WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Manami Murakami, \u82f1\u8a18 \u77f3\u6751 [英記 石村]
Case No. D2020-2459
1. The Parties
1.1 The Complainant is Chanel, Inc., United States of America (“United States”), self-represented.
1.2 The Respondent is Manami Murakami, Japan and \u82f1\u8a18 \u77f3\u6751 [英記 石村], China
2. The Domain Names and Registrar
2.1 The disputed domain names <jpchanel.shop>, <vipchanel.shop> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2020. In addition to the Domain Names, the Complainant also advanced a complaint in respect of the domain name <chanelblog.com>. At the time of filing, the publicly available WhoIs details for all these Domain Names did not disclose the name of the registrants, but they did provide information that suggested that the registrants were located in China, Japan and the United States.
3.2 On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with all the domain names identified in the Complaint. On September 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for these domain names. In the case of <chanelblog.com> and <jpchanel.shop>, the registrant was identified as “Manami Murakami”. In the case of <vipchanel.shop>, the registrant was identified as \u82f1\u8a18 \u77f3\u6751. The Panel understands this to be a reference to the Unicode for the Chinese characters, 英記 石村.
3.3 The Center sent an email communication to the Complainant on September 25, 2020 providing the registrant and contact information disclosed by the Registrar. In response on September 28, 2020 the Complainant filed a submission seeking to amend the Complaint to include the details of the registrants disclosed by the Registrar and seeking “consolidation of the Respondents”.
3.4 On September 29, 2020, the Center informed the Complainant that <chanelblog.com> had “pendingDelete” status and that the Registrar had informed the Center that it was “unable to recover the domain name”. In response, on September 29, 2020, the Complainant informed the Center that it wished to withdraw the <chanelblog.com> domain name from the present proceedings.
3.5 The Center verified that the Complaint as amended 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”).
3.6 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 3, 2020. 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
4.1 The Complainant is a New York registered corporation and forms part of the very well-known Chanel group of companies, which has manufactured and distributes luxury products for over 90 years. Global sales of Chanel products in 2018 exceeded USD 10 billion, and in 2019 exceeded USD 11 billion. The Complainant’s products have also been promoted on a website that operates from the domain name <chanel.com> since 2000.
4.2 The Complainant and other companies within the Chanel group are the owner of registered trade marks that incorporate or comprise the term “Chanel” throughout the world. The Complainant’s marks include:
(i) United States registered trade mark no. 0,626,035 for CHANEL as a typed drawing in class 18 and registered on May 1, 1956; and
(ii) United States registered trade mark no. 1,241,265 for CHANEL as a typed drawing in class 25 and registered on June 7, 1983.
4.3 The Domain Name <jpchanel.shop> was registered on October 12, 2019 and the Domain Name <vipchanel.shop> was registered on February 22, 2020. Since registration the Domain Names have been used for websites selling Chanel branded products. At least parts of both of these websites appear to be the same and both use Japanese script throughout. They both also have the appearance of being operated by the Complainant or one of its affiliates, using the same font as that used on the Complainant’s genuine “www.chanel.com” website, copying artwork that has been created by the Chanel group to promote its products, and bearing a photograph of a genuine “Chanel” shop in Barcelona.
5. Parties’ Contentions
5.1 The Complainant refers to its business and marks and claims that its “sister company”, Chanel SARL, also owns CHANEL marks in Japan. It also describes the manner in which the Domain Names have been used and the content of the websites operating from the Domain Names, and claims that the products sold on these websites are counterfeit. However, no explanation or argument is advanced as to why the products are counterfeit.
5.2 The Complainant contends that the Domain Names are confusingly similar to the Complainant’s CHANEL trade mark in that they each incorporate that mark in its entirety. It also contends that the addition of the text “vip” or “jp” and the generic Top-Level Domain (“gTLD”) “.shop”, does not create a sufficiently distinct domain name to avoid application of the Policy. Those additions are likely to be read in the case of “vip” as a reference to “VIP clients”, in the case of “jp” to the country of Japan, and in the case of “.shop” to a term commonly used in online retail. These additions are all said to make confusion more likely.
5.3 Further, the Complainant contends that the use made of the Domain Names does not provide a right or legitimate interest and evidences bad faith registration and use.
5.4 The Complainant also contends that both Domain Names can be included in the proceedings notwithstanding that the information provided by the Registrar records different registrants. The reason for this is said to be that the registrant in the case of each of the Domain Names is either the same person, or if they are different persons, they are connected to each other and the Domain Names are under common control. In support of those contentions the Complainant relies upon the fact that aspects of the websites are the same, that both are directed to Japanese speakers, that both contain the same contact information and that the Domain Names have been registered through the same Registrar.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address each aspect of the Policy in turn. But before doing so it is necessary to record that the Panel agrees with the Complainant’s contention that, notwithstanding the different registrant details, the Complaint can and should proceed in respect of both of the Domain Names. As is stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”):
“Where a complaint is filed against multiple respondents, [when considering the issue of consolidation] panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair.”
6.5 The Panel accepts that the Domain Names and their associated websites either have been registered by the same person, or are under common control, or at the very least operated by persons that are connected and engaged in the same underlying enterprise. This is apparent from the similarities of the content in the websites, including the use of identical contact details. There are also no facts of circumstances of which the Panel is aware that would suggest that consolidation would be unfair to the Respondent. In contrast, not allowing the proceedings to continue in respect of both of the Domain Names would be unfair to the Complainant. This decision proceeds accordingly.
A. Identical or Confusingly Similar
6.6 The Complainant has satisfied the Panel that it has registered trade mark rights in respect of the term “Chanel” inter alia in the form of various United States typed drawing trade mark registrations. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable within the disputed domain name” (as to which see section 1.7 of the WIPO Overview 3.0). This is clearly the case with the Domain Names only sensibly being read as the terms “jp”, “Chanel” and “shop”, and the terms “vip”, “Chanel” and “shop”, in combination. The Complainant’s mark is therefore clearly recognisable in each of the Domain Names.
6.7 The Complainant has, therefore, satisfied the Panel that the Domain Names are confusingly similar to its trade mark and has thereby made out the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests and Registered and Used in bad faith
6.8 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and registration and use in bad faith, in turn. However, in a case such as this it is more convenient to consider those issues together.
6.9 The Complainant essentially contends that the Domain Names have been registered and held for the purpose of falsely impersonating the Complainant, with a view to the sale of counterfeit goods. So far as the allegation of sale of counterfeit goods is concerned, the registration and use of a domain name for such a purpose does not provide a right or legitimate interest and such activity is likely to demonstrate bad faith (see sections 2.13.1 and 3.1.4 of the WIPO Overview 3.0).
6.10 The Complainant’s assertions here may well be correct. However, unhelpfully this is little more than an assertion on the part of the Complainant. As is recorded in section 2.13.1 of the WIPO Overview 3.0, usually something more (and it often it need not be much more) is required. Perhaps it is inherent in the Complainant’s assertions that the Respondent is impersonating the Complainant with a view to selling Chanel branded goods, that it is more likely than not that the goods themselves are not genuine. But if that is so, it is not at all clear why the Complainant does not just say this.
6.11 However, in this particular case it does not matter. The Panel accepts that there is clear evidence in the form of the websites operating from the Domain Names, that the Domain Names have been registered and held for the purpose of fraudulent impersonating the Complainant in order to further the Respondent’s online retail activities. The registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308). In this case, the Respondent’s activities also fall within the example of circumstances indicating bad faith set out in paragraph 4(b) of the Policy.
6.12 In the circumstances, the Complainant has made out the requirement of paragraph 4(a)(ii) and 4(a)(iii) of the Policy so far as both of the Domain Names are concerned.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <jpchanel.shop> and <vipchanel.shop> be transferred to the Complainant.
Matthew S. Harris
Date: November 11, 2020