WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc.
Case No. D2000-1833
1. The Parties
The Complainant is: Chanel, Inc. doing business at 9 West 57th Street, New York, New York 10019, U.S.A. The Complainant is represented by Barbara A. Solomon, Esq., of Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, U.S.A.
The Respondent is: Mike Torres d/b/a National Promotions, Inc., a company located at Box 425, Miami, Florida 33283, U.S.A.
2. The Domain Names and Registrar
The domain names in dispute in this proceeding are <chanel21.com> and <chanelseven.com>.
The registrar for the disputed domain names is Network Solutions, Incorporated (NSI) located at 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on December 27, 2000 by e-mail and on January 4, 2001 in hard copy. On January 8, 2001, the Center requested that the Registrar, NSI, check and report back on the registrant for the domain names <chanel21.com> and <chanelseven.com>. On January 9, 2001, NSI verified to the Center that the registrant for these two domain names was the Respondent, National Promotions, Inc. (a/k/a "This Domain Name for Sale", with contact person Mike Torres).
On January 11, 2001, the Complaint was notified by e-mail and in hard copy to the Respondent and this proceeding officially began. Respondent did not file a Response within the twenty (20) day time period required by Rule 5, and was declared in default on January 31, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on February 7, 2001, and the Center proceeded to appoint the Panel on February 9, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The date for the Administrative Panel to forward its decision to the Center was set as February 22, 2001.
4. Factual Background
The Complainant, Chanel, Inc., claims to have owned and used the trademark "Chanel" in the United States for over seventy (70) years. It describes itself as a manufacturer, importer, and seller of luxury goods. Its products include women's and men's fragrances, cosmetics and skincare products, women's clothing and accessories, jewelry, watches, handbags and other leather goods. The Complainant states it had sales totaling hundreds of millions of dollars for 1999.
Among the Complainant's fragrances are Chanel No. 5, Chanel No. 9 and Chanel No. 19.
The Respondent registered the disputed domain names <chanel21.com> and <chanelseven.com> on February 2, 2000 and February 5, 2000 respectively.
On November 29, 2000, the Complainant sent two demand letters to the Respondent alleging trademark infringement against both domain name registrations (Complaint, Exhibit F), and insisting that the names be transferred to Complainant. The Respondent replied on November 29, 2000 that it had registered and "reserved" the disputed domain names for the television industry in conjunction with its business as a web developer (Complaint, Exhibit H). The Respondent denied any trademark infringement.
As a result, the Complainant has brought this proceeding seeking to gain control of the disputed domain names.
5. The Parties' Contentions
- The Chanel mark is famous, even iconic in the United States and the world. The Chanel fragrance trademarks consisting of Chanel and a numerical designation (No. 5, No. 9 and No. 19) also are famous.
- The Chanel marks are widely and expensively advertised.
- U.S. courts have held the Chanel mark to be "well known and distinctive."
- Respondent's domain names are confusingly similar to Complainant's fragrance marks.
- The Respondent did not have the Complainant's permission to register the disputed domain names.
- The Respondent registered the disputed domain names in bad faith, intending to sell them for more than it paid for them.
- The Respondent has registered many other domain names that infringe on other parties' trademark rights.
B. The Respondent
The Respondent did not file contentions as it did not file a response and is in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names <chanel21.com> and <chanelseven.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced a wealth of exemplary copies of its "Chanel" trademark registrations in the United States beginning in 1925 with appropriate renewal certificates. It will suffice to note: registration no. 195,360 dated November 18, 1924 for inter alia perfume and eau de cologne; and registration no. 1,348,842 dated July 16, 1985, in international class 3 for toiletries.
The Respondent, in registering the disputed domain names <chanel21.com> and <chanelseven.com>, copied the most distinctive portion of the Complainant's trademark and then tried to deceive the public into thinking his domain names were new siblings of Chanel's renowned numbered fragrances such as Chanel No. 5.
The Panel finds the Respondent's disputed domain names are confusingly similar to Complainant's famous trademarks.
Legitimate Rights or Interests
The Complainant denies ever having given the Respondent permission to use its domain name or ever having had any relation at all with the Respondent.
The Respondent is in default in this proceeding and thus did not attempt to prove a legitimate right or interest under the Policy (4(c)(i-iii)).
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain names.
Registered and Used in Bad Faith
The Respondent registered the disputed domain name <chanel21.com> listing as registrant "This Domain Name for Sale-Call 305-659-3157" at the same address as Respondent used for the disputed domain name <chanelseven.com> (Complaint, Exhibits A and B). Also, the Respondent has registered tens of domain names that include famous trademarks such as "Harpers", "Collins", and "Reader's Digest" (Complaint, Exhibit I). Based on these facts, the Panel finds the Respondent registered the disputed domain names with the intention of selling them to the Complainant or a competitor of the Complainant for far more than the Respondent paid for them, in violation of the Policy paragraph 4(b)(i).
The Panel finds the Respondent registered and was using the disputed domain names in bad faith.
Based on ICANN Policy paragraph 4(i) and Rule 15, the Panel finds the Respondent registered two domain names confusingly similar to the Complainant's numbered fragrance trademarks. Further, the Respondent has no legitimate rights or interests in the disputed domain names and registered and was using them in bad faith. Therefore, the Panel orders that the registrar NSI transfer the domain names <chanel21.com> and <chanelseven.com> from the Respondent, Mike Torres d/b/a National Promotions, Inc., to the Complainant, Chanel, Inc.
Dennis A. Foster
Date: February 22, 2001