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Chanel, Inc. v. LaPorte Holdings [2005] GENDND 1310 (12 July 2005)

World Intellectual Property Organization

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., [1991] USCA11 891; 931 F.2d 1472, 1474 (11^th 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 “http://arbiter.wipo.int/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