WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel Inc. v. Bontempo
Case No. D2002-0721
1. The Parties
Complainant is Chanel Inc., New York, New York 10019, United States of America ("USA").
Respondent is Mr. D. P. Bontempo, Pasadena, CA 91105, USA.
2. The Domain Names and Registrar
The domain names at issue are <chanelbags.com> and <chanelpurses.com>.
The Registrar is direct NIC.com with an address at Intercosmos Media Group, Inc., 650 Poydras Street, Suite 2311, New Orleans, La 70130, U.S.A fax 604-566-0484 and email address of legal/directnic.com.
3. Procedural History
This administrative proceeding was brought in accord with the ICANN Uniform Name Dispute Resolution Policy datedapproved on October 24, 1999, (the "Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated approved on October 24, 1999, (the "Rules"). The Complaint was received by email by WIPO Arbitration and Mediation Center ("the Center") on July 31, 2002, and in hardcopy August 5, 2002.
The Center has verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. The Center reports that it has received payment in the required amount from the Complainant.
In accord with the Rules Paragraph 4(c) the formal date of the commencement of the administrative proceeding is August 6, 2002.
On August 26, 2002, the Center received a Response dated August 18, 2002, from Respondent David Park Bontempo which I have considered. A receipt of that Response was acknowledged by the Center August 28, 2002.
4. Controlling UDRP Policy
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
5. Factual Background
Complainant Chanel Inc. owns some 29 U.S. registrations of the trademark Chanel as applied to perfumes, and among other things, ladies bags and purses. These extend back more than 70 years. As of the date of the registration by Respondent of the domain names on March 25, 2001, Complainant was selling goods under its Chanel mark in hundreds of locations in California where Respondent is located and the Chanel mark had become among the most famous marks in the U.S. In previous domain name disputes CHANEL had been held to be "famous". That it is famous and was famous at the time of Respondent's domain name registrations and uses, and that he had knowledge of its fame at the time of the two domain name registrations in issue and their uses, is not contested by Respondent.
There is not a single "Chanel" surname in the residential telephone directory of the City of Houston, estimated at over four million multi-language and multi-ethnic population; whereby except for girls named after the long famous mark for ladies things, it is unlikely to be a person's real name rather than a nick name.
One March 25, 2001, Respondent registered the two domain names in issue. The registration information presented in evidence does not show a corporation, a company or a partnership with a girl named Chanel, did the registration.
Respondent Bontempo, a hair styling studio operator (domain name <bontemposhairstudio.com>), registered over 120 domain names, at least the vast majority of them were never used on and in connection with any marketed product. Contrast Chanel which has been well known to me, a man, on products for ladies since I was a child. At least some of the 120 domain names, (e.g., <polofirm.com>) are domain names as to which Respondent does not and others do own registrations of corresponding very well known if not famous trademarks (e.g. POLO), and Respondent advertises the POLO domain name as "for sale". Some other person owns a registration of the trademark KATESPADE, and Respondent owns the domain name <k"Katespade.oOrg>." which he uses to link to his Hair Studio's domain name <bontemposhairstudio.com>.
As a matter of incidental thought, what does a person do with 120 domain name registrations, at a time when he does not know that he can sell them as Respondent learned he could from an Italian merchant who could not reasonably be expected to explain correctly the circumstances where such a sale would be improper?
The only websites that have been attached to the domain names in issue are (1) for <chanelbags.com>, a generic web page supplied by the registrar that bears the heading "For Sale," a sign stating "this domain is FOR SALE," and the statement "www.chanelbags.com is For Sale . . . interested parties should contact email@example.com". firstname.lastname@example.org is an e-mail address for the administrative, billing and technical contacts for the Respondent, D. P. Bontempo. The same story applies to the second name in issue, <chanelpurses.com>.
Respondent asserts that his fiancée was Chanel Louise Wright, and they together at one time also had an e-commerce business and he owned "wholesalepurses.com" used in that internet business, selling bags and purses. But he and Chanel broke up (we don't know when relative to the March 2001, domain registration), he took over the business (we don't know when), and he didn't want her name (we don't know when) on the business he was operating (presumably after the breakup), so he used "wholesalepurses.com". I have no hard evidence of Ms. Chanel Louise Wright's ownership interests in the business, nor when and how she got it, nor when and by what legal vehicle she lost it relative to the time of the "chanelbags/chanelpurses.com" registrations.
Respondent states that he and his girlfriend/fiancée Chanel
"narrowed it (the choice of original title of our business) down to the
following three choices:
"Chanel and I used wholesalepurses.com because of the fact that Chanel
and I broke off our wedding engagement and I did not want her name
on my business, which I was now solely operating."
This is information solely in Respondent's knowledge, and it states inter alia, that after the "narrowing down" (an act occurring before any recited actual sales of bags/purses or uses of the marks/names)--
--"after the narrowing down to …three choices . . . Chanel and I used wholesalepurses.com because of the fact that Chanel and I broke off our wedding engagement . . . "
That is a pretty clear expression that neither she nor the business in which she is recited to have had some unknown and unproved participation, nor Respondent, ever used one of the "Chanel" names in issue as a trademark on bags or purses.
The photographs of ladies purses and bags which appear to be represented as Respondent's products, there is no evidence of a product bearing the Chanel mark ever having been sold, and no evidence of when and by what entity with what ownership, those those bags in the Respondent's pictures might have been made or sold. As elsewhere appears, the use of the domain names were was to forward people who "hit" the site from the domain name to Respondent's office and/or hair salon.
Respondent advertised on the web that the two domain names in issue were "for sale".
Further, upon being charged with impropriety by Complainant in a letter, Respondent replied:
"Chanel is my girlfriend's name and together we owned a wholesale handbag company.
"Several individuals have shown interest in owning these domain
names, one of which is based in Milano, Italy. They have offered
me five thousand dollars each for names. This price is contingent
that my attorneys do not get involved."
"If you are interested in purchasing them, please let me know. I am
sure we can work out something."
That is a--A specific offer to sell to Complainant, for any price ("I'm sure we can work out something") that would be better than $5000 with the string attached concerning involvement of attorneys.
On page 2 Respondent says that upon getting the letter charging him with impropriety,
"Therefore: I took the two domain names off the 'FORWARDING' stasis [status] per Chanel, Inc.'s request and put them in 'PARK' status. Therefore; these domain names [after that status change] had not been "forwarding' to any 'improper site' nor my e-commerce businesses."
In context here, I construe that as a statement that before the Chanel Inc. letter, the two names had been used for "forwarding" hits to his business domain name or hair styling domain name and thereafter were offered for sale, neither of which helps him avoid the conclusions of the above quoted Policy section 4(a).
It was a "local merchant in Milan" who told him that he could sell the domain names, and prompted him to change the status of his "parked" domain names to 'FOR SALE". A foreign merchant seems hardly to be a highly responsible source advice on U. S. or ICANN law or policy. He acknowledges that when he was told hishe could sell them, he didn't see any thing wrong with selling them. Indeed even now,
"I don't see anything wrong with this. I did not use these domains in "bad faith" nor to make money. But I am the owner of these domain names and Chanel, Inc. expects me to just give them up without telling my story."
But of course he "owns" the naked domain name registrations m subject to the trademark rights of Chanel, the rights of Chanel being a determination a decision not made in the domain name registration process.
He follows that with reference to two appraisals he got as to the worth (several thousands of dollars each) of the two domain name registrations on June 3, 2002, before this action was initiated and about seven months after the November 1, 2001, Chanel Counsel's letter to him asserting his impropriety. Was he not still intending to sell even after he got the lawyer's letter? Was he trusting the Italian "local merchant in Milan's" legal advice in error? more so than Chanel's U.S. lawyer?
He says in his December 9, 2001, reply to Channel’s lawyer's letter to him that he has
" …spoken to my attorney in this matter and I am aware of my position. Chanel is my girlfriends' name and together we owned a wholesale handbag company."
But he proceeds immediately to offer to the trademark owner a sale for about $5000 or so, which surely no lawyer would have ever permitted him to do. If he did give a lawyer a full framework of background for his questions, and then ask a lawyer as he says, is that evidence of bad faith because he didn't follow the adviceit. If he cropped the story he told his lawyer to save money or to make himself look innocent and willfully begot a wrongful lawyer's opinion, is that evidence of bad faith?
If he wanted to persuade on that point, he could have filed an affidavit statement of the lawyer to add credibility where I'm having trouble finding credibility. Recall he had over 120 domain name registrations with at least some plan in mind, and was surely not a complete unsophisticated dummy about domain names.
6. Application of the Policy
Paragraph 4(a) of the Policy directs that the Complainant must prove, inter alia,
(i) that the domain name registered by the Respondent is identical
or confusingly to a trademark or service mark in which the
Complainant has rights; and,
Since the totality of the mark CHANEL is included in both the domain names, with a word indicative of the intended product "purse" or "bags", like "Camel cigarettes" "Ford cars", "Crest toothpaste" except for the omission of a space between the two words, it is clear that the domain use is likely to cause confusion among the trade and potential customers of Complainant. We are all accustomed to the fact that essentially every email address omits some spaces, so seeing a lack-of-a-space in these domain names on the net has little to no connotation of different mark, different company, different product, different manufacturer, different sponsor.
Complainant has proved the requirement of ¶4(a) (i).
(ii) The Respondent has no rights or legitimate interests in respect
of the domain name;
We read this phrase in the context of the cybersquatter, for the Policy's whole purpose is the very narrow one of identifying the clear and obvious cybersquatter and in a low-cost fast-track process getting that kind of person's domain name registration into appropriate hands. The mere act of domain name registration standing alone conveys none of the "rights or legitimate interests" to which this clause applies, or absolutely no domain registrant could ever be held duty bound to transfer his domain name to the trademark owner.
So that doesn't count for Respondent? No?! That is all he has. He has not built a business with the domain name and developed some sweat equity with it. He is not known generally by that domain name. Etc.
Complainant has proved the requirement of ¶4(a) (ii).
(iii) The domain name was registered and is being used in bad faith.
Respondent appears to argue, perhaps rather subtlely so as not to stir up strong feelings of rejection by his reader, that because he had a girl friend in some manner in the business with him, that gives him the right to use her name as a domain name, or as a trademark. That is a clear error of law. The cases cases saying that a person is entitled to use his/her own name are not applicable here where the name used is not that of the registrant. Further, when a person's own name is in potential conflict with a famous mark, the use of a person's own name is conditioned to provide some semblance of distinction. For example, when "The Ed Sullivan Show" was the biggest name in TV productions, and a radio disc jockey named Edward J. Sullivan started using that famous show title, the court ordered the disc jockey to call his show "The Edward J. Sullivan Show", his correct name but a version of it that distinguished the famous TV star. In these circumstances the courts require special details of practice in order to preclude or minimize the use of one's own name in a manner destructive of or in violations of the trademark owners rights.
I find as a fact that Respondent absolutely knew about CHANEL as a famous mark with respect to ladies things in general, and more likely than not with respect specifically to bag and purses. Why? B because he was in the purse and bag business and women's apparel business and hair styling business. He was in these activities in California where Chanel has a big public presence.
Also, Complainant's U. S. trademark registrations gives all people a constructive notice of the trademark owners rights to be free from direct trademark infringement such as Respondent here was planning to do when he registered the marks as his domain name. Indeed he , and was infringing Complainant's trademark doing during the short period of actual use of the registered domain name mark, following the Chanel Inc. charge of impropriety and
before he changed from wrongful "forwarding" use of the domain name as a trademark infringement by which to divert web trade from Chanel to his own enterprise, to wrongful use by offering to sell for a few thousands of dollars specifically to Chanel and generically on the web offering offering to sell to any takers from his advertising.
Both of these are the kind of activity the ICANNa policy against "cybersquatters" is intended to prevent.
Further, as aforesaid, I have found as fairly well proven and not denied, that Respondent knew of the famous Chanel mark before he thought of use it as his own trademark or domain name. A person can hardly be in any kind of product line business at all since l989 (as Respondent has urged he was in an "apparel company"), and in ladies bags and purses for some time, and as he surely was for some timein hair styling for some time, without appreciating the basic underlying rule of another's trademark against him:
Thou shalt not call your beer, "Budweiserbeer",
Thou shalt not call your cigarette a "Camelcigarette",
Thou shall not call your root beer an "A&WROOTBEER",watch a "Rolexwatch,"
Thou shalt not call your purse a "Chanelpurse"
When you know someone else owns the trademark for those products that is the first part of those words, in connection with the actual product that is the last part of those words. I find that Respondent willfully disregarded that obvious knowledge known to responsible business persons, and did this both when he registered and used the domain names in issue.
However, there is a problem on this point. It is this: Was Respondent really aware that what he was doing at each of the two steps, registration and use, was a violation of law and policy; and if without that awareness was he necessarily intending to do wrong, necessarily in bad faith, rather than merely grossly negligent in taking the legal advice of an Italian merchant about (i) his right to sell and (ii) for the likes of appraised prices?
One of the things that tips the scales in my analysis, is Respondent's assertion that he did talk to his lawyer and knew his (Respondent's) position, and in the next sentence offered to sell the domain names to the trademark owner who had complained of his wrong. At leaste by then he should have known better. He did not supply to this panel the lawyer's opinion as such, nor an invoice for the opinion that would indicate that it was a formal and careful opinion or something off the cuff and ill considered. No responsible lawyer would have let him make that offer for sale him do that with a $5000 asking price fromof the trademark owner for a domain name registration on the same goods that the mark registration explicitly covers.
Was Respondent he merely lying in that letter, and had he simply not talked to a lawyer? I don't know for absolute certain, as I might know if I had a chance to cross examination both him and the lawyer he claims to have gotten advice from. He could have provided evidence in the form of an affidavit from the lawyer to make his story more credible. So I have no pangs of conscience about my conclusion withinin the process of the ICANN Policy.
Without the procedures afforded in expensive court trials, including in this case live testimony (subject to cross examination) in support of Respondent's own case and subject to cross examination, including Respondent's right to explain himself and sell his own credibility, it is impossible for adjudicative-neutrals like this panelist to judge
good faith and bad faith responsibly and confidently in every situation. TBecause of the ICANN policy focus upon low cost and fast rack, that right of telling the story in person and the right of being subjected to cross examination whereby to sell credibility is denied to the parties in the instant procedure. That is the reason that the decisions in these cases are not final, but the case may beis subject to a trial de novo if the losing party feels the value he has lost exceeds the cost of such a court process and he initiates the new court action which, in the case of Respondent, should be within 10 working days of the effective date of notification of this decision.
The two domain names, <chanelbags.com> and <chanelpurses.com>, shall be transferred to Complainant.
October 17, 2002