Chanel, Inc. v. LaPorte Holdings

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chanel, Inc. v. LaPorte Holdings

Case No. D2005-0487

1. The Parties

The Complainant is Chanel, Inc. New York, New York, United States of America represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrars

The disputed domain names:

<chanelsalon.com>

<chanels.net>

<chanelvthailand.com>

<chanel4thesalon.com>

<chicchanel.com>

<clubchanel.com>

<xplorechanel.com> (hereinafter the “Domain Names”) are registered

with NameKing.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2005. On May 6, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On June 2, 2005, NameKing.com 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, billing and technical contact. In response to a notification by the Center, dated June 2, 2005, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint also on June 2, 2005, with regard to Mutual Jurisdiction. Under the amendment, Complainant agrees to submit to the jurisdiction of courts in the location of registrant’s address with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the Domain Names that are the subject of the Complaint. The Center verified that the Complaint together with the amendment to 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 June 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2005.

The Center appointed Howard E. Poliner as the Sole

Panelist in this matter on July 5, 2005. 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

Since, Respondent failed to file a Response, the Panel

accepts as true all statements of fact made by Complainant in its submission.

See Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO

Case No. D2005-0096 (March 18, 2005); EAuto, L.L.C. v. EAuto Parts,

WIPO Case No. D2000-0096 (April 9, 2000).

Complainant is the owner of at least 29 federal registrations

for the CHANEL mark in the United States, some dating back to 1925, in respect

of products and services in the fields of beauty, fashion, accessories and couture.

Complainant has continually used its marks for more than 70 years in the United

States and worldwide with sales for the last five years totaling hundreds of

millions of dollars. Complainant sells its products through more than 2500 outlets

in the United States, including 25 such outlets in the Los Angeles area, the

area in which Respondent is located. Several U.S. courts and WIPO Administrative

Panels have held the Complainant’s mark, CHANEL, to be well known, see

e.g. Chanel, Inc. v. Italian Activewear of Florida, Inc., 931 F.2d 1472,

1474 (11th Cir. 1991); Chanel, Inc. v. Cologne Zone, WIPO

Case No. D2000-1809 (February 22, 2001); Chanel, Inc. v. IGGI Networks,

Inc., WIPO Case No. D2000-1831 (April 16, 2001).

Respondent is the registered owner of the Domain Names and such Domain Names were all registered between February 25, 2004 and November 30, 2004, long after Complainant’s rights in its mark had become well known. All of the Domain Names prominently feature as their most distinctive element CHANEL together with generic or descriptive words, such as “salon”, “club” and “chic”, or merely the addition of the letter “s”. As of the date of filing of the Complaint, an Internet user who accessed any of the Domain Names other than <chanels.net> (the “Active Domain Names”) was directed to a search page. In a more recent attempt to access websites at the Domain Names, it appears that the user will be briefly redirected to a landing page that contains links to various commercial sites or to a notice indicating that the domain names are no longer active. As of the date of the filing of the Complaint, there is no active website for the domain name <chanels.net>. For any given Active Domain Name, the search pages vary from minute to minute.

At least as of the date of filing of the Complaint, the search pages for the Active Domain Names contain a set of links and/or sponsored links, some of which relate to fashion. The printouts for the landing pages of the Active Domain Names indicate at the bottom that the landing pages are maintained by <domainsponsor.com>. Printouts of web pages from <domainsponsor.com> indicate that it will pay a fee to domain name owners, such as Respondent, for allowing their domain names to be automatically directed to web pages maintained by <domainsponsor.com>. Hence, it is reasonable to conclude that Respondent earns revenue from the links on the websites associated with the various Active Domain Names, as well as through linkage with exit pop-ups through a practice commonly known as “mouse-trapping”.

In addition, easyWHOIS printouts indicate that Respondent

is also the owner of other domain names that contain common misspellings of

famous third party marks or personal names and in the past, Respondent has been

found to have registered and used domain names in bad faith by many administrative

panels. See e.g., Sociéte des Hotels Méridien v. LaPorte Holdings, Inc.,

WIPO Case No. D2004-0849 (December 16, 2004);

Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO

Case No. D2004-0707 (December 12, 2004); Medco Health Solutions, Inc.

v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800

(December 22, 2004); Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, Inc.,

WIPO Case No. D2004-0971 (January 19, 2005).

5. Parties’ Contentions

A. Complainant

That Complainant has strong rights in the CHANEL mark that predate by more than 70 years the Respondent’s registration of the Domain Names.

That the Domain Names incorporate without alteration, and in a prominent manner, Complainant’s registered CHANEL mark, making them confusingly similar to Complainant’s trademark. The addition of a final letter “s” or the addition of generic or other non-source identifying terms to CHANEL, as in the instant Domain Names, does not create a sufficiently distinctive domain name so as to avoid application of the policy.

That Respondent has no rights or legitimate interests

in the Domain Names since Complainant’s adoption, extensive use and fame

of the CHANEL mark predates the registration of the Domain Names by decades.

Further, Complainant never licensed, permitted nor authorized Respondent to

own or use the CHANEL mark in any manner, nor is Respondent making legitimate

noncommercial or fair use of the Domain Names. Accordingly, in light of Complainant’s

prima facie showing, Respondent now bears the burden to show that it

has rights or legitimate interests in the Domain Names. See PepsiCo, Inc.

v. Amilcar Perez Lista d/b/a Cybersor, WIPO

Case No. D2003-0174 (April 22, 2003).

Respondent has registered and is using the Active Domain Names in bad faith in an effort to divert consumers to a search engine for the commercial benefit of Respondent. As to the non-active domain name, <chanels.net>, while no use is currently being made, it is likely that Respondent will seek to commercially benefit from this domain name as well. Additionally, Respondent’s use of Complainant’s CHANEL mark falsely suggests that CHANEL is or may be associated with the websites at the Domain Names. Respondent’s past behavior, as evidenced by the findings of several administrative panels, shows a pattern of bad faith registration of domain names.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

The burden for Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

Complainant bears the burden of proving all three of these elements, with respect

to each Disputed Domain Name herein, notwithstanding the absence of a Response.

As explained in section 4.6 of the WIPO

Overview of WIPO Panel Views on Selected UDRP Questions (see “https://www.wipo.int/amc/en/domains/search/overview/index.html”)

(hereinafter “WIPO Overview”), a consensus view has developed that

“[t]he respondent’s default does not automatically result in a decision

in favor of the complainant”. Rather, “the complainant must establish

each of the three elements required by paragraph 4(a) of the Policy. While a

panel may draw negative inferences from the respondent’s default, paragraph 4

of the Policy requires the complainant to support its assertions with actual

evidence in order to succeed in a UDRP proceeding”. The Panel accepts

this consensus view and acknowledges that as a general rule, that users of the

internet are better served through panel decisions that promote consistency

and predictability.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of registered rights in the

CHANEL mark. There can be no question that the Domain Names are confusingly

similar to Complainant’s CHANEL mark for purposes of the Policy. Each

of the Domain Names incorporates in its entirety, as its predominant feature,

the CHANEL mark. The Domain Names also contain words of a generic or descriptive

nature that modify the mark, but do not serve to effectively distinguish the

Domain Name from the mark. The fact that a domain name wholly incorporates a

complainant’s registered mark is sufficient to establish identity or confusing

similarity for purposes of the Policy, despite the addition of other words to

such marks. See e.g., EAuto, L.L.C. v. EAuto Parts, WIPO

Case No. D2000-0096 (April 9, 2000) (“parts” added to mark EAUTO

in <eautoparts.com>); CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO

Case No. D2000-0413 (September 18, 2000) (<channelstore.com> and <chanelfashion.com>

are confusingly similar to the “Chanel” mark). To the extent that

the websites at the Domain Names contain material that suggests no connection

with the Complainant, such information is irrelevant in the finding of confusing

similarity. The test for confusing similarity should focus on a comparison between

the trademark and the domain name alone. See Authur Guinness Son & Co.

(Dublin) Limited v. Dejan Macesic, WIPO

Case No. D2000-1698 (January 25, 2001); WIPO

Overview, section 1.2.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to each of the Domain Names.

B. Rights or Legitimate Interests

While Complainant bears the burden of proving Respondent’s lack of rights

or legitimate interests in the Domain Names, once such a prima facie case

has been made, the Respondent then bears the burden of demonstrating rights

or legitimate interests in the Disputed Domain Names. Where the respondent fails

to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the

Policy. See e.g., Fresh Intellectual Properties, Inc. v. 800Network.com,

Inc., WIPO Case No. D2005-0061 (March 21, 2005);

Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO

Case No. D2003-0455. See also WIPO

Overview, paragraph 2.1.

Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Names, by virtue of having shown at least the following: that it has not licensed or authorized the Respondent to use its mark; that Respondent uses the Active Domain Names to divert internet users to other websites primarily for its own commercial gain (and whose pattern of behavior indicates a strong likeliness that the non-active domain name will be used for similar purposes in the future); that the Respondent does not use the mark to sell items that are related to the mark nor to engage in a legitimate non-commercial or fair use of the Domain Names.

Respondent, having submitted no Response, has failed to rebut this showing of no legitimate interests in the Domain Names. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant has made a prima facie showing that Respondent registered

and used the Active Domain Names primarily for the purpose of intercepting and

redirecting Internet users. In addition, the Panel accepts Complainant’s

unopposed contention that Respondent receives revenue from third parties whose

websites are accessed via the Respondent’s Domain Names. Moreover, the

Panel is of the opinion that the registration of several domain names, each

of which contains a trademark that was highly well known in Respondent’s

vicinity (as well as around the world) prior to such domain name registrations,

supports the inference that the Respondent purposely used the Complainant’s

mark for its own commercial benefit and is evidence of a pattern of such conduct.

Using a domain name to redirect Internet users to websites that host links to

external websites, including websites of Complainant’s competitors, is

evidence of bad faith. See e.g., Royal Bank of Canada v. Henry Chan,

WIPO Case No. D2003-0031 (March 5, 2003);

ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO

Case No. D2000-0848 (October 17, 2000) (finding bad faith where domain forwarding

arrangement rendered it ‘quite obvious that the only intent of the [r]espondent

was to appropriate the goodwill of the [c]omplainant and redirect traffic intended

for the [c]omplainant’s own purposes”). Hence, with respect to the

Active Domain Names the Panel finds that the evidence is sufficient to establish

registration and use in bad faith under paragraph 4(b) of the Policy.

The <chanels.net> domain name does not have an active website. Lack of

active use of the domain name does not, as such, prevent a finding of bad faith.

Rather, the panel must examine all the circumstances of the case to determine

whether the respondent is acting in bad faith. Examples of circumstances that

can indicate bad faith include complainant having a well known trademark, no

response to the complaint, concealment of identity and the impossibility of

conceiving a good faith use of the domain name. See e.g., Telstra Corporation

Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000); Jupiters Limited v. Aaron Hall,

WIPO Case No. D2000-0574 (August 3, 2000);

Ladbroke Group Plc v. Sonoma International LDC, WIPO

Case No. D2002-0131 (April 10, 2002). In the instant matter, Respondent

has failed to rebut Complainant’s allegations, has shown a pattern of

bad faith registration and use of domain names and is making use of a well known

trademark. In light of these circumstances, the Panel finds evidence sufficient

to conclude that it is not conceivable that Respondent intends to make a good

faith use of the <chanels.net> domain name.

Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(iii)

of the Policy with respect to both the Active Domain Names and the <chanels.net>

domain name.

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 names, <chanelsalon.com>,

<chanels.net>, <chanelvthailand.com>, <chanel4thesalon.com>,

<chicchanel.com>, <clubchanel.com> and <explorechanel.com>

be transferred to the Complainant.

Howard E. Poliner

Sole Panelist

Dated: July 12, 2005

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