WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel v. 1
Case No. D2003-0218
1. The Parties
Complainant is is Chanel, 135 Avenue Charles de Gaulle, 92521 Neuilly-sur-Seine, France, of France. The Complainantís authorized representative in this administrative proceeding is Fross Zelnick Lehrman & Zissu, PC of United States of America.
The Respondent is 1, Seoul, Republic of Korea, of Republic of Korea.
2. The Domain Name and Registrar
This dispute concerns the domain name <chanelbiz.com>, hereinafter referred to also as the "domain name." The registrar is Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2003. On March 20, 2003, the Center transmitted via email to Tucows, a request for registrar verification in connection with the domain name at issue. On March 21, 2003, Tucows transmitted via email to the Center, Tucowís Verification Response, confirming that the registrant is "1" and that the domain name registration is in "active" status.
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 March 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003.
On April 24, 2003, having received no Response from the Respondent, the Center issued a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.
In view of the Complainantís designation of a single member panel the Center invited Mr. Luca Barbero to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barberoís Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on May 14, 2003, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date for May 28, 2003. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on a number of registrations for the trademark CHANEL in Korea and other countries.
The Respondent registered the domain name <chanelbiz.com> on April 2, 2002.
5. Partiesí Contentions
The Complainant indicates that Chanel and its affiliated companies (the "Chanel Companies") are premier manufacturers, importers, and sellers of luxury products throughout the world. CHANEL is a recognized leader and one of the most recognized names in the fields of beauty, fashion, accessories, and couture since as early as 1920.
The Complainant informs the panel that since or about 1985, the trademark CHANEL has been used by Complainant or its affiliated companies as a trade name and trademark in Korea, where Respondent is located. During the years, Complainant has promoted the CHANEL mark in Korea through sales of millions of dollars and through extensive marketing and promotional activities.
The Complainant underlines that the Chanel Companies have registered the CHANEL mark in at least 170 jurisdictions throughout the world, including Korea. Chanel owns 15 registrations for the CHANEL mark in Korea, some dating back to 1978, and all of which were issued before the Respondent registered the domain name. Copies of these registrations were provided to the Panel as well as information related to the amount of advertising and marketing investment which took place in Korea to promote the trademark.
The Complainant informs the Panel that Korean courts have held the CHANEL mark to be well known quoting the decision Chanel v. Pyonghwa Fat and Oil Industry Co., Ltd., Supreme Court of Korea, October 14, 1986, Case No. 83 Hu 77 (CHANEL is an internationally well-known trademark); Chanel v. Sung-Bok Jin, Seoul High Court, November 3, 1998, Case No. 97 Na 26588 (CHANEL mark is well-known in Korea) attaching the Korean language versions of these decisions, as well as an English translation to the Complaint. In addition, courts in the United States, Japan, China, Indonesia, Taiwan, France, and Greece, among other jurisdictions, have found that CHANEL is well-known and famous, mentioning also the outcome of numerous surveys reaching the same conclusions.
The Complainant also quoted a number of WIPO cases where Panelist have repeatedly recognized that the CHANEL mark is world famous.
The Complainant underlines that although the domain name was registered on April 2, 2002, to the best of Complainantís knowledge, from that time through the present there has either been no website at the domain name or what appears to be a holding page, providing the panel with the printout of the relevant web page.
The Complainant underlines that the Respondentís domain name incorporates without alteration Complainant's registered CHANEL mark, making it confusingly similar to Complainantís CHANEL trademark. According to the Complainant the domain name is clearly meant to create an association with Complainant as the term BIZ is a generic term frequently used in domain names to indicate that a website is related to a business. Thus, the addition of this generic term to the main portion of the sign does not alter the fact that the domain name <chanelbiz.com> is confusingly similar to Complainantís CHANEL trademark.
With reference to the lack of legitimate rights or interest in the domain name, the Complainant underlines that the domain name registration was obtained after the quoted trademark registrations for the CHANEL mark in Korea and after the Complainant had been extensively using its CHANEL mark in Korea.
The Complainant informs the Panel that there exists no relationship between Complainant and Respondent and Complainant has never licensed, permitted, or authorized Respondent to own or use the domain name. Furthermore, the Complainant indicates that the Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is making legitimate noncommercial or fair use of the domain name.
The Complainant furthermore notes that although the domain name has been registered since April 2, 2002, no functioning website, other than a holding page has ever been established under the domain name.
According to the Complainant, also the final element of the registration and use in bad faith is present in the present procedures in light of the following circumstances. The Respondent has taken Complainantís trademark CHANEL as the main part of its domain name and has failed to use the domain name to sell or provide any goods or services. The Respondent is located in a country where the Complainant is the owner of 15 trademark registrations for the CHANEL mark secured before the domain name was registered
The Complainant notes that since CHANEL is one of the most famous marks in the world the Respondent knew of the fame of the CHANEL mark when it obtained the domain name. Moreover, given that the Respondent has no connection with the Complainant and has never been authorized by the Complainant to use or register the domain name, the very fact that the Respondent has registered the domain name establishes bad faith use and registration.
In addition, according to the Complainant, the CHANEL mark and, by extension, the domain name are so obviously connected with Complainant that the use of this domain name by someone who has no connection to Complainant or its goods or services suggests "opportunistic bad faith" since the domain name would certainly be associated in consumersí minds with Chanel.
The Complainant notes that the name supplied for the Respondent and its administrative contact in the WHOIS records is "1," and the address given for the Respondent and its administrative contact is "Seoul in KOREA, Seoul in KOREA, Seoul, 000-000, KR," with no phone number supplied; this makes it clear, according to the Complainant, that the Respondent simply invented the identification and contact information it provided to the Registrar, so that it could not be identified or found. Such behavior also demonstrates the Respondentís bad faith.
The Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." 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 similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of several trademark registrations in different classes for CHANEL in Korea, including the registration N. 80733 of January 20, 1982, in local class 34.
The suffix "biz," as indeed any suffix - especially if generic - added to a well-know trademark, is to be considered immaterial in the evaluation of the confusingly similarity between the Complainantís trademark and a domain name.
In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
In light of the fact that none of the above circumstances was proven to be literally present in the present procedure, pursuant to the interpretation of the ICANNís Uniform domain name Dispute Resolution Policy in cases of passive holding of the domain name first provided in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) and in a number of following decisions such as Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, (WIPO Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric, (WIPO Case No. D2000-0042); Guerlain, S.A. v. Peikang, (WIPO Case No. D2000-0055); Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468), the Panel has taken into consideration the following particular circumstances for the assessment of bad faith.
The Complainantís trademark is well known in Korea, as also established by the quoted decisions by the local Court, and in a number of different countries of the world. Therefore, the Panel finds that the Respondent knew or should have known of the existence of the CHANEL well-known trademark at the time of the registration of the domain name.
Also in light of the fact that Chanel trademark is well-known in many countries, it is not possible for the Panel to conceive of any legitimate, actual or contemplated, active use of the instant domain name by the Respondent.
As stated i.a. in Chanel, Inc. v. IGGI Networks, Inc., (WIPO Case No. D2000-1831) "By knowingly choosing a domain name consisting of" Complainantís "CHANEL mark, Respondent intentionally created a situation at odds with the legal rights and obligations of the parties. The conduct of Respondent in registering <chanelmail.com>, is indicative that Respondent registered <chanelmail.com> in bad faith. See, e.g., San Rio Co. Ltd v. DLI, WIPO D2000-0159 (act of registering domain name identical to Complainantís mark led to finding of bad faith)."
Furthermore, as decided in Chanel, Inc. v. Buybeauty.com (WIPO Case No. D2000-1126) with reference to a constructive prior knowledge of the trademark by the Respondent "Given this awareness, it is evident that the registration and use of the domain name was in bad faith. See Cellular One Group v. Paul Bryan, WIPO D2000-0028. The fact that Respondent proceeded with the registration of a domain name that incorporates the CHANEL mark in its entirety supports a finding of registration and use in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO D2000-0140."
The Panel also notes that the Respondent has failed to respond to the Complaint at issue or to deny any of its allegations and has therefore not provided any evidence of nor alleged any actual or contemplated good faith use of the domain name.
Furthermore, the Panel remarks that the name supplied by the Respondent in the WHOIS records is "1" and the address declared is "Seoul in KOREA, Seoul in KOREA, Seoul, 000-000, KR," with no phone number supplied; this is a rather clear indication that the Respondent has provided false information for the instant registration. The Panel finds that such a behavior, also in light of the other conducts of the Respondent, is to be considered an additional circumstance evidencing bad faith in the registration and use of the domain name.
As already stated in numerous decisions and i.a. in Action Instruments, Inc v. Technology Associates (WIPO Case No. D2003-0024) "Respondent has provided false contact information to the Registrar.(Ö) This is strong evidence that Respondentís submission of false information was intentional, rather than a mere typographical error. The use of false contact information in Respondentís initial registration application is evidence that Respondent registered in bad faith. Royal Bank of Scotland Group v. Stealth Commerce, (WIPO Case No. D2002-0155); Home Director, Inc. v. Home Director, (WIPO Case No. D2000-0111). Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it Ďmade in [its] Registration Agreement are complete and accurate.í Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative Complainant from identifying the registrant and investigating the legitimacy of the registration. For example, permitting registrants to mask their identity makes it difficult for trademark owners to determine whether the registrant "registered the domain name primarily for the purpose of disrupting the business of a competitor," Policy paragraph 4(b)(iii), or whether the registrant "engaged in a pattern" of registering domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name," Policy paragraph 4(b)(ii). Under the U.S. Anticybersquatting Consumer Protection Act, moreover, "provision of material and misleading false contact information when applying for the registration of the domain name" is itself evidence of bad faith. 15 U.S.C. 1125(d)(1)(B)(VII)."
In view of the above, the Panel finds that the Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel determines that the domain name registered by the Respondent is confusingly similar to the Complainant's trademark, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and used in bad faith.
Accordingly, the Panel decides that the registration of the domain name <chanelbiz.com > be transferred to the Complainant.
Dated: May 28, 2003