WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chloé S.A.S. v. Domain Administrator, See PrivacyGuardian.org / Connie Ida
Case No. D2014-1380
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 Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Connie Ida of GZ, China.
2. The Domain Names and Registrar
The disputed domain names <chloedeal.com>, <needchloe.com>, <uniquechloe.com>, <voguechloe.com> and <wholesalechloe.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2014 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 August 25, 2014.
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 Respondent of the Complaint, and the proceedings commenced on September 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2014.
The Center appointed David Perkins as the sole panelist in this matter on September 26, 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 the Rules, paragraph 7.
4. Factual Background
4. A. Complainant
4. A.1 Complainant is the well known fashion house involved in the design, manufacture and sale under the Chloé brand of luxury “pret-a-porter” clothing, leather goods (notably, handbags), shoes, eyewear and fragrances.
4. A.2 Complainant was founded in 1952 and over the years has employed many world-renowned designers as creative director. Complainant introduced its first collection in 1956 and is recognised as the original creator of ready-to-wear luxury clothing. Complainant launched its first line of handbags in 2002 and its Chloé Paddington, which was launched in October, 2004 for the Spring/Summer 2005 collection, soon became known as the “it-bag” for followers of fashion.
4. A.3 Complainant is the proprietor of the trade mark CHLOE, which is registered in many countries around the world including the following:
Classes of Goods
Dates of Application and Registration
United States of America
3; 9; 18; and 24-26
Filed: March 10, 1987 Registered: June 14, 1988
Community Trade Mark (CTM)
3; 9; 14; 18; and 25
Filed: March 5, 2004 Registered: September 21, 2005
People's Republic of China
Various, including leather goods.
Registered: June 20,1990
4. A.4 Complainant states that all genuine Chloé branded goods are distributed exclusively through a worldwide network of boutiques and authorised retailers. Such goods are sold through more than 140 boutiques in the Americas, Europe, the Middle East, Japan and South East Asia. Complainant’s distribution channel includes high-end retailers such as Harrods, Saks Fifth Avenue and Nordstrom.
4. A.5 Information about Complainant, its activities and products is provided at its website, “www.chloe.com”.
4. A.6 Given the extent of the worldwide use, registration and reputation of its CHLOE trade mark, Complainant asserts that the CHLOE mark would be regarded as well known and/or famous under the laws of China (where Respondent is domiciled), France (where Complainant has its headquarters) and the United States (to which Respondent’s English language websites are, inter alia, directed). In the circumstances, Complainant says that its CHLOE mark should be afforded the status of a notorious mark and, consequently, enjoy liberal protection under The Paris Convention.
4. B. Respondent
4. B.1 In the absence of a Response, what is known of the Respondent appears from the amended Complaint and its Annexes.
4. B.2 Respondent, Connie Ida, was the registrant of the five disputed domain names, namely:
<uniquechloe.com> registered May 9, 2014;
<needchloe.com> registered May 11, 2014;
<voguechloe.com> registered May 13, 2014;
<wholesalechloe.com> registered May 14, 2014; and
<chloedeal.com> registered May 26, 2014.
4. B.3 Between the date of when the original Complaint was filed on August 13, 2014 and August 25, 2014 when the amended Complaint was filed, two of the disputed domain names were transferred. The domain name <voguechloe.com> was transferred to Ashley Y and the domain Name <wholesalechloe.com> to Belinda T. The registrant email addresses are […]@maildak.com for each of the Respondent, Ashley Y and Belinda T. All three registrants are domiciled in China, the addresses of the Respondent and Ashley Y being both in the same City and Province. On September 1, 2014, the Registrar contacted the Center stating that the temporary transfer of the above-referenced disputed domain names was “due to an error on [the Registrar’s] end” and that these disputed domain names had been transferred back to Connie Ida. Since that date the publicly available WhoIs information has consistently listed the Respondent, Connie Ida, as the registrant of all five disputed domain names.
4. B.4 Exhibited to the amended Complaint are printouts of the front pages of the websites to which the disputed domain names resolved as at August 13, 2014 (the date when the original Complaint was filed) and August 25, 2014 (the date when the amended Complaint was filed). Complainant’s case is that these websites offer for sale counterfeit products and/or products that compete with its Chloé products and that the content of the websites was substantially the same at both dates.
5. Parties' Contentions
5. A. Complainant
5. A.1 Multiple Respondents
5. A.1.1 Complainant asserts that the three current registrants (according to the amended Complaint) are one and the same person. Namely, that Ashley Y and Belinda T are the same person as Connie Ida, the original Registrant of all five disputed domain names. Complainant bases this assertion on the fact that - as noted in paragraph 4.B.3 above - the email address associated with all three is “@maildak.com”. Further, the content of the websites to which the five disputed domain names resolve is, substantially, the same.
5. A.1.2 Alternatively, notwithstanding paragraph 3(c) of the Rules, Complainant requests - pursuant to the Panel’s power under paragraph 10(e) of the Rules - consolidation of the Complaint against the Respondent, Ashley Y and Belinda T. From cases decided under the Policy, Complainant says two questions arise which must be answered in the affirmative in order to justify consolidation against multiple respondents. First, the disputed domain names must be under “common control”. Second, consolidation must be fair and equitable to all parties. The cases cited are Tiffany and Co. v Jin Liang, WIPO Case No. D2010-2200; Blue Cross and Blue Shield Association v Private Whois Serv., WIPO Case No. D2010-1699; and Speedo Holdings BV v Programmer, WIPO Case No. D2010-0281.
5. A.1.3 Complainant then identifies the features which have been found to be indicative of “common control”, citing RapidShare AG v PrivacyAnywhere Software LLC, WIPO Case No. D2010-0894; Sharman License Holdings Ltd. v Dustin Durrance, WIPO Case No. D2004-0659; as well as the Blue Cross and Speedo Decisions cited above. Applying those features to the facts of this case, Complainant says that the evidence supports a finding of “common control”. In particular, Complainant relies upon (1) the fact that at the time when the original Complaint was filed the Respondent was the registrant of all five disputed domain names; (2) the Registrar for all those domain names is the same; (3) all of the disputed domain names incorporate its CHLOE trade mark in its entirety; and (4) all of the disputed domain names resolve to virtually identical websites.
5. A.1.4 In the circumstances, Complainant says that it is clear that its complaint arises from a common nucleus of fact and that consolidation will - quoting from the Speedo Decision - promote “the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and furthers the fundamental objectives of the Policy”.
5. A.2 Identical or Confusingly Similar
5. A.2.1 Complainant relies on its rights to the CHLOE trade mark, which - as noted above - Complainant asserts is a well known and/or famous mark.
5. A.2.2 Complainant points to the fact that all the disputed domain names incorporate the CHLOE trade mark in its entirety with the addition of the generic industry terms “need”, “vogue”, “unique”, “wholesale” and “deal”. Complainant then cites Decisions under the Policy where the addition of such generic terms has been held not to avoid a finding of confusing similarity.
5. A.3 Rights or Legitimate Interests
5. A.3.1 Complainant’s case is that Respondent cannot demonstrate any of the circumstances provided for in paragraph 4(c) of the Policy. First, there is no evidence that Respondent has ever been commonly known by any of the five disputed domain names: Policy paragraph 4(c)(ii).
5. A.3.2 Second, Complainant says that it has never granted Respondent any license or other authorisation to use the CHLOE marks.
5. A.3.3 Third, Complainant says that that Respondent’s use of the five disputed domain names, which resolve to websites offering counterfeit Chloé products and/or products which compete with Complainant’s products, is not a bona fide use (Policy, paragraph 4(c)(i)), nor is it a legitimate noncommercial or fair use (Policy paragraph 4(c)(iii)). The extracts from those websites (at Annexes 8 and 9 to the Complaint) offer handbags, shoes and dresses all prefixed by the CHLOE mark. For example, Chloé Paddington handbags, as to which see paragraph 4.A.2 above. Such use, Complainant says, is neither fair nor noncommercial and is demonstrably intended to mislead consumers.
5. A.4 Registered and Used in Bad Faith.
5. A.4.1 Given the well known status of the CHLOE mark worldwide, including in China where Respondent is domiciled, Complainant says that Respondent clearly registered the disputed domain names with actual, or constructive, knowledge of Complainant’s rights in that mark. Consequently, such registrations, Complainant says, were made in bad faith.
5. A.4.2 Further, registration and use of disputed domain names which are confusingly similar to Complainant’s CHLOE mark also evidences Respondent’s bad faith.
5. A.4.3 Third, use of the disputed domain names for websites which offer counterfeits of Complainant’s own Chloé products is, Complainant says, manifestly a bad faith use and has been recognised as such in Decisions under the Policy.
5. A.4.4 Fourth, Complainant says that it is similarly a bad faith use to use the disputed domain names to resolve to websites offering products in competition with those sold under its CHLOE mark. Complainant cites earlier Decisions under the Policy in support of this and the preceding paragraph.
5. A.4.5 Finally, Complainant asserts that there is no reason for Respondent to have registered the five disputed domain names other than to trade off Complainant’s reputation in the CHLOE mark. This, coupled with the use to which those domain names have been put, is further evidence of Respondent’s bad faith registration and use of the disputed domain names.
5. B. Respondent
As noted, no Response has been filed by Respondent.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 Multiple Respondents
6.5.1 It is unnecessary for the Panel to assess Complainant’s consolidation request. The Registrar confirmed to the Center on September 1, 2014, that all of the disputed domain names are indeed registered with Respondent and that the temporary transfer of two of these disputed domain names to others was “an error on [the Registrar’s] end.” As the WhoIs records for all of the disputed domain names have consistently listed Respondent as registrant since September 1, 2014, the Panel considers this proceeding to involve only one registrant. Therefore the Panel need not engage in a preliminary consolidation inquiry and can proceed to consider the merits of the case
6.6 Identical or Confusingly Similar
6.6.1 In the light of the facts set out in paragraphs 4.A.1 to 4.A.6 above, Complainant clearly has rights in the CHLOE trade mark. Further, the Panel is satisfied on the evidence presented by Complainant that, in the fashion sector, the CHLOE name and mark is a very well known mark internationally.
6.6.2 The Panel is also satisfied that, for the reasons summarised in paragraph 5.A.2.2 above, each of the five disputed domain names is confusingly similar to Complainant's CHLOE trade mark.
6.6.3 Accordingly, the amended Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.7 Rights or Legitimate Interests
6.7.1 The Panel finds that Complainant’s case summarised in paragraphs 5.A.3 constitutes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted. There is no evidence that Respondent could demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case or that rights or legitimate interests in any of the disputed domain names could otherwise be established by Respondent. Accordingly, the amended Complaint succeeds under paragraph 4(a)(ii) of the Policy.
6.8 Registered and Used in Bad Faith
6.8.1 The Panel finds that the case summarised in paragraphs 5.A.4 above is well made out. However, in the event that the goods on offer at the disputed domain names are indeed genuine Chloé products and not counterfeits as suggested by Complainant, the Panel would only add that this would make no difference to its finding on this Policy element, as Respondent has failed to satisfy the test set down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In particular the websites fail to accurately and prominently disclose the relationship (or lack thereof) between the Respondent and the trade mark owner. Consequently, the amended Complaint also succeeds 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 disputed domain names <chloedeal.com>, <needchloe.com>, <uniquechloe.com>, <voguechloe.com> and <wholesalechloe.com> be transferred to the Complainant.
Date: October 9, 2014