WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Buybeauty.com
Case No. D2000-1126
1. The Parties
The Complainant is Chanel, Inc. ("Chanel"), 9 West 57th Street, New York, N.Y. 10019. The Respondent is Buybeauty.com., 395 Sussex Street, San Francisco, California 94131, United States of America (USA).
2. The Domain Name and Registrar
The domain name in dispute is buychanel.com. ("Domain Name") The registrar is Network Solutions, 505 Huntman Park Drive, Herndon, Virginia 20170-5139, USA.
3. Procedural History
Complainant filed its Complaint by email on August 25, 2000 and by hard copy on August 28, 2000. The Complaint was submitted in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). See Rules, para. 3(b). Complainant amended its Complaint on September 13, 2000 by email, with a hard copy received by the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2000. In accordance with Paragraph 4(a) of the Rules and Paragraph 5 of the Supplemental Rules, the Center verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. The Panel agrees with the Centerís assessment.
The file also reflects that payment in the required amount to the Center has been made by the Complainant.
On September 19, 2000, the Center properly notified the Complaint in accordance with paragraph 2(a) of the Rules. Respondentís Response to the Complaint was due on October 8, 2000, but Respondent failed to file its Response. On October 11, 2000, the Center notified Respondent that it was in default. Thereafter, the sole panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the Panel was properly constituted. On November 8, 2000, the Center notified the parties of the appointment of this Panel, and advised the parties of the projected decision date of November 22, 2000.
4. Factual Background
Respondent has defaulted. The Panel adopts the factual contentions of Complainant as set forth in Paragraph 5 below.
5. Partiesí Contentions
A. Complainant's Rights in the CHANEL Mark
Chanel has used and owned the trademark and trading name CHANEL in the U.S. for over 70 years. Chanel is a premier manufacturer, importer and seller of luxury products throughout the world. Chanel is a recognized leader in the fields of beauty and fashion and is one of the most recognized and respected names in fashion in the entire world.
Plaintiff 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. Chanelís products include among other items womenís and menís fragrance, cosmetics and skincare; womenís clothing and accessories; jewelry; watches; handbags and other leather goods. In 1999, Chanelís sales of these products totaled in the hundreds of millions.
Chanel advertises its products, brand, and image on television, radio and in numerous magazines and print publications. Chanel spent over $50 million in 1999 on advertising and promotion. Chanel runs ads in such nationally circulated magazines as Elle, Harperís Bazaar, Vogue, W, In Style, Town & Country, House & Garden, Gourmet, Travel & Leisure, Conde Nast Traveler, The New York Times Magazine, and hundreds of other national, regional, and local publications. In addition to plaintiffís own advertising efforts, CHANEL branded products are the subject of fashion editorials in magazines and on television. This coverage of both plaintiff and its products reaches millions of consumers nationwide.
Plaintiff sells and distributes its products through numerous channels of trade, including its own CHANEL retail stores (such as the world famous CHANEL store on Rodeo Drive in Beverly Hills), exclusive retail boutique stores, and exclusive department stores (including Neiman Marcus, Barneyís, Macyís, Nordstrom, and Saks Fifth Avenue). Currently, there are in excess of 2500 outlets nationwide that sell CHANEL products.
The CHANEL mark and trade name have been in continuous use for over 70 years. Chanel owns 29 registrations for the CHANEL mark in the United States some dating back to 1925 and all of which issued before Respondent registered the Domain Name.
The fame and recognition of the CHANEL mark has been noted by a 1999 Womenís Wear Daily survey that ranked CHANEL among the top 100 most famous brands. The fame of the CHANEL mark is also evidenced by the numerous references to the CHANEL mark in artwork, songs, movies, television shows, books, and other media.
U.S. courts have held the CHANEL mark to be well known and distinctive. See, e.g., Chanel, Inc. v. Smith, 178 U.S.P.Q. 630, 631 (N.D. Cal. 1973) (CHANEL mark has goodwill and esteemed reputation, is well-known and distinctive and was worth at least $100 million in 1973); Chanel, Inc. v. Italian Activewear of Florida, Inc., 931 F.32d 1472, 1474 (11th Cir. 1991) (Chanelís trademarks are well-known).
Given all of the above, Complainant has strong rights in its CHANEL mark.
B. Respondentís Activities
On November 17, 1998, Respondent registered the domain name buychanel.com. By the time Respondent registered this domain name Complainant had been using its CHANEL mark for more than 70 years and had obtained 29 federal trademark registrations for its mark in the U.S. In addition, as of the date the Domain Name was registered, the CHANEL mark had become among the most famous marks in the U.S. There is no evidence before this Panel of any rights to buychanel.com that are superior to Complainant's rights in the CHANEL mark as evidenced by Complainant's use and registrations. Nor is there any evidence that Respondent was unaware of the CHANEL Mark at the time it registered buychanel.com.
Although the Domain Name was registered on November 17, 1998, there is no active website attached to it. As of August 25, 2000, the only web page attached to buychanel.com was an advertisement for a domain name registration service as well as a notification that the site is under construction.
The Respondent Buybeauty.com has registered in excess of fifty domain names. Many of them use the verb "buy" in connection with a recognized famous trademark. Examples include buytiffany.com, buyclairol.com, buycalvinklein.com, buyvuitton.com, buyhermes.com, buywaterford.com, buyelizabetharden.com, buylancome.com, buyclinique.com, buygucci.com, and buycartier.com.
There has never been a relationship between Complaint and Respondent or between Complainant and Respondentís administrative, technical, zone and billing contact Robin Steele. Neither Buybeauty.com nor Robin Steele (Respondentís administrative, technical, zone and billing contact) has been authorized to sell Chanel product or to use the CHANEL mark in any capacity, including but not limited to as part of a domain name.
6. Discussion and Findings
In order to prevail under the Policy, Complainant must show that it has rights in the CHANEL mark; that the Domain Name is identical or confusingly similar to Complainantís CHANEL mark; that Respondent has no rights or legitimate interest in the Domain Name; and that the Domain Name was registered and used in bad faith. Here, Complainant has met its burden.
Complainant has strong rights in the CHANEL mark. The existence of numerous federally registered, incontestable, valid and subsisting registrations for the CHANEL mark in the United States Patent and Trademark Office is sufficient to establish Complainantís rights. See Bennett Coleman & Co., Ltd. v. Steven S. Lalwani, WIPO D2000-0014-0015. Moreover, 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 clear that Chanel has significant rights in its CHANEL mark so that it can invoke the Policy.
Respondent's domain name buychanel.com incorporates without alteration Complainant's registered CHANEL mark making the Domain Name confusingly similar to Complainant's CHANEL trademarks. See Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO D2000-0074; Serta, Inc. v. Maximum Investment Corp., WIPO D2000-0123. In a very similar case, a WIPO panel held that the domain name buyguerlain.com was identical to the GUERLAIN trademark. Guerlain S.A. v. H I Investments, WIPO D2000-0494. This Panel reaches the same result. As such, Complainant has satisfied the first element of the Policy that Registrant's domain name is identical or confusingly similar to Complainant's mark.
Moreover, there is no evidence that Respondent has a legitimate interest in or rights to use the Domain Name. First, the registration was obtained after Complainant had obtained 29 federal trademark registrations for its CHANEL mark and after Complainant had been extensively using its mark. See Fiber-Shield Industries, Inc. v. Fiber Shield LTD, NAF 1000092054. Given that the CHANEL mark has been recognized by courts as being famous, and given its substantial use in the U.S. where Respondent is located, "no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by Respondent." Guerlain S.A. v. Peikang, WIPO D2000-0055.
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 the Domain Name which incorporates in whole Complainant's trademark registration for CHANEL. Under the circumstances, Respondent cannot show legitimate rights or interests in the Domain Name. See e.g., Serta, Inc. v. Maximum Investment Corporation, WIPO D2000-0123. See also Guerlain S.A. v. H I Investments, WIPO D2000-0494 (no rights or legitimate interest found where Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for a domain name incorporating its trademark).
Third, there is no evidence that Respondent has used the name in connection with a bona fide offering of goods or services, Respondent is not commonly known by the Domain Name and Respondent is not making legitimate noncommercial or fair use of the name.
Fourth, although the Domain Name has been registered since November, 1998, Respondent has never established any functioning website. This failure to use the domain name further supports a finding of no legitimate interest. See World Wrestling Federation v. Bosman, WIPO D99-0001; Mary-Lynne Mondich v. Shane Brown, WIPO D2000-0004.
Fifth, Respondent owns in excess of 50 domain names many of which trade on and incorporate famous marks. The existence of so many domain names registered to a single entity suggests that the entityís business is not to legitimately use the domain names but rather to sell them or otherwise profit from them. See Stella díOro Biscuit Co. v. The Patron Group, WIPO D2000-0012; Nabisco Brands Co. v. The Patron Group, WIPO D2000-0032.
Finally, 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 of the CHANEL mark. See Ingersoll-Rand Co. v. Frank Gully, WIPO D2000-0021.
Complainant also has satisfied the final element of the policy that the Respondent registered and used the domain name in bad faith. First, as set forth above, Respondent has failed to use the domain name to sell or provide any goods or services. This is evidence of bad faith.
Second, Respondent's Domain Name incorporates Complainant's registered CHANEL mark and is confusingly similar to Complainant's CHANEL trademark. U.S. consumers, who have been exposed to advertising by Complainant, are likely to believe that the Domain Name is related to or associated with Complainant. Such confusion is only likely to increase because Respondent has combined CHANEL with the verb "buy" which suggests that the site is a commercial undertaking of Complainant designed to offer for sale goods under the CHANEL mark. See Parfums Christian Dior v. 1 Netpower, Inc., WIPO D2000-0022. By using Complainantís very mark as the focal point of its Domain Name, Respondent is attempting to create an association with Complainant that does not exist in violation of the U.S. federal law of trademark infringement and unfair competition, 15 U.S.C., ß 1052, et. seq. Because the ultimate effect of any use of the Domain Name will be to cause confusion, the use and registration of the Domain Name must be considered to be in bad faith. See Embratel v. McCarthy, WIPO D2000-0164; Forte (UK) Ltd. v. Ceschel, WIPO D2000-0283.
Further evidence of bad faith can be seen by Respondent's pattern of using famous marks as domain names. Respondent has registered in excess of 50 domains most of which include famous marks. Given this evidence it can be inferred that "Respondent's real business is to register third parties' trademarks as domain names thereby preventing bona fide trademark owners from doing business on the Internet under their trademark names . . . and that Respondent registers domain names in order to sell them for profit or that in any case it has considered this possibility." Guerlain S.A. v. Peikang, WIPO D2000-0055. Registrant cannot legitimately use all of these domain names. See J.P. Morgan v. Resource Marketing, WIPO D2000-0035 (and cases cited therein).
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. Respondent knew or should have known of the fame of the CHANEL mark when it registered buybeauty.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 obtained the Domain Name. 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. The fact that Respondent proceeded with the registration of a domain name that incorporates the CHANEL mark in its entirety supports a finding of registration and use in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO D200-0140.
CHANEL is an immediately recognizable and famous mark that exclusively identifies Complainant. Indeed, courts have already held this to be the case. Nor could there be any dispute that the Domain Name buychanel.com would be associated in consumersí minds with Chanel. Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use the CHANEL mark, the very fact that Respondent has registered buychanel.com establishes bad faith use and registration. See e.g. Pharmacia & Upjohn Company v. Moreonline, WIPO D200-0134. In addition, the CHANEL mark and, by extension, the Domain Name buychanel.com, are so obviously connected with Complainant that the very use by someone of this Domain Name who has no connection to Complainant or its goods or services suggests "opportunistic bad faith". Veuve Cliquot Ponsardin v. The Polygenic Group Co., WIPO D2000-0163.
Bad faith can also be found from the fact that the Domain Name itself, buychanel.com could be seen as an invitation to sell the name. See Microsoft Corp. v. Amit Mehrotra WIPO D2000-0053. The fact that Respondent is using the word "buy" in connection with the CHANEL mark, that Respondent has registered numerous Domain Names almost all of which use famous marks, and that the Respondent has never set up a website, all point to the conclusion that Respondent has registered buychanel.com, and all of its other names, solely with an intent to profit from the fame of the marks.
In the case of Guerlain S.A. v. H I Investments, WIPO D2000-0494, the panel was confronted with a similar situation, namely the registration of a domain name that consisted of the word "buy" combined with a famous mark. As with the case presented here, the domain name had been registered but not used. The panel had no trouble finding bad faith use and registration. The panel reasoned that respondent knowingly and purposely chose a name that is identical to complainantís mark; that complainantís mark is famous and widely used, as evidenced by trademark registrations; that the similarities between the complainantís mark and the domain name could not be a mere coincidence; that by knowingly choosing a domain name consisting of complainantís mark preceeded by the verb "to buy" respondent intentionally created a situation at odds with the legal rights and obligations of the parties; and that there was no evidence of any use, attempts to use or preparations to use the domain name. A comparable situation is present here. The panelís conclusion in the Guerlain S.A. case is equally applicable here, namely that "Respondent has registered the Domain Name for the purpose of attempting to attract, for commercial gain, Internet users to Respondentís website or other on-line location, by creating a likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location."
Based on all of the above, Complainant has met the requirements of the Policy and is entitled to the remedy it requested in its Complaint.
In accordance with Paragraphs 4(b)(i) of the Policy and 15 of the Rules, this Panel orders that the Domain Name, buychanel.com, be immediately transferred to Complainant.
Elliot E. Polebaum
Dated: November 22, 2000