimate interests in a domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent is not known by the name “Chloe Dior”, nor does he have authorization from either of the Complainants to use the trade marks DIOR or CHLOE in any manner. There is also no evidence before the Panel that the Respondent is affiliated with or has some authorization from the adult industry actress Chloe Dior to incorporate her name in the disputed domain name or to use it in any way. The website to which the disputed domain name resolves is a generic portal containing hyperlinks to adult content. The Respondent asserts that he intends to establish a fan site for the actress Chloe Dior, but has not yet done so. The Panel notes that the Respondent registered the disputed domain name in 2003 and has thus had ample time and opportunity to so develop the website, or at the very least submit evidence of his preparations to do so. This case differs from the <allegrashock.com> case, cited by the Respondent supra, as in that case the disputed domain name was owned by the person who went by that name.

The links on the relevant website do not directly relate to the actress Chloe Dior. When accessed by the Panel on December 16, 2008 none of the links appearing made any direct reference to Chloe Dior. The Panel is not persuaded that the Respondent uses or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Nor is the Panel persuaded that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Using a domain name incorporating famous marks to attract Internet users to a web site with what appears to be pay-per-click links to unrelated adult content is not a legitimate noncommercial or fair use. The website to which the disputed domain name resolves is not in fact a website particularly concerning the porn actress Chloe Dior, or containing any comment or particular reference to her, or links only referring to her, nor can it a fortiori be described as a fan site; it merely appears to provide links to other adult content.

The Panel notes that the Respondent’s initial assertion that the Complainant Christian Dior Couture has no rights to the name “Chloe Dior” is rendered somewhat moot by Chloé joining as a Complainant. Further the question at this point is what rights or interests the Respondent may have, not whether the Complainant has rights or interests (which in any event it does). Therefore the Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

By virtue of the Policy the following circumstances in particular, but without limitation, are evidence of registration and use in bad faith:

i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on the web site or location.

There is nothing before the Panel to indicate that the Respondent has registered the disputed domain name for the purpose of extracting some financial advantage out of either of the Complainants. Nor is there evidence that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

As to (ii) above, that the Respondent is a “domainer” with a substantial portfolio may indeed not be objectionable in itself; however, the problem lies with those domain names that incorporate famous trade marks in which the domainer has not demonstrated rights or legitimate interests. The Complainant lists a number which fall within that category and are shown in the registrar’s WhoIs to belong to the Respondent: <waltdisney.us>, <Disneyland.us>, <cnnes.org>, <lanvinparis.com>, and <panasonicdvd.com>. The Respondent makes no submissions about these domain names cited by the Complainant. However, he contends that a few questionable domain names do not a cybersquatter make, and cites a number of generic and unobjectionable domain names he owns. In the Panel’s view, that not all the Respondent’s domain names, or even the majority can be impugned does not mean there cannot be a pattern in the sense of paragraph 4(b)(ii). However, it is undeniable that a number of the various UDRP proceedings the Respondent has been involved in, have gone his way. The pattern of conduct of the Respondent, who is apparently an experienced domainer, is in the Panel’s view not sufficiently consistent either way to warrant a Panel finding under paragraph 4(b)(ii) in the present case.

There is a further difficulty here in that the Complainants are perhaps not likely to intend to reflect the marks in a corresponding domain name since there is no evidence that they are collaborators in matters other than these proceedings. There is no material before the Panel to indicate that they so intend.

Has by using the domain name, the Respondent intentionally attempted 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 his website or location? There is no evidence that the Respondent is providing links on the relevant website to any kinds of goods or services with which either of the Complainants are concerned. Rather the links all relate to adult content. The Respondent also submits evidence that an adult actress by the name Chloe Dior is prominent on the Internet. There is thus a possibility that the Respondent is seeking to gain advantage from association with that person to attract Internet users interested in adult content. The Respondent also asserts that the name “Chloe Dior” is both an ordinary and even common female name, and the name of a well-known adult actress, and he is thus acting in good faith in acquiring a domain name which incorporates it, and using it in the manner that he does.

There is a difficulty with both arguments, in that the Respondent has no association with the actress Chloe Dior, nor does the relevant website concern her particularly, nor is it concerned with that name in itself. The Panel is therefore not persuaded that pointing to the existence of the common name (if such it is), or the adult actress somehow establishes the Respondent’s lack of bad faith, in particular where the disputed domain name happens to coincide with the undoubtedly well-known trade marks of the Complainants. Further, an Internet user coming across a domain name including the trade marks CHLOE and DIOR may incorrectly think that there is some connection with the mark owners. In the Panel’s view a potentially significant number of consumers interested in fashion, may indeed be confused by the appearance of the two highly recognizable marks in the disputed domain name, into thinking some connection as to source, sponsorship, affiliation or endorsement with the Complainants exists.

In terms of acquisition in bad faith, the Respondent asserts that the adult actress Chloe Dior’s career started in 2001. However, how prominent she was at the time of registration of the disputed domain name in 2003 has not been precisely asserted. That the Complainants’ marks were well-known at that time, on the other hand, cannot be controverted. Therefore in the Panel’s view on the balance of probabilities the domain name was registered in the full knowledge of the Complainants’ goodwill in the marks and for the purpose of deriving some advantage from their distinctiveness and reputation. This conclusion is further supported by the evidence before the Panel that the Respondent has registered other domain names incorporating well-known trademarks.

The Respondent makes a number of other submissions. First, as to the contention that redirection is unobjectionable, this may well be the case in particular circumstances, but here there is no logical connection between the disputed domain name and the websites to which an Internet user is redirected, the latter not being particularly concerned with any person called “Chloe Dior”. Further, the Respondent points out that he is a legitimate web-developer and has various portal sites. However, that point is of no particular relevance to the nature of the website to which the disputed domain name resolves in this particular case. As to delay, this is not a case where a single trade mark is clearly copied in a domain name, and where a trade mark owner could be expected to have taken action earlier. Rather, there are two marks here belonging to distinct owners, which gives rise to additional complications and a less straightforward factual scenario. In any case, the fact that the two Complainants’ have joined in these proceedings goes towards establishing how seriously both parties regard the detrimental effect of the practice engaged in by the Respondent. The Panel is not persuaded that the delay should be held against the Complainants in the circumstances. Moreover, laches has frequently been held as generally not being applicable to UDRP proceedings.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

D. Reverse Domain Name Hijacking

By reason of the findings above, the Panel declines to make a declaration that the Complaint was brought in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <chloedior.com> be transferred to the Complainant Christian Dior Couture.


William A. Van Caenegem
Sole Panelist

Dated: December 22, 2008

 

: https://internet-law.ru/intlaw/udrp/2008/d2008-1440.html

 

:

 


 

:

:





!

, , .

, .