WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chloé S.A.S. v. Domain Admin., HugeDomains.com
Case No. D2014-1467
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 Admin., HugeDomains.com of Denver, Colorado, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <chloeclothing.com> is registered with GlamDomains LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2014. On August 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 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 formal response, however sent an e-mail on September 22, 2014, (US time), requesting an extension of 14 days to respond to the Complaint. Accordingly, the Center sent an e-mail on September 23, 2104, to inquire whether the parties would like to suspend the proceedings in order to find a settlement agreement. On September 24, 2014, the Complainant requested the continuation of the proceedings.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on October 20, 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
The Complainant states the following:
- It is a world famous fashion house, which engages, inter alia, in the design, manufacture and sale of luxury ready-to-wear clothing, leather goods (notably handbags), shoes, eyewear and fragrances.
- It was founded in 1952 and, since its inception, has employed many world-renowned designers as creative directors.
- All genuine CHLOÉ goods are distributed exclusively through a worldwide network of boutiques and authorized retailers. Its products are sold through more than 140 boutiques in the Americas, Europe, the Middle East, Japan and the South Pacific. Its distribution channel includes high-end retailers such as Sax Fifth Avenue, Harrods and Nordstrom.
The Complainant is registered proprietor of the following registered trademarks on which it relies:
- United States registered trademark No. 1,491,810 for the word mark CHLOÉ in multiple classes, having a registration date of June 14, 1988 and covering certain items of clothing among other items, filed on March 10, 1987;
- European (CTM) registered trademark No. 003683661 for the word mark CHLOÉ in multiple classes, having a registration date of September 21, 2005 and covering “clothing” among other items.
The Complainant states that due to the extensive use and registration of the CHLOÉ trademarks around the world, it is confident that the CHLOÉ marks will be considered well-known and/or famous under the laws of the United States and the European Union. Further, it states it is confident that the CHLOÉ marks should be afforded the status of notorious marks and should therefore enjoy liberal protection under the Paris Convention.
The Complainant also operates the website located at “www.chloe.com”. The website features information about the Complainant’s activities in North America, Europe and Asia.
The disputed domain name <chloeclothing.com> was created on May 19, 2014 (the “Relevant Date”).
Evidence shows that as at August 26, 2014 the disputed domain name was being offered for sale from the website “www.hugedomains.com” for a fixed price of USD 3,095. As at September 1, 2014, the disputed domain name was not being used to host any content.
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 Respondent 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 Respondent has 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 CHLOÉ as at the Relevant Date by way of its United States and European (CTM) registered trademarks specified above. Each registered trademark well predates the Relevant Date.
The Panel considers that the Complainant’s CHLOÉ registered trademark is instantly recognizable within the disputed domain name and that the descriptive word “clothing” does not differentiate the disputed domain name from the Complainant’s trademark. Rather, the addition of that word will increase the likelihood of confusion by directly describing goods which fall within the Complainant’s trademark specifications and field of business (namely clothing).
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 favour of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has 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 Respondent 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 Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is 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 Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states, and the Panel accepts, that it has not granted the Respondent any licence, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the CHLOÉ marks.
The Complainant also notes that in correspondence the Respondent has used the email address <[…]@namebright.com> and has referred to itself in the WhiIs database as “Domain Admin, Huge Domains.com” (rather than using any name related to the disputed domain name).
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any submissions to the contrary from the Respondent, 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
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.
As already stated, the Complainant is the owner of registered trademarks in the United States and Europe for CHLOÉ which well predate the Relevant Date. Further, the Complainant has unregistered rights in the trademark CHLOÉ as a result of its lengthy and extensive use of the mark in respect of (inter alia) luxury ready-to-wear clothing. In addition, its website “www.chloe.com” features information about its range of CHLOÉ ready-to-wear clothing together with the boutiques in Europe, the Americas, Asia-Pacific, Japan and the Middle East where CHLOÉ products can be purchased physically or online. These boutiques include some of the world’s most renowned department stores as well as an extensive range of standalone stores.
The Panel finds that because of the Complainant’s extensive and lengthy use of its well known trademark, particularly for ready-to-wear clothing, the Respondent must have been aware of the Complainant’s trademark at the time of registration of the disputed domain name. The combination of the mark CHLOÉ and “clothing” in the disputed domain name is an unusual one and itself is indicative of knowledge of the Complainant.
In this regard, the Panel is entitled to draw adverse inferences from the fact that the Respondent has chosen not to provide a formal response or to provide an explanation.
The Panel is satisfied on the facts that the Respondent registered, and is using, the disputed domain name primarily for the purpose of selling its registration to the Complainant or a competitor for valuable consideration and excess of the documented out-of-pocket costs directly related to the disputed domain name. This is evidenced in particular by the offering for sale of the disputed domain name for USD 3,095 on the website “www.hugedomains.com” as at August 26, 2014. Such conduct amounts to registration and use of the disputed domain name in bad faith under paragraph 4(b)(i) 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 name <chloeclothing.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: November 3, 2014