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Chanel v. 1

WIPO Case No. D2003-0218

Outcome
Transfer
Domain names
chanelbiz.com
Complainant
Chanel
Respondent
1
Panelist
Luca Barbero
Decided
28 May 2003
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0218.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chanel v. 1

Case No. D2003-0218

1. The Parties

Complainant is is Chanel, 135 Avenue Charles de Gaulle, 92521 Neuilly-sur-Seine, France, of France. The Complainant’s authorized representative in this administrative proceeding is Fross Zelnick Lehrman & Zissu, PC of United States of America.

The Respondent is 1, Seoul, Republic of Korea, of Republic of Korea.

2. The Domain Name and Registrar

This dispute concerns the domain name <chanelbiz.com>, hereinafter referred to also as the "domain name." The registrar is Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2003. On March 20, 2003, the Center transmitted via email to Tucows, a request for registrar verification in connection with the domain name at issue. On March 21, 2003, Tucows transmitted via email to the Center, Tucow’s Verification Response, confirming that the registrant is "1" and that the domain name registration is in "active" status.

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 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003.

On April 24, 2003, having received no Response from the Respondent, the Center issued a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.

In view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received Mr. Luca Barbero’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on May 14, 2003, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date for May 28, 2003. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.

4. Factual Background

The Complaint is based on a number of registrations for the trademark CHANEL

in Korea and other countries.

The Respondent registered the domain name <chanelbiz.com> on April 2, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant indicates that Chanel and its affiliated companies (the "Chanel

Companies") are premier manufacturers, importers, and sellers of luxury

products throughout the world. CHANEL is a recognized leader and one of the

most recognized names in the fields of beauty, fashion, accessories, and couture

since as early as 1920.

The Complainant informs the panel that since or about 1985, the trademark CHANEL

has been used by Complainant or its affiliated companies as a trade name and

trademark in Korea, where Respondent is located. During the years, Complainant

has promoted the CHANEL mark in Korea through sales of millions of dollars and

through extensive marketing and promotional activities.

The Complainant underlines that the Chanel Companies have registered the CHANEL

mark in at least 170 jurisdictions throughout the world, including Korea. Chanel

owns 15 registrations for the CHANEL mark in Korea, some dating back to 1978,

and all of which were issued before the Respondent registered the domain name.

Copies of these registrations were provided to the Panel as well as information

related to the amount of advertising and marketing investment which took place

in Korea to promote the trademark.

The Complainant informs the Panel that Korean courts have held the CHANEL mark

to be well known quoting the decision Chanel v. Pyonghwa Fat and Oil Industry

Co., Ltd., Supreme Court of Korea, October 14, 1986,

Case No. 83 Hu 77 (CHANEL is an internationally well-known trademark); Chanel

v. Sung-Bok Jin, Seoul High Court, November 3, 1998,

Case No. 97 Na 26588 (CHANEL mark is well-known in Korea) attaching the Korean

language versions of these decisions, as well as an English translation to the

Complaint. In addition, courts in the United States, Japan, China, Indonesia,

Taiwan, France, and Greece, among other jurisdictions, have found that CHANEL

is well-known and famous, mentioning also the outcome of numerous surveys reaching

the same conclusions.

The Complainant also quoted a number of WIPO cases where Panelist have repeatedly

recognized that the CHANEL mark is world famous.

The Complainant underlines that although the domain name was registered on

April 2, 2002, to the best of Complainant’s knowledge, from that time

through the present there has either been no website at the domain name or what

appears to be a holding page, providing the panel with the printout of the relevant

web page.

The Complainant underlines that the Respondent’s domain name incorporates without

alteration Complainant's registered CHANEL mark, making it confusingly similar

to Complainant’s CHANEL trademark. According to the Complainant the domain name

is clearly meant to create an association with Complainant as the term BIZ is

a generic term frequently used in domain names to indicate that a website is

related to a business. Thus, the addition of this generic term to the main portion

of the sign does not alter the fact that the domain name <chanelbiz.com>

is confusingly similar to Complainant’s CHANEL trademark.

With reference to the lack of legitimate rights or interest in the domain name,

the Complainant underlines that the domain name registration was obtained after

the quoted trademark registrations for the CHANEL mark in Korea and after the

Complainant had been extensively using its CHANEL mark in Korea.

The Complainant informs the Panel that there exists no relationship between

Complainant and Respondent and Complainant has never licensed, permitted, or

authorized Respondent to own or use the domain name. Furthermore, the Complainant

indicates that the Respondent is not using the domain name in connection with

a bona fide offering of goods or services nor is making legitimate noncommercial

or fair use of the domain name.

The Complainant furthermore notes that although the domain name has been registered

since April 2, 2002, no functioning website, other than a holding

page has ever been established under the domain name.

According to the Complainant, also the final element of the registration and

use in bad faith is present in the present procedures in light of the following

circumstances. The Respondent has taken Complainant’s trademark CHANEL as the

main part of its domain name and has failed to use the domain name to sell or

provide any goods or services. The Respondent is located in a country where

the Complainant is the owner of 15 trademark registrations for the CHANEL mark

secured before the domain name was registered

The Complainant notes that since CHANEL is one of the most famous marks in

the world the Respondent knew of the fame of the CHANEL mark when it obtained

the domain name. Moreover, given that the Respondent has no connection with

the Complainant and has never been authorized by the Complainant to use or register

the domain name, the very fact that the Respondent has registered the domain

name establishes bad faith use and registration.

In addition, according to the Complainant, the CHANEL mark and, by extension,

the domain name are so obviously connected with Complainant that the use of

this domain name by someone who has no connection to Complainant or its goods

or services suggests "opportunistic bad faith" since the domain name

would certainly be associated in consumers’ minds with Chanel.

The Complainant notes that the name supplied for the Respondent and its administrative

contact in the WHOIS records is "1," and the address given for the

Respondent and its administrative contact is "Seoul in KOREA, Seoul in

KOREA, Seoul, 000-000, KR," with no phone number supplied; this makes it

clear, according to the Complainant, that the Respondent simply invented the

identification and contact information it provided to the Registrar, so that

it could not be identified or found. Such behavior also demonstrates the Respondent’s

bad faith.

B. Respondent

The Respondent has not contested the allegations of the Complainant and is

in default.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint

on the basis of the statements and documents submitted in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

(i) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or a service in which the Complainant has rights; and

(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.

6.1. Domain name identical or confusingly similar

The Complainant has provided evidence of ownership of several trademark registrations

in different classes for CHANEL in Korea, including the registration N. 80733

of January 20, 1982, in local class 34.

The suffix "biz," as indeed any suffix - especially if generic -

added to a well-know trademark, is to be considered immaterial in the evaluation

of the confusingly similarity between the Complainant’s trademark and a domain

name.

In view of the above, the Panel finds that the Complainant has proved that

the domain name is confusingly similar to the trademark of the Complainant according

paragraph 4(a)(i) of the ICANN Policy.

6.2. Rights and legitimate interest

The Complainant must show that the Respondent has no rights or legitimate interests

in respect of the dispute domain name. The Respondent does not assume the burden

of proof, but may establish a right or legitimate interest in a disputed domain

name by demonstrating in accordance with paragraph 4(c) of the Policy that:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any

trademark rights; or

(c) He intends to make 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.

By not submitting a Response, the Respondent has failed to invoke any circumstance

that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights

or legitimate interests in the domain name.

Furthermore, there is no relation, disclosed to the Panel, between the Respondent

and the Complainant and Respondent is not a licensee of the Complainant, nor

has the Respondent otherwise obtained an authorization to use Complainant’s

trademark and name under any circumstance.

The Panel therefore finds that the Respondent has no rights or legitimate interests

in respect of the domain name, according to paragraph 4(a)(ii) of the ICANN

Policy.

6.3. Registration and Use in Bad Faith

For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances,

in particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs

directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct;

or

(iii) the holder has registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract,

for commercial gain, Internet users to the holder’s website or other online

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 the holder’s website or location.

In light of the fact that none of the above circumstances was proven to be

literally present in the present procedure, pursuant to the interpretation of

the ICANN’s Uniform domain name Dispute Resolution Policy in cases of passive

holding of the domain name first provided in Telstra Corporation Limited

v. Nuclear Marshmallows, (WIPO Case No.

D2000-0003) and in a number of following decisions such as Ingersoll-Rand

v. Frank Gully, d/b/a Advcomren, (WIPO

Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric, (WIPO

Case No. D2000-0042); Guerlain, S.A. v. Peikang, (WIPO

Case No. D2000-0055); Revlon Consumer Products Corporation v. Yoram Yosef

aka Joe Goldman (WIPO Case No. D2000-0468),

the Panel has taken into consideration the following particular circumstances

for the assessment of bad faith.

The Complainant’s trademark is well known in Korea, as also established by

the quoted decisions by the local Court, and in a number of different countries

of the world. Therefore, the Panel finds that the Respondent knew or should

have known of the existence of the CHANEL well-known trademark at the time of

the registration of the domain name.

Also in light of the fact that Chanel trademark is well-known in many countries,

it is not possible for the Panel to conceive of any legitimate, actual or contemplated,

active use of the instant domain name by the Respondent.

As stated i.a. in Chanel, Inc. v. IGGI Networks, Inc., (WIPO

Case No. D2000-1831) "By knowingly choosing a domain name consisting

of" Complainant’s "CHANEL mark, Respondent intentionally created a

situation at odds with the legal rights and obligations of the parties. The

conduct of Respondent in registering <chanelmail.com>, is indicative that

Respondent registered <chanelmail.com> in bad faith. See, e.g., San

Rio Co. Ltd v. DLI, WIPO D2000-0159

(act of registering domain name identical to Complainant’s mark led to finding

of bad faith)."

Furthermore, as decided in Chanel, Inc. v. Buybeauty.com (WIPO

Case No. D2000-1126) with reference to a constructive prior knowledge of

the trademark by the Respondent "Given this awareness, it is evident

that the registration and use of the domain name was in bad faith. See Cellular

One Group v. Paul Bryan, WIPO D2000-0028.

The fact that Respondent proceeded with the registration of a domain name that

incorporates the CHANEL mark in its entirety supports a finding of registration

and use in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO

D2000-0140."

The Panel also notes that the Respondent has failed to respond to the Complaint

at issue or to deny any of its allegations and has therefore not provided any

evidence of nor alleged any actual or contemplated good faith use of the domain

name.

Furthermore, the Panel remarks that the name supplied by the Respondent in

the WHOIS records is "1" and the address declared is "Seoul in

KOREA, Seoul in KOREA, Seoul, 000-000, KR," with no phone number supplied;

this is a rather clear indication that the Respondent has provided false information

for the instant registration. The Panel finds that such a behavior, also in

light of the other conducts of the Respondent, is to be considered an additional

circumstance evidencing bad faith in the registration and use of the domain

name.

As already stated in numerous decisions and i.a. in Action Instruments,

Inc v. Technology Associates (WIPO Case No. D2003-0024)

"Respondent has provided false contact information to the Registrar.(…)

This is strong evidence that Respondent’s submission of false information was

intentional, rather than a mere typographical error. The use of false contact

information in Respondent’s initial registration application is evidence that

Respondent registered in bad faith. Royal Bank of Scotland Group v. Stealth

Commerce, (WIPO Case No. D2002-0155);

Home Director, Inc. v. Home Director, (WIPO

Case No. D2000-0111). Providing false contact information violates paragraph

2 of the Policy, which requires a registrant to represent that the statements

it ‘made in [its] Registration Agreement are complete and accurate.’ Maintaining

that false contact information in the WHOIS records (which can easily be updated

at any time) after registration constitutes bad faith use of the domain name

because it prevents a putative Complainant from identifying the registrant and

investigating the legitimacy of the registration. For example, permitting registrants

to mask their identity makes it difficult for trademark owners to determine

whether the registrant "registered the domain name primarily for the purpose

of disrupting the business of a competitor," Policy paragraph 4(b)(iii),

or whether the registrant "engaged in a pattern" of registering domain

names "in order to prevent the owner of the trademark or service mark from

reflecting the mark in a corresponding domain name," Policy paragraph 4(b)(ii).

Under the U.S. Anticybersquatting Consumer Protection Act, moreover, "provision

of material and misleading false contact information when applying for the registration

of the domain name" is itself evidence of bad faith. 15 U.S.C. 1125(d)(1)(B)(VII)."

In view of the above, the Panel finds that the Respondent registered and used

the domain name in bad faith, according to paragraph 4(a)(iii) of the ICANN

Policy.

7. Decision

In light of the foregoing, the Panel determines that the domain name registered

by the Respondent is confusingly similar to the Complainant's trademark, that

the Respondent has no rights or legitimate interests in respect of the domain

name and that the domain name has been registered and used in bad faith.

Accordingly, the Panel decides that the registration of the domain name <chanelbiz.com

> be transferred to the Complainant.

Luca Barbero

Sole Panelist

Dated: May 28, 2003

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