The Complainant is Chanel Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC of United States of America.
The Respondent is Chenying of Xiang Gang, the People's Republic of China.
The disputed domain names <chanelsunglassessale.com>; <chaneljewelrysale.com>; <chanelbagsales.com> are registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2009. On December 14, 2009, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp a request for registrar verification in connection with the disputed domain names. On January 4, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 5, 2010.
On January 4, 2010, the Center transmitted by email a notification to the parties concerning the language of the proceedings in both Chinese and English with detailed instructions. The parties were notified that the complaint had been submitted in English and the language of the registration agreement for the disputed domain names is Chinese. On January 5, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date.
The Center verified that the Complaint together with the amendment to 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 January 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 5, 2010. 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.
The Complainant Chanel, Inc. is a premier manufacturer, importer and seller of luxury products including bags, shoes, clothing, fragrances, skin care, cosmetics, jewelry, sunglasses and other accessories throughout the world.
The Complainant has owned and used the trademark and trade name CHANEL in the United States of America for over 70 years. The Complainant or its affiliated companies owns in excess of 2,500 trademark registrations for CHANEL or marks that include CHANEL in more than 180 countries. In the People's Republic of China, where the Respondent is located, CHANEL has about 25 registrations for CHANEL alone and an additional about 47 registrations for marks that contain CHANEL or its Chinese transliteration. In the United States of America, the Complainant owns at least 29 federal registrations of the CHANEL mark, some dating back to 1925. In the United Kingdom of Great Britain and Northern Ireland, there are about 34 registrations for CHANEL and an additional 47 registrations for marks that include CHANEL. The Complainant provided spreadsheets showing the registrations for CHANEL and marks incorporating CHANEL in the United States, United Kingdom of Great Britain and Northern Ireland and the People's Republic of China as annex H. All of the listed trademark registrations predate the registrations of the disputed domain names and all are valid.
The Respondent registered the disputed domain name <chanelsunglassessale.com> on June 25, 2009, <chaneljewelrysale.com> was registered on October 9, 2009 and <chanelbagsales.com> was registered on October 19, 2009.
The WhoIs and verification response from the Registrar shows that the Respondent is located in Hong Kong, SAR of China, though its phone and fax number are obviously numbers in the People's Republic of China.
The websites of the disputed domain names <chanelsunglassessale.com>; <chaneljewelrysale.com> and <chanelbagsales.com> are online shops offering for sale sunglasses, jewelry and bags respectively on which the CHANEL mark has been widely used to describe a great varieties of products. The websites are well designed with English contents and they describe that CHANEL is among the most recognizable brands in the world or has been always connected with words of lady, noble and luxury.
The Complainant Chanel, Inc identifies itself as a premier manufacturer, importer and seller of luxury products and one of the most recognized and respected names in the fashion and beauty field. The Complainant 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 more than 70 years. The Complaint advertises its products, as well as its brand, on television, on radio, and in numerous nationally circulated magazines and print publications. Over the last five years, it has spent over USD 250 million on advertising and promotion. In addition, the Complainant's special events are regularly covered by the world media. This coverage of both the Complainant and its product reaches millions of consumers nationwide and throughout the world. The Complainant sells and distributes its products through numerous channels of trade and on the Internet through its own website and websites of select retailers. In addition, the Complainant has had a presence on the Internet at “www.chanel.com”, which is accessible to consumers around the world. The website provides users with news about the Complainant, highlights of the Complainant's fashion shows, depictions of the Complainant's products and accessories and a store-locator service identifying CHANEL stores, not only in the United States but throughout the world, including the People's Republic of China. The fame and recognition of the CHANEL mark has been noted in numerous surveys and articles that rank CHANEL among the most recognizable brands in the world. The CHANEL mark has achieved an iconic stature immediately recognized by the general public and has been seen or used in a variety of films and songs and in literature.
The Complainant contends that the disputed domain names wholly incorporates the Complainant's registered trademarks and are confusingly similar to the famous trademark CHANEL owned by the Complainant. The fact that the Respondent has added generic terms to the CHANEL trademark including jewelry, bag, sunglasses and sales does not create a distinct domain name. Given the reputation and renown of the Complainant's mark, it is probable that a majority of Internet users who see the disputed domain names will immediately recognize the Complainant's mark and assume that the disputed domain names and the websites associated with it are owned, controlled or approved by the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in the domain names because the Respondent is using the disputed domain names to offer counterfeit products and cannot demonstrate any of the circumstances that are sufficient to prove legitimate rights. The Complainant claims that it has not authorized, licensed or permitted the Respondent to register or use the trademarks. The Complainant argues that the Respondent registered and is using the disputed domain names in bad faith, which cannot constitute rights or legitimate interests.
With regard to use and registration in bad faith of, the Complainant stressed that the sale of counterfeit goods on the websites under the disputed domain names is paradigmatic bad faith. The Complainant argues that the public is likely to be confused into believing that the disputed domain names and the websites associated therewith have a connection with the Complainant. The Complainant contends that the Respondent's activity is in direct violation of paragraph 4(b)(iv) of the Policy. The Complainant further contends that the Respondent's adoption and use of the immediately recognizable and famous trademark CHANEL shows both the Respondent's familiarity with the mark and the Respondent's recognition of the fame of the mark, which establishes opportunistic bad faith use and registration.
The Respondent did not reply to the Complainant's contentions.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Paragraph 11(a) reserves to the Panel the authority to determine the language. It is noted that the language of the registration agreement for the disputed domain names is the Chinese language and, absent a determination by the Panel to the contrary, the default language of the proceedings would have been Chinese. The Complainant contends that English should be the language of the proceeding and relied on the following arguments to support the request:
(1) The domain name registration agreement as provided by the Registrar of the disputed domain name is published in both English and Chinese;
(2) The disputed domain names are in the English language and the contents of the websites associated with the disputed domain names are entirely in English. These present evidence that the Respondent is quite adept in the English language and warrant that the proceedings be conducted in English.
In addition to the arguments canvassed by the Complainant, the Panel also notes that:
According to the WhoIs information of the disputed domain names, the Respondent is based in “xianggang” (Chinese phonetic spelling of Hong Kong in Chinese), which is Hong Kong SAR, of China and confirmed by verification from the Registrar, where English is one of the official languages that is commonly used.
On January 4, 2010, the Center notified the parties in both English and Chinese that the complaint has been submitted in English, and the language of the registration agreement for the disputed domain names is Chinese, and provided the parties with detailed instructions on the language of the proceedings, including providing both parties with an opportunity to submit comments on language. The Center expressly reserved to the Panel the determination of appropriate language of proceedings. The Respondent was therefore fully aware of the proceedings for assessing and determining the language of the case, and had fair opportunities to make any comments or opposition, but did not make any response or objection to the requested language of the proceedings by the due date.
In the case Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989, the Panelist elaborates that: “The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration o the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.” And it is recognized that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293.
In view of the above circumstances and the Complainant's request, a selection of Chinese language as the proceeding language in the present case will be a burden to the Complainant in terms of translation expenses and result in undue delay and in the Panel's assessment of the present record there will be no prejudice caused to the Respondent if the proceedings are conducted in English.
Having considered all the above, this Panel determines that English shall be the language of the proceeding under paragraph 11(a) of the Policy.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must prove following three elements that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has adduced evidence before these administrative proceedings to show that the Complainant has rights in the trademark CHANEL and the mark CHANEL is widely recognized and famous.
As a general rule, the TLD identifier of a domain name is disregarded when considering its identity or confusing similarity to a trademark. The disputed domain names <chanelsunglassessale.com>, <chaneljewelrysale.com> and <chanelbagsales.com> wholly incorporate the Complainant's famous and very distinctive trademark CHANEL. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042. The addition of generic terms sunglasses, jewelry, bag and sales, which are within the range of the Complainant's own famous products, further reinforces the connection between the Complainant's trademark and the disputed domain names.
Accordingly, the Panel holds that the disputed domain names are confusingly similar to the Complainant's trademark.
The Complainant has not authorized, licensed or permitted the Respondent to register or use the trademark CHANEL. The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent has failed to file a Response to prove its rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Paragraph 4 (b) of the Policy states that any of 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 complainant's 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 Complainant has produced evidence to show that the mark CHANEL is famous. The Complainant has owned and used the trademark and trade name CHANEL in the United States for over 70 years and the fame and recognition of the CHANEL mark has been noted in numerous surveys and articles that rank CHANEL among the most recognizable brands in the world. It is noted that the Complainant's website “www.chanel.com” provides users with store-locator service identifying the CHANEL stores or shops including those in Hong Kong, SAR of China, and in many cities in the People's Republic of China.
According to the WhoIs information of the disputed domain names, the Respondent is located in Hong Kong, SAR of China with contact phone number and fax number in the People's Republic of China. Given the very significant goodwill and reputation of the mark CHANEL and the Complainant's wide business presence in Hong Kong, SAR of China, the People's Republic of China and around the world, it is very likely that the Respondent knew or should have known the famous trademark CHANEL of the Complainant before it registered the disputed domain names. That the websites of the disputed domain names use trademark CHANEL and offer to sell unauthorized and/or counterfeited CHANEL products further strengthens this possibility. Here, the fact that the Respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name constitutes bad faith. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. The inclusion of highly descriptive terms sunglasses, jewelry, bag and sales in the disputed domain names which are within the range of the Complainant's own famous products, further supports the finding that the Respondent was aware of Complainant's trademarks and business and the disputed domain names were registered in the bad faith.
As a further observation, none of the websites of the disputed domain names appear to be selling genuine Chanel products. Instead the websites are seemingly being used to traffic in counterfeited goods. The sale of counterfeited goods under the Complainant's trademark amounts to bad faith. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
The Panel therefore finds that the disputed domain names has been registered and is being used in bad faith pursuant to the Policy.
Finally, the facts in this case show that the Respondent does not disclose its relationship (or lack thereof) with the trademark owner on the websites of the disputed domain names at all, but has evidently used these disputed domain names to intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites and products on its websites. This does not meet the requirements of a bona fide offering but rather falls under paragraph 4(b)(iv) of the Policy.
For all of the above reasons, the Panel is satisfied that the Complainant has established the requirement of showing bad faith under the third element of the Policy.
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 names <chanelsunglassessale.com>; <chaneljewelrysale.com> and <chanelbagsales.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: February 19, 2010