WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master
Case No. D2012-1065
1. The Parties
The Complainant is Chanel, Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondents are:
(a) Above.com Domain Privacy of Beaumaris, Victoria, Australia; and
(b) Transure Enterprise Ltd., Host Master of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <insidechanel.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2012. On May 22, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 23, 2012, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 4, 2012.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 12, 2012.
The Center appointed Andrew Brown Q.C., as the sole panelist in this matter on July 30, 2012. 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.
4. Factual Background
The disputed domain name <insidechanel.com> was first registered on February 20, 2008.
The Complainant is a manufacturer, importer and seller of luxury products including bags, shoes, clothing, fragrances, skincare, cosmetics, jewellery, sunglasses and other accessories throughout the world. It claims it is one of the most recognised names in the fashion and beauty field and one of the most famous companies in the world. The Complainant states that it has built the value of the CHANEL mark, which it says was first used over 90 years ago, through extensive sales of products bearing the mark, and through extensive marketing and promotional activities.
The Complainant is the registered proprietor of numerous trademark registrations for CHANEL including the following in the United States, British Virgin Islands and Australia which it relies on in particular as representative registrations:
- United States Trademark Registration no. 1087999 for the word mark CHANEL filed on August 26, 1977 in class 5 for “deodorant stick”.
- United States Trademark Registration no. 1079438 for the word mark CHANEL filed on December 7, 1977 in class 25 for “ladies gloves”.
- United States Trademark Registration no. 1510757 for the word mark CHANEL filed on October 29, 1987 in class 9 for “sunglasses”.
- United States Trademark Registration no. 1647875 for the word mark CHANEL filed on September 12, 1990 in class 6 for “keychains”.
- United States Trademark Registration no. 3133139 for the logo mark CHANEL filed on October 3, 2005 in class 14 for “jewellery and watches”.
- British Virgin Islands Trademark Registration no. 20635 for the word mark CHANEL filed on November 17, 1986 in class 10 for “watches”.
- Australian Trademark Registration no. 74368 for the word mark CHANEL filed on March 21, 1939 in class 3 for "perfumery (including toilet articles, preparations for the teeth and hair and perfumed soap)".
- Australian Trademark Registration no. 156854 for the word mark NO.5 CHANEL filed on November 6, 1959 in class 3 for “soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, including perfume, eau de cologne, toilet rouge, lipstick, face powder, talcum powder, toilet soap and toilet water”.
- Australian Trademark Registration no. 174921 for the word mark CHANEL filed on July 18, 1962 in class 25 for “all goods in class 25”.
- Australian Trademark Registration no. 297948 for the word mark CHANEL filed on June 22, 1976 in class 14 for “horology and other chronometric instruments including watches and clocks, parts thereof, precious metals and their alloys and goods in precious metals or coated therewith, jewellery and precious stones, and all other goods in this class.
- Australian Trademark Registration No. 457365 for the word mark CHANEL filed on December 17, 1986 in class 42 for “wholesaling and retailing services relating to perfumery, toiletries, clothing, clothing accessories and jewellery; beauty salons; beauty product analysis and research services; clothing rental services; fashion information services; hairdressing salons; health-care services; chemist shop and florist services; services in this class pertaining to beauty, hairdressing, jewellery, floral and like exhibitions; hire and/or operation of vending machines for perfumery, cosmetics, toiletries or perfumed products; services in this class pertaining to the design and printing of packages, publications, information and other material relating to the aforementioned services”.
- Australian Trademark Registration no. 852545 for the word mark CHANEL filed on October 5, 2000 in Class 9 for “spectacles; eye glasses; sunglasses; binoculars; field glasses; cases, cords and chains for the aforesaid goods; spectacles and sunglasses frames and lenses; anti-glare glasses and visors; anti-theft apparatus for skis and ski equipment; clothing and gloves for protection against accidents; helmets; goggles; personal safety alarms; vending machines for vending perfumes or cosmetics”.
- Class 21 for “drinking flasks and vessels; glassware; porcelain; containers; china ornaments; figurines; pottery; boot and shoe trees and brushes; cosmetic cleaning implements; gloves stretchers; appliances for removing make-up; combs and comb cases; brushes for personal use; powder compacts; powder puffs; cosmetic utensils; deodorising apparatus for personal use; perfume sprayers; vanity cases; aerosol dispensers; nail polishers; toilet articles sold complete in sets; eyebrow brushes; shaving brush stands; shaving brushes; shoe horns; soap boxes, dispensers and holders; toilet sponges; toilet utensils.
- Class 28 for “toys, games and playthings, games and sports equipment; decorations for Christmas trees; skis; ski bindings; wax for skis; coverings for skis; bags particularly adapted to carry skis; ski equipment; scrapers for skis; sports gloves; knee and shin guards; protective padding”.
- Australian Trademark Registration no. 1010487 for the word mark CHANEL filed on July 9, 2004 in class 26 for “Lace, embroidery, ribbons and braid, buttons, press buttons, hooks and eyes all included in class 26, fasteners, buckles, clasps and studs (none of precious metal or coated therewith), artificial flowers, badges, hair bands, sewing boxes, brooches, accessories for the hair including hair curlers, grips, slides, pins and ornaments, hat ornaments”.
- Australian Trademark Registration no. 1416890 for the word mark CHANEL filed on March 29, 2011 in: Class 32 for “non-alcoholic wine; wine containing not more than 1.15% (by volume) of alcohol; low alcohol drinks containing not more than 1.15% (by volume) of alcohol; mineral waters; non-alcoholic drinks in this class”.
- Class 33 for “wine; spirits; liqueurs; alcoholic drinks in this class”.
The Complainant also has unregistered rights in the mark CHANEL including by way of its domain name registration <chanel.com> (created on August 12, 1996) and from advertising including in the publications “Vogue” and “Elle” in relation to perfumes. The Complainant has provided evidence of use of its mark on such goods dating from before the relevant date.
As at the date of the Complaint, the disputed domain name was being used to host a “parking website” that displayed a page of sponsored links including to commercial websites offering for sale goods of both the Complainant, and competitors of the Complainant (including Dior, Nars and Aveda). The particular goods which are offered for sale on commercial websites linked from the disputed domain name include perfumery, soaps, jewellery and cosmetics, all being items expressly covered in the specifications for a number of the Complainant’s trademark registrations for CHANEL (including Australian trademark registration Nos. 74368, 156854 and 297948).
Further, a number of the commercial websites linked to the parking page on the disputed domain name include online retailers offering for sale (inter alia) perfumery, clothing and jewellery. Retail services relating to such items are expressly covered in the specification of Australian registered trademark No. 457365 for CHANEL.
5. Parties’ Contentions
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.
The Complainant has referred the Panel to (inter alia):
(a) Decisions of previous panels dating from before the registration of the disputed domain name recognizing that CHANEL is a well-known trademark (including Chanel, Inc v LaPorte Holdings, WIPO Case No. D2005-0487);
(b) Decisions in which previous panels have found that disputed domain names containing a well-known trademark together with the word “inside” were confusingly similar to the corresponding well-known mark (including Research In Motion Limited v Elias, WIPO Case No. D2009-0218, finding <insideblackberry.com> and <blackberryinside.com> to be confusingly similar to the BLACKBERRY trademark and LEGO Juris A/S v Domain Park Limited, WIPO Case No. D2010-0138 finding <legoinside.com> to be confusingly similar to LEGO);
(c) 87 adverse decisions of previous panels against the Second Respondent concerning trademarks of other parties, and to a decision in which a previous panel referred to the Second Respondent’s conduct as demonstrating “a systematic pattern of abusive registrations not dissimilar to that of a serial cybersquatter” (LEGO Juris A/S v Above.com Domain Privacy/Host Master; Transure Enterprise Ltd, WIPO Case No. D2012-0377).
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademark CHANEL as at the date of registration of the disputed domain name by way of its registered trademarks for those marks in numerous classes, predating February 20, 2008. The Complainant’s mark was also well-known as at that date.
The Panel considers that the Complainant’s distinctive CHANEL registered trademark is instantly recognisable in the disputed domain name, and that the linking element “inside” does not sufficiently differentiate the disputed domain name from the Complainant’s trademark. In this context, the word “inside” operates as a preposition and means “within CHANEL”. The combination points directly to the distinctive trademark CHANEL. There is nothing distinctive in the term “inside” that would dispel confusion with the Complainant’s trademark CHANEL.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondents used or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondents have been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) that the Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondents lack rights or legitimate interests. Once a prima facie case is made out, the burden shifts to the Respondents to come forward with appropriate evidence demonstrating their rights or legitimate interests in the disputed domain name.
The Complainant states and the Panel accepts that it has never given the Respondents any licence, permission or authorisation to use the trademark CHANEL or to seek registration of any domain name incorporating that mark, or a variation of it.
There is no evidence that the Respondents have made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. The disputed domain name is not similar to the Respondents’ names, and there is no evidence that the Respondents operate any business under a name that is similar or the same to the disputed domain name.
Nor was the disputed domain name being used for any legitimate interests which might dispel the prima facie case made out by the Complainant. The disputed domain name was, at the time of the Complaint, redirecting to a “parking website” which contained sponsored pay-per-click links including to commercial websites offering for sale goods produced and sold by competitors of the Complainant.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any Response from the Respondents, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
Bad faith must be shown to have existed as at February 20, 2008, being the date of registration of the disputed domain name.
The Complainant has numerous trademark registrations for CHANEL which well predate February 20, 2008. The distinctive CHANEL trademark was well-known as at that date. The Panel finds that the Respondents must have been well aware of the Complainant’s mark at the time they acquired the disputed domain name.
The Panel is therefore satisfied that the disputed domain name was registered in bad faith.
The Panel’s finding in this regard is supported by (but not dependent on) the Second Respondent’s extensive history of registrations of domain names comprising other party’s trademarks which has led a previous panel to refer to the Second Respondent’s conduct as “not dissimilar to that of a serial cyber squatter”.
The Panel is also satisfied that the disputed domain name is being used in bad faith, in particular for attracting Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s trademarks. Pay-per-click sponsored links on the Respondents’ website are tailored in part to match goods covered directly by the Complainant’s registered trademarks or to divert business to rival brands of the Complainant’s products. There is therefore a demonstrated intent to attract Internet users to the Respondents’ website for commercial gain.
For these reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <insidechanel.com> be transferred to the Complainant.
Andrew Brown Q.C
Date: August 9, 2012