WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chloé S.A.S. v. DVLPMNT Marketing, Inc.

Case No. D2014-0039

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 DVLPMNT Marketing, Inc. of Charlestown, Nevis, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <chloebags.com> (the “Domain Name”) is registered with DNC Holdings, Inc. (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 January 17, 2014, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2014.

The Center appointed William P. Knight as the sole panelist in this matter on February 19, 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, engaged in the design, manufacture and sale of a variety of clothing, leather goods, shoes, eyewear and fragrances. The Complainant’s distribution is made through an international network of boutiques and authorised retailers, information about which is displayed at the Complainant’s website at “www.chloe.com”.

The Complainant has possessed the registered trademark CHLOE in the United States since June 14, 1988, registered in respect of “handbags, purses, travel cases, and travelling bags” among other goods, and in Europe since September 21, 2005.

The Domain Name was first registered on July 27, 2005. The Respondent’s website consists of two lists of Google AdSense advertisements, one of which displays advertisements pertaining to the keyword “bags”. The Respondent’s website also features a non-functional search bar and a link to the website’s privacy policy. There is no other substantive content on the website.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(a) of the Policy, the Complainant asserts:

(i) that the Domain Name is confusingly similar to its CHLOE trademarks;

(ii) that the Respondent has no rights or 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 asserts that the Domain Name is confusingly similar to its CHLOE trademarks as the Domain Name fully incorporates the registered trademark, notwithstanding the inclusion of the additional word “bags”. The Complainant contends that this additional word does not differentiate the Domain Name from its trademarks such as to prevent it from being confusingly similar.

The Complainant states that it has not authorised the use of the Domain Name by the Respondent. The Complainant asserts that there is no indication the Respondent has ever been known by the name CHLOE or by any similar name. The Complainant contends that the website at the Domain Name displays third-party pay-per-click advertisements which offer products directly in competition with those of the Complainant.

The Complainant argues that the Respondent’s registered the Domain Name having actual or constructive knowledge of the Complainant’s trademark “by virtue of the Complainant’s prior registration of that mark with the trademark office of the European Union, where the Complainant is a resident, and the United States, where the Respondent’s website is targeted and where the Registrar is located” and that this evidences the bad faith required by the Policy. The Complainant also asserts that the Domain Name has been used to publish third-party links which offer counterfeit versions of the Complainant’s products for sale, which is also conduct falling squarely within the definition of bad faith, but provides no evidence of this assertion. The Complainant also argues its business is disrupted by use of the Domain Name in displaying advertisement links to the Complainant’s competitors.

B. Respondent

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 establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:

1. the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2 the Respondent has no rights or legitimate interests in respect of the Domain Name; and

3. the Domain Name has been registered and is being used in bad faith.

Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a determination in favor of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has trademark rights in CHLOE for the purposes of the Policy, by virtue of its United States and European trademark registrations alone, if not its trading from an earlier date. The Panel is also satisfied that the Domain Name is confusingly similar to the Complainant’s CHLOE trademark. The Panel is satisfied that the dominant component of the Domain Name is the word “Chloe”. The word “bags” is simply a generic word describing one of the Complainant’s products and does nothing to diminish the confusing similarity caused by the primary word “Chloe”. The domain “.com” in the Domain Name does not carry any distinguishing weight.

The first element of the UDRP is satisfied.

B. Rights or Legitimate Interests

The principal component of the Domain Name is a common female name, in the western world, at least. However, there is no evidence that the Domain Name is being used for any other purpose than the offering of fashion handbags which, as has been mentioned, is a type of product for which the Complainant has a registered trademark. The Complainant has not authorized the use of the Domain Name by the Respondent.

It might be a legitimate use of the Domain Name to offer the genuine goods of the Complainant, as does a reseller or distributor, in the circumstances set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, in this case, the nature of the material presented on the website at the Domain Name is cursory at best. The Domain Name features just a series of third party advertisements, a non-operational search function and a privacy policy. Less than half of the advertisement links relate to bags.

In such circumstances, in the absence of any explanation to the contrary by the Respondent, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant’s evidence and arguments in respect of this element of the Policy is feeble and muddled.

The Respondent is located outside the United States. The location of the Registrar is irrelevant.

The Complainant has only established that it had a United States trademark registration that predates the registration of the Domain Name specified in the Complaint, July 27, 2005.

Whilst the Complainant traded from an earlier date, and the Complainant asserts that its mark CHLOE is world famous, it has provided no evidence at all to support a claim for rights in the nature of reputation or goodwill in the name CHLOE outside the United States as at July 27, 2005.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may indicate registration and use in bad faith. Paragraph 4(b)(iv) of the Policy provides that evidence of the registration and use of a domain name in bad faith includes circumstances in which the Respondent “by using the domain name, … (has) intentionally attempted to attract, for commercial gain, Internet users to … (the) web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of … (the) web site or location or of a product or service on your … (the) site or location.”

However, a closer inspection of the WhoIs history of the Domain Name shows that it has been traded frequently since the time of its first registration, in fact first being registered to an entity going by the name of Domain Magic, LLC in Lutz, Florida, and the Respondent acquired it as recently as November 13, 2013 (although it may have been held by related entities from as early as August of the same year).

Under the Policy, it has been held that it is this later date upon which the Respondent’s registration is assessed for bad faith; see, for example, Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921.

On balance, the Panel finds that the Respondent has intentionally created a likelihood of confusion in registering the Domain Name (at the time of its acquisition) consisting of the Complainant’s well-known mark and a product it has a reputation for selling. The Panel notes the Complainant’s claim that the Respondent’s website displayed links to third parties which offered counterfeit versions of the Complainant’s products, but finds no evidence in the submissions to support this claim. The Panel also notes that the Respondent’s website features no substantive content other than Google AdSense advertising, which usually provides Domain Name registrants revenue on a pay-per-click basis. The Panel, on balance, can assume an illegitimate purpose in this case and finds that the Respondent created the likelihood of confusion to attract traffic to its website and profit from the website’s advertising.

As a result of these circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.

7. Decision

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 <chloebags.com> be transferred to the Complainant.

William P. Knight
Sole Panelist
Date: February 24, 2014