WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Chanel, Inc. v. IGGI Networks, Inc.

Case No. D2000-1831

 

1. The Parties

Complainant is Chanel, Inc. ("Chanel") conducting its business at 9 West 57th Street, New York, NY 10019, U.S.A. Respondent is IGGI Networks, Inc. (" IGGI") whose address is 2255 Glades Road, Atrium 226, Boca Raton FL 33431, USA.

 

2. The Domain and Name and Registrar

The domain name at issue is <chanelmail.com> registered with Tucows.com, Inc., which is located at 96 Mowat Avenue, Toronto, Ontario, Canada M6K 3M1.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received a Complaint from Chanel on December 27, 2000 by email and on January 4, 2001 in hard copy. This Complaint was against Integroweb.com, whose address was listed in the Complaint as 5201 Blue Lagoon Drive, Eighth Floor, Miami FL. The Complainant made the required fee payments. The Center assigned this matter Case No. D 2000-1831.

On January 8, 2001 the Center requested Tucows to verify the registration data. On January 9, 2001, Tucows confirmed that it is the Registrar of the domain name registration and, inter alia, that Intergrow.com was at that time the current registrant. Integroweb.com was notified of the commencement of the administrative proceeding on January 10, 2001, both by Post/Courier and by email.

Counsel for Chanel thereafter inquired of the Center about the transfer of the registration of the domain name at issue to IGGI Networks, Inc ("IGGI"). Upon inquiry to Tucows, Tucows responded on January 23, 2001 that the registrant at that time was IGGI, whose address was given as 2255 Glades Road, Atrium 226, Boca Raton, FL 33431, USA. Tucows also stated " [ w] hen the request for verification was received [originally], the information was listed as Integrow Bahamas, however, that was an error on the part of our reseller. They had been having some payment disputes with the Registrant, and had, therefore, listed themselves as the Registrant. This should not have occurred, the information has been updated/changed back to the proper Registrant."

Complainant thereafter filed an Amended Complaint on IGGI by email on

January 30, 2001, with hard copy being received by the Center on January 31, 2001. IGGI was then sent the Complaint by email and by Post/Courier on February 1, 2001. Thus the official commencement of this administrative proceeding was on February 1, 2001.

Respondent never filed a formal response to the Complaint. A notice of default was sent to it on February 22, 2001.

On March 14, 2001, after having received a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panel to resolve this dispute (the "Sole Panelist").

This decision is based on the information contained in the above documents.

 

4. Factual Background

Complainant has been using its CHANEL mark for more than 70 years and has obtained 29 federal trademark registrations for this mark in United States, 22 of which are incontestable. CHANEL has been recognized as one of the most recognizable brands in the United States, as well as being featured in articles published worldwide. United States courts have also held the CHANEL Mark to be well-known and distinctive, as have courts in other countries. In addition, in proceedings before WIPO, panelists have recognized that the CHANEL mark is world famous. See Chanel Inc. v. Estco Technology Group, WIPO D2000-0413 and Chanel Inc. v. BuyBeauty.com, WIPO D2000-1126.

Respondent registered <chanelmail.com> on March 15, 2000. There has never been any relationship between Chanel and Respondent. On November 29, 2000, Complainant's counsel requested Integroweb to transfer the domain name to CHANEL. Benjamin Saenz from "info@integroweb.com" responded that he would not transfer the domain name as he intended to develop the WebSite domain for email services which had nothing to do with CHANEL. He offered to consider an offer which would be more interesting than to develop his Internet email service. Unless Complainant presented a more appropriate and polite latter, Mr. Saenz said to go ahead and spend money to sue him. After the "error" was reported by the Registrar, Complainant wrote IGGI a similar demand letter. No response was made to that letter.

 

5. Parties' Contentions

Complainant has requested that the domain name be transferred to Complainant because:

(1) the domain name <chanelmail.com> is identical or confusingly similar to marks in which Complainant has rights;

(2) Respondent has no rights or legitimate interests with respect to the domain names;

(3) Respondentís domain name was registered and used in bad faith;

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.

Jurisdiction and Procedure

In addition to jurisdiction over the subject matter of the dispute, it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

The Amended Complaint was returned to the Center with a notation of "wrong address". Also, the purported e-mail service on "postmaster@chanelmail.com" was not delivered. The email to "hostmaster@IGGI.net" was apparently delivered. This e-mail address was furnished by the Registrar for each of the Administrative, Technical and Billing Contacts.

On April 4, 2001, Respondent was notified of the new decision date of this matter. The e-mail was sent to "hostmaster@IGGI.net", as was the Amended Complaint earlier. In response to this notice, Mr. Gene Griswold, who identified himself as "Chairman, IGGI Networks, Inc.", responded by e-mail that "we have not received (sic) notice of this dispute. Please forward us (sic) immediately for resolution."

The Center did so on the next day by electronically sending the Notification of Complaint and Commencement of Proceeding, Notification of Respondent Default, Notification of Administrative Panel and Transmission of Case File. These were sent to genegriswold@aol.com; genegriswold@hotmail.com; genegriswold@yahoo.com; and hostmaster@iggi.net. Tracking information shows no indication that these documents were not received electronically (although the transmission to genegriswold@aol.com was not delivered).

The Notice of Respondent Default stated "The Administrative Panel will be informed of your default. The Administrative Panel will decide in its sole discretion whether to consider your Response (if submitted later) in deciding the case". No further communication has been received from Respondent.

In this case, the Sole Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of initiation of these proceedings and allowed sufficient opportunity for Respondent to respond. While some attempts to serve the Amended Complaint were unsuccessful, the e-mail service on "hostmaster@IGGI.net" was apparently successful. That Respondent no doubt received the Amended Complaint is shown by the fact that it responded to the new decision date notice sent to the same e-mail address. Even were the original service inadequate, however, Respondent has never replied to the Amended Complaint even after receiving it a month ago, nor requested any new responsive schedule to respond. Respondent was aware at that time that it was in default.

Therefore, this Panel has jurisdiction to decide this dispute as presented.

The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark

Complainant has not alleged that any of its trademarks or service marks are identical to Respondent's. The question is, therefore, one of confusing similarity.

The domain name <chanelmail.com> incorporates the entire registered mark CHANEL. Although the domain name incorporates another term, "mail", this generic term does not affect the prominence of the CHANEL mark. Internet users would be confused by believing that this site is somehow associated with CHANEL and is a place to send mail involving CHANEL.

Based on all of the facts of record, I find that Respondent's domain name <chanelmail.com> is confusingly similar to Complainant's trademarks or service marks. Therefore, the requirement of paragraph 4 (a) (i) is met.

Rights or Legitimate Interests in Respect of the Domain Name

Paragraph 4(c) of the Policy enumerates some ways in which a Respondent may establish rights to and legitimate interests in a domain name. These include the following circumstances: (i) before any notice to Respondent of the dispute, Respondentís 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Numerous facts exist here to show that Respondent can demonstrate no legitimate rights or interest in <chanelmail.com>.

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 and WIPO as being famous, and given the substantial use of the mark in the U.S. where Respondent is located, Respondent would be highly unlikely to be able to show any legitimate use of <chanelmail.com>. Guerlain S.A. v. Peking, WIPO D2000-0055; Chanel, Inc. v. BuyBeauty.com, WIPO D2000-1126 (noting that where the CHANEL mark has been recognized as being famous, there can be no legitimate use of a domain name incorporating the CHANEL mark by Respondent).

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 <chanelmail.com> which incorporates in whole or in part Complainantís CHANEL trademark. See e.g., Serta, Inc. v. Maximum Investment Corporation, WIPO D2000-0123; 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); Chanel, Inc. v. BuyBeauty.com, WIPO D2000-1126.

Third, there is no evidence that Respondent is or has ever been known by the name Chanel or Chanelmail.

Fourth, Respondent is not using the name in connection with a bona fide offering of goods or services, nor is Respondent making legitimate noncommercial or fair use of the name. Given these circumstances, Complainant has shown that Respondent has no legitimate rights or interest in chanelmail.com. See Deutsche Bank A.G. v. Diego-Arturo Bruckner, WIPO D2000-0277.

Fifth, although the domain name has been registered since March 2000, Respondent has never established any functioning web site. This failure to use the domain name further supports a finding of no legitimate interest. See World Wrestling Federation v. Bosman, WIPO D99-0001; Chanel, Inc. v. BuyBeauty.com, WIPO D2000-1126.

Finally, Respondent lacks the right to use Complainantís CHANEL mark as part of a domain name since <chanelmail.com> suggests that Chanel is or may be authorizing or sponsoring any eventual web site. See Motorola, Inc. v. NewGate Internet, Inc., WIPO D2000-0079. 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. See Ingersoll-Rand Co. v. Frank Gully, WIPO D2000-0021. Indeed, by using the famous CHANEL mark as the primary and leading part of a domain name, Respondent seeks to use the fame of Complainantís mark to entice consumers.

Bad Faith

The third element the Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."

The Policy provides in Paragraph 4(b):

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The following facts indicate that Respondent registered and has used the domain names in bad faith:

The fact that Respondent has taken Complainantís trademark CHANEL as the dominant part of the domain name <chanelmail.com> is evidence of bad faith. Chernow Communication, Inc. v. Jonathan Kimball, WIPO D2000-0119.

That Respondent has failed to use the domain name to sell or provide any goods or services is evidence of bad faith. See Chanel, Inc. v. BuyBeauty.com, WIPO D2000-1126.

That <chanelmail.com> domain name incorporates Complainantís registered CHANEL mark and is confusingly similar to Complainantís CHANEL trademark. This shows bad faith. U.S. consumers, almost all of whom have been exposed to advertising by Complainant, are likely to believe that the domain name is related to or associated with Complainant. By using Complainantís mark as the focal point of its domain name, Respondent is attempting to create an association with Complainant that does not exist and to usurp the fame of and goodwill in the CHANEL mark 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 <chanelmail.com> will be to cause confusion with Chanel, 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.

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 must have known of the fame of the CHANEL mark when it registered <chanelmail.com>. Under U.S. trademark law, Respondent is deemed to have been on constructive, if not actual notice, of Complainantís rights in its CHANEL mark before it registered <chanelmail.com>. Given this awareness, 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.

By knowingly choosing a domain name consisting of Plaintiffís CHANEL mark, Respondent intentionally created a situation at odds with the legal rights and obligations of the parties. The conduct of Respondent in registering <chanelmail.com>, is indicative that Respondent registered <chanelmail.com> in bad faith. See, e.g., San Rio Co. Ltd v. DLI, WIPO D2000-0159 (act of registering domain name identical to Complainantís mark led to finding of bad faith).

 

7. Decision

Complainant has proved the necessary elements of the Policy to obtain the relief requested, i.e., that the domain name is identical or confusingly similar to its trademarks and service marks; and that Respondent has no rights or legitimate interests in the domain name; and that Respondent registered the domain name in bad faith and is using it in bad faith.

Therefore, the domain name at issue here is hereby ordered to be transferred to Complainant.

 


 

Thomas L. Creel
Sole Panelist

Dated: April 16, 2001