WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chloé S.A.S. and Montblanc-Simplo G.m.b.H. v. Wei Huan
Case No. D2014-1453
1. The Parties
The Complainants are Chloé S.A.S. of Paris, France and Montblanc-Simplo G.m.b.H. of Hamburg, Germany, both represented by Winston & Strawn LLP, United States of America.
The Respondent is Wei Huan of Baiyin, China.
2. The Domain Names and Registrar
The disputed domain names <chloejpshopsale.info>, <jpchloebags.info>, <japanmontblanc.info> and <montblancpen.info> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 27, 2014. On August 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 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 the Rules, paragraph 7.
On October 16, 2014 the Panel issued Administrative Panel Procedural Order No. 1 through the Center, copied to the email address of the Respondent, requesting the Complainants to explain and confirm their relationship in order for consolidation of the Complaints to be considered. A reply was received by the Center on behalf of the Complainants, copied to the Respondent, on October 21, 2014.
4. Factual Background
The first Complainant, Chloé S.A.S., was founded in 1952 and is engaged in the design, manufacture, and sale of luxury goods including clothes, leather goods, shoes, eyewear and fragrances. The first Complainant's products are sold internationally through boutiques and high-end stores such as Saks Fifth Avenue and Harrods.
The second Complainant, Montblanc-Simplo G.m.b.H., and its affiliates or predecessors since 1906, have designed, manufactured and sold luxury writing instruments, watches, leather pieces, jewellery, fragrance and eyewear. The second Complainant's products are sold internationally in more than 70 countries through authorized retailers, jewellers and boutiques.
The Complainants hold a number of trademark registrations of which the following are representative:
CHLOE, China Trademark Office, registered June 20, 1990, registration number 522314, including goods made of leather;
CHLOE, Community Trade Mark ("CTM"), Office for Harmonization in the Internal Market ("OHIM"), filed March 5, 2004, registered September 21, 2005, registration number 003683661, classes 3, 9, 14, 18, 25;
CHLOE, United States Patent and Trademark Office ("USPTO"), filed March 10, 1987, registered June 14, 1988, registration number 1491810, classes 3, 9, 18, 24, 25, 26;
MONTBLANC, China Trademark Office, registered May 7, 2007, registration number 996480, class 16;
MONTBLANC, USPTO, filed December 24, 1963, registered September 1, 1964, registration number 776208, for fountain pens, cases for fountain pens, ball point pens, ball point cartridges, ball point paste, mechanical pencils, lead for mechanical pencils;
MONTBLANC, World Intellectual Property Organization, international trademark registration, registered August 12, 1966, registration number 318764, class 16.
The Complainants also operate their own websites "www.chloe.com" and "www.montblanc.com".
Nothing is known about the Respondent except for such contact information as was provided to the Registrar in order to register the disputed domain names, which were created on the following dates:
<chloejpshopsale.info> May 7, 2014
<jpchloebags.info> February 21, 2014
<japanmontblanc.info> January 16, 2014
<montblancpen.info> January 16, 2014.
5. Parties' Contentions
The Complainants contend that they have rights in the trademarks listed in section 4 above. They submit that the CHLOE and MONTBLANC trademarks should be afforded the status of notorious marks and should therefore enjoy liberal protection under the Paris Convention.
The Complainants contend that the disputed domain names are confusingly similar to the Complainants' trademarks. The disputed domain names <chloejpshopsale.info> and <jpchloebags.info> comprise the CHLOE trademark and the generic terms "jp," "shop," "sale," or "bags". The disputed domain names <japanmontblanc.info> and <montblancpen.info> fully include the MONTBLANC trademark and the generic terms "Japan" or "pen". The incorporation of these generic terms should not be held to avoid confusing similarity.
The Complainants further contend that the Respondent does not have rights or legitimate interests in respect of the disputed domain names. The Respondent has not been granted any licence that could permit ownership or use of any domain name confusingly similar to the Complainants' trademarks. The Respondent appears to be known as "Wei Huan" and by the email name "jiowerenw@[redacted]", not by the names "Chloe" or "Montblanc". The Complainants say that the Respondent has never used the disputed domain names for a legitimate business or for a noncommercial or fair purpose. The disputed domain names currently or formerly have been redirected to the website "www.rakuten.co.jp" which is an online outlet for jewellery, furniture, clothing and other items. At present <japanmontblanc.info> and <montblancpen.info> are held passively without the display of any content.
The Complainants further contend that the disputed domain names were registered and are being used in bad faith. The Respondent is located in China and the Complainants' trademarks are registered in China and other countries, therefore it is asserted that the Respondent registered the disputed domain names with actual or constructive knowledge of the Complainants' relevant trademark rights.
The Complainants reiterate that the disputed domain names have been redirected to a website that sells products in competition with the Complainants, including counterfeit copies of the Complainants' products, and say that this activity constitutes disruption of the Complainants' businesses.
The Complainants contend that the Respondent has registered the disputed domain names in order to trade off the reputation and goodwill of the Complainants' trademarks. It is submitted that according to precedent the holding of a domain name that obviously appears to be connected with a complainant and its products, by someone with no such connection, suggests opportunistic bad faith.
It is submitted that in the event the Respondent claims to have been unaware of the Complainants' rights in their trademarks, then because the trademarks have been well publicised, the Respondent ought to have been aware.
The Complainants have cited a number of previous decisions under the Policy that, they submit, should be supportive of their position.
The Complainants request the transfer to themselves, collectively, of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complaint as originally presented comprised combined complaints from two Complainants, with the implication that they should be decided together.
Paragraph 10(e) of the Rules states:
"A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules."
Paragraph 4(f) of the Policy states:
"Consolidation. In the event of multiple disputes between you [i.e., a respondent] and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN."
The Policy at paragraph 4(f) refers to a single complainant and does not specifically address the situation of multiple complainants. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16, refers to previous WIPO cases involving multiple complainants. Panels have tended to permit consolidation where the complainant companies or entities can show that they are related through some overarching ownership or affiliation.
In response to Administrative Panel Procedural Order No. 1 the Complainants' representative stated that both Chloé S.A.S. and Montblanc-Simplo G.m.b.H. are subsidiaries of Compagnie Financière Richemont S.A., of Geneva, Switzerland. The Panel is satisfied that consolidation of the Complaints is appropriate in this instance also given that the Respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion and it is equitable and procedurally efficient to permit the consolidation.
B. Identical or Confusingly Similar
The disputed domain names <chloejpshopsale.info> and <jpchloebags.info> each contain the entirety of the registered and long-established trademark CHLOE. In these two disputed domain names the trademark CHLOE is accompanied variously by the words "shop", "sale" or "bags", which reflect the normal business activities of the first Complainant. Also incorporated is the abbreviation "jp" which it may reasonably be concluded is intended to evoke the location "Japan", since according to the evidence these disputed domain names are redirected to a website registered in Japan.
The disputed domain names <japanmontblanc.info> and <montblancpen.info> each contain the registered and long-established trademark MONTBLANC in its entirety. The trademark MONTBLANC is accompanied by either "japan" or "pen". The second Complainant sells pens, writing instruments, apparel and related items. These two disputed domain names, according to the evidence, have been redirected to a website registered in Japan.
The Panel finds that each of the disputed domain names comprises a registered and distinctive trademark owned by one of the Complainants and accompanied by generic or descriptive words or abbreviations that do not create a distinction from the trademark sufficient to avoid confusing similarity. Accordingly the Panel finds for the Complainants in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainants have stated prima facie that they have not granted to the Respondent any licence or authorisation to use their trademarks and that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(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 a legitimate noncommercial 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."
The above circumstances are illustrative and the Respondent may seek to establish rights or legitimate interests alternatively.
The Complainants have sought to pre-empt any response in respect of the provisions of paragraph 4(c) of the Policy. According to the evidence, the disputed domain names redirect or previously have been redirected to a Japanese-registered website selling products related in nature to those of the Complainants. Irrespective of the Respondent's business model, use of the disputed domain names containing the Complainants' trademarks, with the effect of redirecting visitors to an alternative source of consumer goods, cannot constitute bona fide use within the meaning and intentions of paragraph 4(c)(i) of the Policy.
There is no evidence that the Respondent Wei Huan, or the Respondent's business, has been commonly known by any of the disputed domain names as required by paragraph 4(c)(ii) of the Policy. The disputed domain names are found to be or have been in commercial use and cannot be deemed to be in noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel cannot conceive of any way in which the Respondent might have rights or legitimate interests in the disputed domain names and accordingly finds for the Complainants under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants are required to prove under paragraph 4(a)(iii) of the Policy in respect of each disputed domain name that it has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location."
Paragraph 4(b)(iv) of the Policy is the most pertinent in this instance. On the evidence, the disputed domain names all redirect or have previously been redirected to the Japanese-registered website "www.rakuten.co.jp", belonging to Rakuten, Inc., which describes itself in English on its website as "Japan's largest online shopping mall".
The range of goods offered for sale through "Japan's largest online shopping mall" is large and includes clothes, eyewear, cosmetics, jewellery and accessories. These items are generally related to and would be in competition with the wide range of products under which the CHLOE trademarks are registered. Writing instruments, apparel or items under international class 16, to which the MONTBLANC trademarks refer, were not readily discernable in the screen shots of the website "www.rakuten.co.jp" produced in evidence, and which are written essentially in Japanese with small images of the merchandise. Nevertheless the website "www.rakuten.co.jp" is held to be a seller of consumer goods in competition with the Complainants, the interpretation of "competitor" under the Policy being wide (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279).
In overview, the disputed domain names have served the purpose of redirecting Internet visitors to the website of a competitor of the Complainants. It is implausible that the Respondent has gone to the expense and trouble of making this arrangement other than for recompense. There is no evidence of the precise mechanism of such recompense. Nevertheless, on the evidence, it is found to be more probable than not that the Respondent has intended to gain commercially by arranging that visits to the disputed domain names shall resolve to become visits to "www.rakuten.co.jp". For the arrangement to be commercially remunerative the disputed domain names must attract visitors. Achieving this by the incorporation of the famous trademarks CHLOE or MONTBLANC into the disputed domain names is inevitably likely to confuse at least some Internet users into believing they will be taken to a website endorsed by one of the Complainants. Although some visitors may readily have realised after being redirected to "www.rakuten.co.jp" that they had been deceived by their initial attraction to the trademarks CHLOE or MONTBLANC, the damage to the Complainants' businesses would already have been caused by that initial confusion.
On the balance of probabilities the Panel finds the disputed domain names to have been used in bad faith in the terms of paragraph 4(b)(iv) of the Policy. The Panel further finds on the balance of probabilities that the disputed domain names were registered for the purposes for which they have been used, constituting registration in bad faith, and therefore finds both registration and use in bad faith of all of the disputed domain names in the terms of 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 <chloejpshopsale.info>, <jpchloebags.info>, <japanmontblanc.info> and <montblancpen.info> be transferred to the Complainants.
Dr. Clive N.A. Trotman
Date: October 22, 2014