Le Château Inc. v. Domclick.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Le Château Inc. v. Domclick.com

Case No. D2003-0167

1. The Parties

The Complainant is Le Château Inc. of Montreal, Quebec, Canada, represented by Davies Ward Phillips & Vineberg, LLP of Montreal, Canada.

The Respondent is Domclick.com, c/o Mr. Jelle Hempius of Rotterdam, The Netherlands.

2. The Domain Name and Registrar

The disputed domain name <lechateau.com> ("the Domain Name") is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2003. On March 4, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 4, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 March 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2003. On March 7, 2003, the Center received an e-mail from Jinsu Kim in the following terms:

"I can’t speak and write English.

I don’t know what you are saying.

I’m Korean.

This is my domain name.

I can’t lose this name."

The nominal Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2003. Jinsu Kim e-mailed a reply to this notification by return, stating that he lives in Korea and requesting a Korean version. The Center replied, stating that the language of these proceedings is English. The next day (March 29, 2003) a Response (in English) was filed by e-mail.

The Center appointed Christopher P. Tootal as the sole panelist in this matter on April 7, 2003. 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.

Since it seems that the Domain Name is owned by Jinsu Kim, and he does not himself speak English, the Panel has decided to admit the late-filed Response.

On April 4, 2003, the Complainant filed a further submission and on April 11, 2003, a further submission, entitled "Respondent’s notes on Complainant’s reply", was filed on behalf of Jinsu Kim. The Rules provide only for the parties to file a Complaint and a Response, and it is for the Panel to decide in its discretion whether to admit any further submissions. Save in one respect, the Panel declines to take these submissions into account. That one respect concerns the introduction to the second document, the "Respondent’s notes …". This describes Jinsu Kim as the Respondent and is written by Jelle Hempenius, who is identified by Tucows as the Administrative and Technical Contact and who describes himself as "acting as an intermediate person" for Jinsu Kim. References hereafter in this Decision to "the Respondent" will accordingly be referenced to Jinsu Kim, and not to the nominal respondent, which is clearly not a "person".

4. Factual Background

A. The Complainant is the registered proprietor of the trademark LE CHATEAU, which was registered in Canada in 1976 under No. 217,509 ("the Trademark"). It also owns numerous other trademarks in Canada and the U.S.A. for variations of the Trademark (in a variety of scripts and/or with added words).

B. The Domain Name was registered on July 16, 2001.

C. The Complainant owns the domain names <lechateau.ca> and <le-chateau.com>.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

(i) The Complainant is a publicly-owned leading Canadian retailer of fashion

apparel, with 163 stores across Canada, and four stores in the United States.

The Complainant has a prominent influence in particular among teenagers and

young adults throughout North America.

(ii) The Trademark is regularly used by the Complainant in relation to young

men's, women’s, and children's clothing and accessories. The Complainant's enormous

investment in advertising its product has established the Trademark throughout

the North American Fashion Industry. The Complainant has been using the Trademark

for the past 40 years, first in Montreal, then throughout Canada and later in

the United States of America. Over these last four decades, the Complainant

has expended significant financial resources to develop goodwill in its trademarks

and to cause consumers to recognize the various "Le Chateau" marks

as distinctively designating products that originate from the Complainant.

(iii) The Complainant has also utilized its registered trademarks in connection

with providing goods and services on the Internet. The Complainant owns the

domain names <le-chateau.com> and <lechateau.ca>. The Complainant's

presence on the Internet has generated goodwill for the Trademark and has become

one of its primary assets and marketing tools. Its websites are visited by approximately

100,000 visitors per month from around the world, the majority of which are

teenagers and young adults. In addition, the Complainant provides assistance

and tools for teenagers to deal with socio-economic issues such as sexual abuse

and drug-related concerns, via its Internet sites.

(iv) In the future, the Complainant will continue to use the Trademark to promote

its company and its products through store signage, product, labels, advertising

and internal branding at macro and micro levels across Canada and the United

States. The Complainant's sales for last year are in excess of $200,000,000

and the Company has reported a sales increase of 16.6% for the 49 weeks ended

January 4, 2003.

(v) In or about December 2002, the Complainant began receiving complaints from

customers and from parents of teenagers who attempted to log onto the Complainant’s

website through "www.lechateau.com". These customers were diverted

to hardcore explicit pornographic websites, seemingly depicting sexual violence

involving young persons.

(vi) The circumstances in this case demonstrate that the Respondent is intentionally

using the Disputed Domain Name to attract users to its website, for commercial

gain by creating a likelihood of confusion with the Trademark. It is a well

known practice in the market of domain name trading to link abusively registered

domain names to distasteful pornographic websites in order to generate revenue

from click through advertising and/or to blackmail the potential owner of the

trademark by increasing the asking price.

(vii) It can reasonably be presumed that the purpose of registering the Trademark

as a domain name by the Respondent, linking it to pornographic sites, was to

attract customers seeking to visit the Complainant’s website, since consumers

expect to find a company on the Internet at a domain name address which comprises

the company’s name or marks. Where a customer is unsure of a company’s domain

name, it will often guess by entering the company name.

(viii) On behalf of the Complainant, Ashley Hennessy, from Weave Communication

Inc., approached Mr. Jelle Hempius in an attempt to resolve the dispute amicably

over the Domain Name. Telephone conversations occurred between Mr. Hempius

and Mrs. Henessy on August 3, 2002, August 27, 2002, and

on September 24, 2002. Mr. Hempius indicated that the Domain Name

could be for sale and he was waiting for an offer. After this conversation,

Mrs. Hennessy tried on numerous occasions, to no avail, to communicate

with Mr. Hempius to begin the negotiations. Mrs. Hennessy also tried to contact

Mr. Jinsu Kim, without success.

(ix) The Complainant’s long history of use of the Trademark has resulted in

the establishment of considerable and valuable goodwill for Le Chateau. The

Respondent’s acts have caused and continue to cause irreparable injury to the

Complainant. The linking of the Domain Name to pornographic websites, seemingly

depicting violence against minors, is highly detrimental to the Complainant’s

reputation. To preserve its reputation and goodwill, therefore, the Complainant

is forced either to attempt to purchase the Domain Name and/or to bring this

administrative proceeding to have the Disputed Domain Name transferred to it.

(x) Based on the information provided by Mr. Hempius, Domclick.com is owned

by the Korean Jinsu Kim. It appears that Mr. Kim has previously been brought

before the National Arbitration Forum: See Hewlett-Packard Company v.

Jinsu Kim, NAF Case No. FA 0098012, where it was ruled that he was abusively

using a registered trademark ("HP" in <hpnow.com>) to confusingly

redirect customers to pornographic websites. The Respondent has thus registered

another domain name in bad faith in the past which had no legitimate connection

to its business and which contained other prominent marks, thereby exhibiting

a pattern of cybersquatting behavior which should not be condoned.

(xi) The Complainant submits that, because the Respondent has engaged in a

pattern of registering domain names to prevent the owners of the trademarks

they incorporate from reflecting their marks in a corresponding domain

name, bad faith should be presumed. The Complainant has discovered that the

address listed by the WHOIS database for the domain name <alcom.com>,

registered by "BUY THIS DOMAIN", is the same as that of the Respondent

in this case and this website is linked to the same pornographic Korean websites

as is the Domain Name. Alcom is a leading technical distributor and manufacturers

representative of electronic components in the Benelux. This may be considered

as further evidence that the Respondent is in the business of registering the

names of well known companies as domain names and linking them to pornographic

sites.

B. Respondent

The Respondent asserts, inter alia, as follows:

(i) "Le Chateau" means "castle". When he registered the

Domain Name he was unaware of the existence of the Complainant.

(ii) He admits the Domain Name was linked to a Korean adult site for a few

months, but denies that it is a pornographic site and asserts that it is merely

an adult movie site.

(iii) He states:

"Nobody in Korea knows Le Château Inc. and the Respondent has never

earned commercial money for complaint' trademarks because the forwarded site

is a Korean based site and it doesn't accept foreign card and payments. They

need a Korean address and social identification number to sign up. How can the

Respondent earn money for lechateau.com ?"

(iv) This case is quite different from the Hewlett-Packard case. Lechateau

is a general word in the dictionary.

(v) The Domain Name was not registered in bad faith.

(vi) The Domain Name was registered for use in the future and the Respondent

did not earn money from it.

(vii) The Domain Name is not similar to the Trademark, as it "has no space

in it".

(viii) There are many "chateau" companies in the world, e.g. <chateauonline.com>.

6. Discussion and Findings

The onus is on the Complainant to prove each of the three elements set out

in paragraph 4(a) of the Policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark or

service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As to element (i) the Domain Name is clearly identical to the Trademark.

The fact that the words "le" and "chateau" are separated

in the Trademark but not in the Domain Name is immaterial.

B. Rights or Legitimate Interests

As to element (ii), the Policy sets out the following, non-limitative, circumstances

which would enable a Respondent to demonstrate he has rights or legitimate interests

in a domain name:

(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 non-commercial 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.

There is nothing in the Response to suggest that any of these circumstances

apply in this case. It is true, as pointed out by the Respondent, that "le

chateau" ("the castle") is a perfectly general expression and

the Complainant might in different circumstances have difficulty in objecting

to others using it in a legitimate manner. Here, however, the Respondent

has provided no explanation as to how he came to select the Domain Name (other

than to allege that he was unaware of the existence of the Complainant). Accordingly,

the Panel concludes that the Complainant has established element (ii).

C. Registered and Used in Bad Faith

The Respondent (Jinsu Kim) appears to own the domain name that is the nominal

Respondent, Domclick.com, the Domain Name, and was the owner of a third domain

name (see para. 5.A(x) above), all of which at one time or another have resolved

to "adult" sites. (There is some dispute between the Complainant and

the Respondent as to whether these are pornographic sites, but in the circumstances

of this case it is not necessary to enter into the niceties of the distinction

between the two).

The Complainant appears to have attempted to buy the Domain Name in August/September

2002 (see para. 5.A(viii) above, and although Mr. Jelle Hempius (presumably

on behalf of the Respondent) indicated that the Domain Name could be for sale,

no price was ever named. However, it appears not to have been until December 2002,

that the Complainant began receiving complaints from customers and parents of

teenagers who had attempted to log onto the Complainant’s website through the

Domain Name (see para. 5.A(v) above). The Respondent admits that the Domain

Name was linked to a Korean adult site for a few months.

The above timing of events suggest that the Respondent hoped to persuade the

Complainant to pay a high price for the Domain Name. It is clear that the Respondent’s

activities were calculated to cause damage to the Complainant’s reputation.

In the circumstances, the Panel is satisfied that the Respondent registered

and has been using the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name <lechateau.com>

be transferred to the Complainant, Le Château Inc.

Christopher P. Tootal

Sole Panelist

Dated: April 20, 2003