The Complainant is Chanel, Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domain Privacy Group, Inc. of Toronto, Canada / Charlene Newport of Invercargill, New Zealand.
The disputed domain name <chanelsale.com> is registered with Netfirms, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2009. On January 22, 2009, the Center transmitted by email to Netfirms, Inc., a request for registrar verification in connection with the disputed domain name. On January 22, 2009, Netfirms, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 2, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 4, 2009. 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” 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 with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was
February 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2009.
The Center appointed David Perkins as the sole panelist in this matter on
March 6, 2009. 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.A.1 The Complainant, Chanel Inc., is a premier manufacturer, importer and seller of luxury products including bags, shoes, clothing, fragrances, skin care, cosmetics, jewelry, sunglasses and other accessories which are sold worldwide under the CHANEL trademark. It has been trading in the United States for over 80 years and its brand, CHANEL, is one of the most recognized and respected names in the fashion and beauty field.
4.A.2 The Complainant's products are advertised under the CHANEL mark on television, radio and in numerous magazines and publications circulating both in the United States and internationally. The Complainant has spent over USD 250 million on advertising and promotion over the past 5 years. The Complainant also conducts special events, such as its recent mobile art travelling exhibition in Hong Kong, SAR of China, Tokyo and New York.
4.A.3 The Complainant's CHANEL products are sold through its own CHANEL retail stores and in exclusive boutique stores and stand alone jewelry boutiques in famous US department stores such as Neiman Marcus, Barney's, Macey's, Nordstrom and Saks Fifth Avenue. Currently, there are more than 2500 outlets in the United States that sell CHANEL products.
4.A.4 The Complainant has also had an Internet presence at <chanel.com> since 2000. Apart from providing news about the Complainant, highlights of the Complainant's fashion shows, featuring its products and providing a store locator service identifying Chanel stores both in the US and worldwide, Chanel fragrances, beauty products and certain fashion accessories can be purchased through its website. Over the period January to March 2008 inclusive, more than 4 million visitors used the <chanel.com> website.
4.A.5 The Complainant is the proprietor of some 29 trademark registrations for CHANEL in the United States, which covers a number of classes of goods and services, the earliest dating from 1925. Of that number, 22 are incontestable under US law, with the result that such registrations are conclusive evidence of the Complainant's exclusive rights in the CHANEL trademark. The CHANEL trademark is also widely registered worldwide.
4.A.6 The Women's Wear Daily (WWD) 100 of July 2005, which lists the best known fashion brands, listed the CHANEL brand as 35 having a sales volume of USD 2.8 billion. In 2006, the ranking moved to 34 and sales to USD 3.3 billion. In 2007 and 2008 the rankings were, respectively, 42 and 38. Interbrand's “Best Global Brands” Report in 2008 ranked the CHANEL brand at 60, which is higher than many other well-known marks, such as YAHOO!: KLEENEX: STARBUCKS and VISA.
4.A.7 Books have been written about the House of Chanel and its founder, Coco Chanel, including “Chanel (The Universe of Fashion)” by Francois Baudot and “Chanel: A Woman of her own” by Alex Madsen. There have also been television documentaries for example, “Chanel, Chanel” and “Coco Chanel” (BBC) a musical entitled “Coco” and a recent movie on the Lifetime Television cable network entitled “Coco Chanel”.
4.A.8 The CHANEL mark has been held to be well-known and distinctive by US Courts. For example, Chanel, Inc v. Smith 178 USPQ 630, 631 (N.D. Cal. 1973) and Chanel, Inc v. Italian Activewear of Florida, Inc 931 F. 2d. 1472, 1474 (11th Cir. 1991). The mark has also been recognized as a well-known mark in decisions under the Policy. For example: Chanel, Inc v. Cologne Zone, WIPO Case No. D2000-1809; Chanel, Inc v. IGGI Networks, Inc, WIPO Case No. D2000-1831; and Chanel, Inc v. Designer Exposure, WIPO Case No. D2000-1832.
4.A.9 The CHANEL mark has also been featured in films, songs, literature and in art. An example of the latter is, the famous Warhol painting of the CHANEL No. 5 bottle. In addition, well-known companies, such as Mercedes-Benz, have requested the right to make use of the CHANEL mark and CHANEL products in their national advertising campaigns.
4.A.10 The 29 US trademark registrations for CHANEL referred to in paragraph 4.A.5, are set out below.
Country | Reg. No. | Mark | Class(es) | Date Registered and Date of First Use in Commerce |
|
US |
195,360 |
CHANEL |
6 |
Registered February 24, 1925 First Used in Commerce January 1, 1920 |
|
US |
302,690 |
CHANEL |
3 |
Registered April 25, 1933 First used in Commerce January 1, 1921 |
|
US |
510,992 |
CHANEL |
3 |
Registered June 14, 1949 First Used in Commerce January 1, 1920 |
|
US |
513,132 |
CHANEL |
3 |
Registered August 21, 1949 First Use in Commerce January 1, 1921 |
|
US |
612,169 |
CHANEL |
14 |
Registered September 13, 1955 First Used before in Commerce 1925 |
|
US |
626,035 |
CHANEL |
18 |
Registered May 1, 1956 First Used in Commerce November 24, 1954 |
|
US |
802,851 |
CHANEL |
3 |
Registered January 25, 1966 First Used in Commerce January 1, 1920 |
|
US |
902,190 |
CHANEL |
14 |
Registered November 10, 1970 First Used in Commerce 1925 |
|
US |
906,262 |
CHANEL |
25 |
Registered January 19, 1971 First Used in Commerce 1925 |
|
US |
915,139 |
CHANEL |
25 |
Registered June 15, 1971 First Use in Commerce March 17, 1970 |
|
US |
930,567 |
CHANEL |
25 |
Registered March 7, 1972 First Use in Commerce 1963 |
|
US |
955,074 |
CHANEL |
14 |
Registered March 13, 1973 First Use in Commerce December 22, 1971 |
|
US |
1,037,892 |
CHANEL |
24 |
Registered April 13, 1976 First Use in Commerce September 28, 1972 |
|
US |
1,079,438 |
CHANEL |
25 |
Registered December 13, 1977 First Use in Commerce October 21, 1976 |
|
US |
1,087,999 |
CHANEL |
5 |
Registered March 28, 1978 First Use in Commerce September 1976 |
|
US |
1,177,400 |
CHANEL |
25 |
Registered November 10, 1981 First Use in Commerce September 12, 1977 |
|
US |
1,241,265 |
CHANEL |
25 |
Registered June 7, 1983 First Use in Commerce 1925 |
|
US |
1,263,845 |
CHANEL |
4 |
Registered January 10, 1984 First Use in Commerce 1977 |
|
US |
1,347,677 |
CHANEL |
16 & 18 |
Registered July 9, 1985 First Use in Commerce November 24, 1954 |
|
US |
1,348,842 |
CHANEL |
3 |
Registered July 16, 1985 First Use in Commerce January 1, 1920 |
|
US |
1,510,757 |
CHANEL |
9 |
Registered November 1, 1988 First Use in Commerce September 4, 1987 |
|
US |
1,559,404 |
CHANEL |
42 |
Registered October 3, 1989 First Use in Commerce 1976 |
|
US |
1,571,787 |
CHANEL |
14 |
Registered December 19, 1989 First Use in Commerce October 1987 |
|
US |
1,647.875 |
CHANEL |
6 |
Registered June 18, 1991 First Use in Commerce 1985 |
|
US |
1,660,866 |
CHANEL |
21 |
Registered October 15, 1991 First Use in Commerce 1984 |
|
US |
1,733,051 |
CHANEL |
8 |
Registered November 17, 1992 First Use in Commerce 1954 |
|
US |
2,812,740 |
CHANEL |
26 |
Registered February 10, 2004 First Use in Commerce January 1, 1986 |
|
US |
3,133,139 |
CHANEL |
14 |
Registered August 22, 2006 First Use in Commerce 1925 |
|
US |
3,134,695 |
CHANEL |
9, 20, 25, 26 and 28 |
Registered August 29, 2006 First Use in Commerce respectively January 1991 (Cass 9): September 1, 2004 (Class 20): September 1, 2004 (Classes 25 and 24) and July 1, 2004 (Class 28) |
4.B.1 In the absence of a Response, the information relating to the Respondent and her activities is taken from the Complaint.
4.B.2 The disputed domain name <chanelsale.com> was registered on March 8, 2008. An Internet user accessing that domain name is directed to a webpage that identifies ongoing auctions at the eBay website for products which may, or may not, be genuine CHANEL products. Those depicted and offered on the printout from the homepage of January 16, 2009 include so-called CHANEL boutique pink boucle wool skirt suit: CHANEL beige quilted boots: CHANEL CC luggage, handbag, purse shoulder XL: CHANEL CC logo key chains wall purse bag in box: CHANEL flamenco black lace 36 dress: CHANEL Chance Eau Fraiche and CHANEL sunglasses.
4.B.3 On that homepage, the CHANEL mark is prominently displayed and is in a font and logo type almost identical to that used by the Complainant. The word “sale” is separately displayed in a different colour, size and font. Consequently, the website is simply titled, CHANEL. There is no information as to the source or sponsor of the website.
4.B.4 The Panel takes note that the eBay partner network rewards third parties, such as the Respondent, who create websites that will attract visitors to eBay pages and auctions. Such a member of the partner network receives money from eBay for so-called “quality traffic”, whether that be a customer who places a bid on one of the items identified on the website, a person who purchases an item from the website, or a person who visits the website and goes on to register with eBay. The amount of the payment depends upon how much “quality traffic” the third party attracts to eBay.
5.A.1.1 Based on paragraph 4.A above, the Complainant asserts that it has rights in the registered trademark CHANEL and that the CHANEL mark is a well-known trademark.
5.A.1.2 Because the disputed domain name incorporates the CHANEL trademark, it is the Complainant says confusingly similar to that trademark. The Complainant cites decisions under the Policy in support of that proposition, namely Infospace.com.Inc v. Infospace Technology Co. Ltd, WIPO Case No. D2000-0074 where the complainant's registered trademark was INFOSPACE and the disputed domain name was <microinfospace.com>; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105, where the complainant's registered trademark was HITACHI and the disputed domain name was <hitachisemiconductor.com>; EAuto LLC v. EAuto Parts, WIPO Case No. D2000-0096, where the complainant's registered trademark was EAUTO and the disputed domain name was <eautoparts.com>; and Chanel, Inc v. Estco Technology Group [ WIPO Case No. D2000-0413] where the disputed domain names were <chanelstore.com> and <chanelfashion.com>.
5.A.2 Rights or Legitimate Interests
5.A.2.1 Because the CHANEL name had been widely registered and used for more than 80 years before the Respondent registered the disputed domain name, the Complainant says that the Respondent was clearly on notice of the Complainant's rights in the CHANEL mark. The Complainant refers to the decision in Chanel, Inc v. Buybeauty.com, WIPO Case No. D2000-1126, where the panel said, citing an earlier decision under the Policy in Guerlain S.A. v. Pei kang, WIPO Case No. D2000-0055, that given the fame and substantial use of the CHANEL mark, “no actual or contemplated bona fide or legitimate use of the Domain Name <buychanel.com> could be claimed by Respondent”. The Panel then went on to say:
“Finally, where, as here, the CHANEL mark is venerable and distinctive, it is not reasonably possible for Respondent to demonstrate any legitimate interest in a domain name consisting of the CHANEL mark.”
The Complainant also cites for the same proposition Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397, where the disputed domain name was <nike-shoes.com> and the panel held:
“given that Complainant's trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant's activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant's trademark.”
5.A.2.2 Further, Complainant states that the Respondent is neither licensed nor otherwise authorized to use the CHANEL mark.
5.A.2.3 Next, the Complaint states that there is no evidence to show that the Respondent has been commonly known by the disputed domain name.
5.A.2.4 Finally, the Complainant says that the Respondent cannot be said to be making legitimate non-commercial or fair use of the disputed domain name. Use of the disputed domain name to point to other websites to collect referral fees - as the Respondent does in this case (see, paragraphs 4.B.2 to 4.B.4 above) cannot be considered a bona fide offering of goods or services for a non-commercial or fair use. In that respect, the Complainant cites the decision in PRL USA Holdings Inc v. LucasCobb, WIPO Case No. D2006-0162, where the complainant was the proprietor of the RALPH LAUREN mark and the disputed domain name <ralphlaurenpants.com> was used to generate click-through revenue by pointing to other websites. That decision cited the earlier Decision in Fresh Intellectual Properties, Inc v. Matt Braska, WIPO Case No. D2005-0096. There the complainant owned the US trademark 1-800 FLOWERS and the disputed domain name <18000flowers.com> pointed to the complainant's website in order to collect referral fees. The complainant also cites the Hitachi case [referred to in paragraph 5.A.1 above], where the disputed domain name directed users to a variety of websites offering mostly obsolete HITACHI parts and such was held not to be a legitimate use of that domain name.
5.A.2.5 Nor, the Complainant says, can the Respondent claim an entitlement to use the CHANEL mark in the disputed domain name under the approach proposed in Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 by linking to an eBay auction site offering purported genuine CHANEL products. This is because, the Complainant says, the Respondent fails to meet two of the four requirements to establish a bona fide offering, namely,
(1) the Respondent must use the site to sell only the trademarked goods; and
(2) the site must accurately disclose the registrant's relationship with the trademark owner.
5.A.2.6 As to the first of those two requirements, the Complainant says that the Respondent is not actually selling any products authentic or otherwise. The Respondent is simply identifying eBay sellers who are offering alleged CHANEL products and is thereby deriving revenue.
5.A.2.7 As to the second, neither the disputed domain name nor the associated website disclose the lack of any relationship between the Complainant and the Respondent. In fact, the logo and typeface are, the Complainant says, clearly designed to create a false impression of affiliation with or endorsement by the Complainant: see, in that respect paragraph 4.B.3 above.
5.A.2.8 Furthermore, the Complainant points to the Oki Data requirements not being universally adopted in decisions under the Policy, the contrary view being that a reseller even an authorized reseller cannot use a trademark in a domain name without the express consent of the trademark owner. There is no such consent in this case. The authorities cited are The Stanley Works v. Camp Creek Co Inc., WIPO Case No. D2000-0113; Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation v. Double Time Jazz a/k/a Jamey Aebersold,
NAF Claim No. FA0204000113316; and Avon Products Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272.
5.A.2.9 In short, the Complainant's case is that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply on the facts of this case.
5.A.3.1 The Complainant says that, given the fame and well-known status of the CHANEL trademark, the Respondent's adoption of that mark in the disputed domain name cannot have been in good faith.
5.A.3.2 This is compounded by the use to which the disputed domain name has been put. The Complainant's case is that the circumstances here fall fairly and squarely within paragraph 4(b)(iv) of the Policy. For example, the Respondent has copied the Complainant's logo and used CHANEL as a stand alone mark on the website: paragraph 4.B.3 above. The Respondent's intention is the Complainant says clearly to confuse consumers by trading on the Complainant's rights and reputation of the CHANEL name to drive traffic to the eBay website for its own commercial benefit. Similar facts in cases decided under the Policy have been held to constitute bad faith registration and use in bad faith.
5.A.3.3 For example, Houghton Mifflin Co v. The Weathermen, Inc., WIPO Case No. D2001-0211, where the complainant was the publisher of the “Curious George” series of books and the disputed domain name <curiousgeorge.net> was used by the respondent for a website offering “Curious George” merchandise for sale but without any authorization to use the complainant's “Curious George” trademark. The complainant also cites Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, where the disputed domain name <discount-malboro-cigarettes.com> was used for a website at which the respondent sold genuine MARLBORO cigarettes manufactured by Philip Morris as well as cigarettes made by competitors of Philip Morris. The respondent's website was also dominated by the complainant's “red roof” logo, also a registered Philips Morris trademark. In both cases, the panels found the respondent's activities constituted registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
5.A.3.4 The circumstances in this case amount, the Complainant says, to opportunistic bad faith use and registration of the type characterized in the decisions in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, where the complainant's trademark was ROGAINE used for its treatment of hair loss and the disputed domain name was <regaine.net> which resolved to an inactive website; Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163, where the disputed domain name was <veuveclicquot.org>, which the respondent was not using but was offering for sale; and Chanel, Inc v. Cologne Zone, WIPO Case No. D2000-1809, where the disputed domain names were <chanelperfumes.com> and <chaneloperfumes.net> but neither had been used despite the respondent's stated intention of using them for a website selling various brands of perfume, including CHANEL.
As stated, no Response has been filed.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainant has established rights in the CHANEL registered trademark, which is on any view a well-known mark.
6.6 The disputed domain name comprises the CHANEL mark with the descriptive suffix “sale”. The well-known CHANEL mark is the dominant and distinctive element of the disputed domain name and, as a consequence that domain name is confusingly similar to the Complainant's mark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.8 On the facts, it is plain that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case.
6.9 The Respondent cannot pray in aid of the Oki Data case as providing her with rights or legitimate interests in the disputed domain name quite simply because the Respondent is not herself selling genuine CHANEL products. However, even were that the case on the facts, this Panel does not necessarily subscribe to the Oki Data test, but takes the view that, without the express permission of the trademark holder, the right to resell the trademark owner's products does not extend to using his trademark or domain name. This is particularly the case where a trademark is used in a reseller's advertising in such a way that it may give rise to the impression that there is a commercial connection between the reseller and trademark owner, and in particular that the reseller's business is in some way affiliated to the trademark owner's business or that there is a special relationship between the two undertakings. It is not essential to use the trademark owner's mark, as the basis for a domain name in order to resell the products of that trademark owner.
6.10 On the facts of this particular case it is plain that the Respondent was from the outset well aware of the Complainant's rights in the mark CHANEL, so that the Respondent cannot claim that her use of a domain name which is confusingly similar to that trademark can constitute a bona fide use. Nor, on the facts here, is such use by the Respondent a legitimate or non-commercial or fair use. It is a blatant attempt to misleadingly divert consumers into believing that the goods auctioned are genuine CHANEL products and/or that the Respondent's website is in someway connected with and authorized by the Complainant.
6.11 The Complaint succeeds under paragraph 4(a)(ii) of the Policy.
6.12 For the same reasons that the Respondent cannot show rights or legitimate interests in respect of the disputed domain name, her registration and use of that domain name is in bad faith. It would be repetitive again to rehearse the facts set out in paragraphs 4.B.2 to 4.B.4, save to say that they constitute circumstances in this case plainly falling within paragraph 4(b)(iv) of the Policy.
6.13 In the circumstances, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.
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 <chanelsale.com> be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: March 16, 2009