The Complainant is Chanel Inc. of New York, United States of America represented by Fross Zelnick Lehrman & Zissu of United States of America.
The Respondent is Dong Jiancai of Guangdong, the People's Republic of China.
The disputed domain name <chanelfans.com> (“Disputed Domain Name”) is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2010. A request for the language of the proceedings to be English was included as part of the Complaint. On February 2, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On February 4, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 5, 2010, the Center transmitted documents by email to the parties in both Chinese and English regarding the language of proceedings. The Complainant replied on the same day reiterating its request for the language of the proceedings to be English. The Respondent did not object or reply in this regard.
The Center verified that 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 February 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 10, 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 is a leading manufacturer, importer and seller of luxury products including jewellery, watches, bags, shoes, clothing, fragrances, skin care, cosmetics, sunglasses and other accessories throughout the world. The Complainant has been using the trade mark CHANEL (herein after the “CHANEL Mark”) in the United States of America for over 70 years. The Complainant started offering watches under the trade mark CHANEL in 1987 and introduced watches bearing the trade mark CHANEL J12 in 2000.
The Complainant has achieved very successful sales of goods under the CHANEL Mark. Over the last 5 years, sales of products bearing the CHANEL Mark totalled in the billions of dollars in the United States of America alone. Over USD250 million has been spent on advertising and promotion in the same period. There are frequent advertisements and fashion editorials in newspapers and magazines (e.g., The New York Times, Forbes, International Herald Tribune, Vogue, etc) regarding the Complainant's products bearing the CHANEL Mark. Products bearing the CHANEL Mark are currently sold in over 2,500 retail outlets in the United States of America. The Complainant has had an Internet presence via its website at <chanel.com> since 2000.
The Complainant and its associated companies own trade mark registrations for the CHANEL Mark in over 180 countries including the following:
Jurisdiction Trade Mark No. Trade Mark Registration Date
United States 955074 CHANEL March 13, 1973
United States 1571787 CHANEL December 9, 1989
China 619345 CHANEL November 20, 2002
China 2023317 CHANEL J12 October 7, 2004
The CHANEL Mark has been acknowledged in films, songs and literature. It has been ranked very highly in reports from WWD 100, Interbrand and Business Week. Courts in the United States of America, Taiwan, Province of China and the Republic of Korea have held it to be a well-known mark. Past panels have also acknowledged the fame of the CHANEL Mark (see Chanel Inc. v. Bontempo, WIPO Case No. D2002-0721; Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833; Chanel, Inc. v. IGGI Networks, Inc., WIPO Case No. D2000-1831; Chanel, Inc. v. Uraina Heyward, WIPO Case No. D2000-1802; Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126; CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413).
The Disputed Domain Name was registered on June 30, 2009. The Disputed Domain Name resolves to a website which purports to offer for sale watches bearing the CHANEL Mark. The website features the CHANEL Mark, the Complainant's “CC” monogram, and photographs of watches bearing the CHANEL Mark. The website also contains many statements offering replica watches for sale, many of which are associated directly with the photographs of watches, referring to them as “Top Grade replica Chanel watches” and similar descriptions.
The Complainant contends that:
1) The Complainant has rights in the CHANEL Mark. The Disputed Domain Name is confusingly similar to the Complainant's CHANEL Mark;
2) The Respondent is using the Disputed Domain Name to offer counterfeit products for sale and cannot claim that its use of the Disputed Domain Name is legitimate. The Complainant has not authorised, licensed or permitted the Respondent to register or use the Disputed Domain Name. There is no way that the Respondent would not have been aware of the CHANEL Mark; and
3) The CHANEL Mark is a well-known mark for luxury goods generally and for watches specifically. The Respondent registered the Disputed Domain Name to attract for commercial gain Internet users by creating a likelihood of confusion with the CHANEL Mark and to induce the public to purchase counterfeit watches. Therefore, the use and registration of the Disputed Domain Name is in opportunistic bad faith.
The Respondent did not reply to the Complainant's contentions.
The registration agreement is in Chinese. Although the default language of the proceedings is Chinese as a result (paragraph 11(a) of the Rules), the Panel may determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Complainant's request for English to be the language of the proceedings is based on the following reasons:
(1) The registration agreement of the registrar was published in English and Chinese; and
(2) The website resolved from the Disputed Domain Name (including the FAQs and purchaser reviews contained on the website) is in English.
This Panel does not agree that publication of the registration agreement in English by the registrar is a relevant consideration. This fact does not have any significant bearing on the issues of fairness to the parties, or help to maintain the cost and/or speed of the proceedings.
The use of English by a respondent on the website resolved from a disputed domain name is an important factor for determining the language for the proceedings. It indicates that the respondent is either competent in English and/or has ready access to assistance in the use of English. The Panel is not concluding that the mere use of English on such a website is enough to justify a finding that English should be the language of the proceedings, but rather that it is a factor to be taken into consideration. It is ultimately a matter of degree. The exclusive use of English would certainly provide a very strong indication that a respondent is competent in English and prepared to deal with the world at large in the English language.
In the present case, the website uses English to the exclusion of all other languages, including Chinese. In addition, the Respondent has chosen to neither file a Response nor object to the Complainant's request for English to be the language of the proceedings. In the circumstances, it is unlikely that the Respondent will be prejudiced by the adoption of English as the language of the proceedings. The use of English in this proceeding will also avoid unfairly burdening the Complainant and avoid undue delay to the proceedings. Having regard to these factors, this Panel holds in accordance with paragraph 11(a) of the Rules that English be adopted as the language of the proceedings.
The three limbs of paragraph 4(a) of the Policy which the Complainant must show are:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
In view of the trade mark registrations for the CHANEL Mark, the Complainant clearly owns rights in the CHANEL Mark. The Disputed Domain Name is not identical to the CHANEL Mark but incorporates it in its entirety. The only additional feature of the Disputed Domain Name is the suffix “fans”.
It has been established by many past WIPO UDRP panels that a domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trade mark (e.g., Wellquest International Inc. v. Nocholas Clark, WIPO Case No. D2005-0552; Chopard International S.A. v. Vladimit Kozlov, WIPO Case No. D2007-1544; Aktieselskabet af 21. november 2001 A/S v. Yu Yawei, WIPO Case No. D2009-0737). The word “fans” in the Disputed Domain Name is a non-distinctive, dictionary word used in conjunction with the CHANEL Mark in the Disputed Domain Name and may be readily seen by a reasonable person as referring to fans of the products sold under the CHANEL Mark. It does not assist to distinguish the Disputed Domain Name from the CHANEL Mark.
The Panel holds that the Disputed Domain Name is therefore confusingly similar to the CHANEL Mark and the first limb of paragraph 4(a) is satisfied.
The Complainant's allegation that the Respondent is using the Disputed Domain Name to sell counterfeit products is very serious. In particular, the evidence submitted by the Complainant shows unequivocally that the Respondent is offering replicas of the Complainant's products for sale via the Respondent's website. The Complainant has also asserted that it has not authorised the Respondent to use the CHANEL Mark.
Taking into considering the past panel decisions, court decisions and evidence supporting the well known status of the CHANEL Mark, this Panel accepts that the CHANEL Mark is well-known. It is inconceivable how the Respondent could be unaware of the CHANEL Mark particularly in light of the content of the Respondent's website. The use of the Complainant's double “CC” monogram on the website resolved from the Disputed Domain Name and the many offers of replicas of the Complainant's products show that the Respondent is well aware of the CHANEL Mark.
For the purposes of the proceedings, it is not necessary for the Panel to determine if the Respondent's replicas of the Complainant's products are counterfeits or infringe the Complainant's CHANEL Mark, although the suggestion is very strong. However, the questions of counterfeiting and trade mark infringement are subject to the laws of the relevant jurisdictions and it is beyond the scope of the Policy to engage in an assessment of these matters. Nevertheless, the use of the Disputed Domain Name to offer replica products to which a registered trade mark has been applied when no authorisation, licence or permission has been granted to the Respondent, in the absence of any logical and reasonable explanation, can only point to the inevitable conclusion that the Respondent could not have any right or legitimate interest in the Disputed Domain Name.
Despite the gravity of this allegation, it failed to elicit any reaction from the Respondent. The Respondent has not even considered it important to file a Response. For the Respondent to act in such a cavalier fashion in relation to its domain name also suggests that the Respondent does not have any rights or legitimate interests in it, or at least, the Respondent does not care whether it has. In the circumstances, the Panel holds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and the second limb of paragraph 4(a) of the Policy is established.
Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use:
“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 website or location.”
This Panel has already determined above that the CHANEL Mark is a well-known mark. The Respondent is not authorised by the Complainant to use the CHANEL Mark. The offers for sale of replicas of the Complainant's products on the Respondent's website under the Disputed Domain Name leaves no doubt that the Respondent intends to attract Internet users to its website at the Disputed Domain Name for commercial gain. The used of the CHANEL Mark in the Disputed Domain Name and on the Respondent's website creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website by the Complainant.
These elements of opportunistic bad faith registration and use under paragraph 4(b)(iv) of the Policy have been reiterated in past panel decisions (e.g., Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. D2008-1073) and this Panel will not belabour the point. Suffice to say that the evidence points inexorably to a conclusion of bad faith registration and use of the Disputed Domain Name which has not been rebutted.
This Panel holds that bad faith registration and use have been made out, and thus that the third limb of paragraph 4(a) has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <chanelfans.com> be transferred to the Complainant.
Kar Liang Soh
Dated: March 24, 2010