WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chloé S.A.S. v. Peifang Huang
Case No. D2014-0040
1. The Parties
The Complainant is Chloé S.A.S. of Paris, France represented by Winston & Strawn LLP, United States of America.
The Respondent is Peifang Huang of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <chloebag.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2014. On January 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 13, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a fashion house, which engages, inter alia, in the design, manufacture and sale of luxury “prêt-à-porter” (or ready-to-wear) clothing, leather goods (notably handbags), shoes, eyewear and fragrances. The Complainant was founded in 1952 and launched its first line of handbags in 2002. The Complainant’s products are sold through more than 140 boutiques in the Americas, Europe, the Middle East, Japan and the Asia-Pacific.
The Complainant is the owner of a word trade mark consisting of the word CHLOÉ (the CHLOE Mark), covering “handbags, purses, travel cases, and travelling bags,” among other items, which it first registered in 1988. It also registered the CHLOE Mark in China, the location of the Respondent, in 1990. The Complainant operates an active website at “www.chloe.com”.
The Domain Name <chloebag.com> was created on May 31, 2011. It currently resolves to an Internet site (the “Respondent’s Website”) which makes reference to handbags, designer handbags, the word “Chloe” and contains a series of advertisements and links to handbag suppliers that appear to be on a pay-per-click basis. On the top of the Respondent’s Website is the statement “The domain chloebag.com is listed for sale. Click here to inquire about this domain name.”
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s CHLOE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the CHLOE Mark. It owns trade marks for the CHLOE Mark in the United State, Europe and China and enjoys significant worldwide reputation in those marks.
The Domain Name consists of the CHLOE Mark in its entirety with the addition of the word “bag” which is a generic industry term.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to publish a pay-per-click website that advertises third-party links offering products for sale that compete directly with the Complainant and/or which appear to be counterfeit knockoffs of the Complainant’s own products. Such use does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that advertises products that appear to be in competition with, or are knock-offs of the Complainant’s luxury products. There is no reason for the Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of the CHLOE Mark. As such, the nature of the Domain Name itself evidences bad faith registration and use. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the CHLOE Mark, having registrations for the CHLOE Mark as a trade mark in the United State, Europe and China.
The Domain Name consists of the CHLOE Mark, with the removal of the accent aigu and the addition of the word “bag”. The removal of the accent aigu and the addition of the word “bag” are not sufficient to distinguish the Domain Name from the CHLOE Mark. An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a site run by the Complainant, offering its handbags and related products. The Panel finds that the Domain Name is confusingly similar to the Complainant’s CHLOE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CHLOE Mark or a mark similar to the CHLOE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant, makes reference to the Complainant and appears to offer handbags, or at least links to locations in which a user could purchase handbags in direct competition with the Complainant, from which the Respondent is likely to receive some revenue.
Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 the Respondent 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the CHLOE Mark at the time the Domain Name was registered. The Respondent’s Website makes reference to “Chloe” and advertises handbags and other luxury goods in direct competition with the Complainant. The registration of the Domain Name in awareness of the CHLOE Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the CHLOE Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website offering handbags or at least offering links, on what appear to be a pay-per-click basis, to websites offering handbags. It is therefore highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the CHLOE Mark. The Panel finds that such use amounts to use in bad faith.
The Panel also finds that by reason of the statement on the Respondent’s Website that “The domain chloebag.com is listed for sale. Click here to inquire about this domain name” and the lack of any other legitimate reason for registering or using the Domain Name, that the Respondent has registered the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <chloebag.com>, be transferred to the Complainant.
Date: February 17, 2014