Complainant is Chloé S.A.S. of Paris, France, represented by Winston & Strawn LLP, United States of America ("U.S.").
Respondent is John Steven, Yiheng of fdfdsfsgg, China.
The disputed domain name <chloe-discount.info> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 13, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on September 18, 2014. 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.
Complainant is a world-famous fashion house, which designs, manufactures and sells luxury "prêt-à-porter" (or ready-to-wear) clothing, leather goods (notably, handbags), shoes, eyewear and fragrances. Complainant was founded in 1952 and, since its inception, has employed many world-renowned designers as creative director. Complainant introduced its first collection of ready-to-wear luxury clothing in 1956 and its first line of handbags in 2002. Its iconic Chloé Paddington handbag was launched in October 2004 for the Spring/Summer 2005 collection.
All genuine goods bearing the CHLOÉ mark are distributed exclusively through a worldwide network of boutiques and authorized retailers. Complainant's products are sold through in more than 140 boutiques across the world. Complainant's distribution channels include high-end retailers such as Saks Fifth Avenue, Harrods, and Nordstrom. Complainant operates a website featuring information about its activities in North America, Europe and Asia at "www.chloe.com".
Complainant has trademark registrations for the trade mark CHLOÉ in many countries including China, the United States and the European Union registration. Complainant's Chinese Registration. No. 5223141 has a registration date of June 20, 1990, and covers, inter alia, goods made of leather. Complainant asserts that as a result of the extensive use and registration of the CHLOÉ marks around the world, Complainant's CHLOÉ mark is well known in China, the European Union and the US.
(1) The disputed domain name is confusingly similar to the CHLOÉ mark in which Complainant has rights. It fully incorporates the CHLOÉ mark. The mere addition of the generic term "discount" and the hyphen does not render the disputed domain name less confusing for purposes of the confusingly similar analysis. Neither does the addition of the generic top level domain ".info".
(2) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent uses the e-mail "[…]@163.com" and has referred to itself in the WhoIs database as "john steven, yiheng," has not been commonly known by the CHLOÉ mark nor any variation thereof, and has never used any trade mark or service mark similar to the disputed domain name by which it may have come to be known. Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making non-commercial or fair use of the disputed domain name. Instead, Respondent is using to offer for sale counterfeit products and/or products that compete directly with those offered by Complainant. Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the CHLOÉ mark.
(3) The disputed domain name was registered and is being used in bad faith. Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant's rights in the CHLOÉ trade mark by virtue of Complainant's prior trademark registrations in China, the European Community and the U.S. The registration of a confusingly similar domain name despite such actual or constructive knowledge, constitutes bad faith registration within the meaning of paragraph 4(a)(iii) of the Policy.
Further, the disputed domain name has been used in relation to a website offering for sale products of Complainant's competitors and/or counterfeit knock-offs of Complainant's own products. Such activities fall squarely into the explicit example of bad faith registration and use, found in paragraph 4(b)(iv) of the Policy. Respondent's activities are disruptive to Complainant's business and constitute conclusive evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(ii) of the Policy. There is no reason for Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of Complainant's CHLOÉ mark.
The Respondent did not reply to the Complainant's contentions.
The Panel agrees that the disputed domain name is confusingly similar to Complainant's CHLOÉ mark in which Complainant has rights. The trade mark CHLOÉ is clearly identifiable in the disputed domain name. The addition of the generic term and hyphen "-discount" in the context of facts of this case does not serve to remove the confusing similarity between the disputed domain name and Complainant's trade mark.
The first element of paragraph 4(a) of the Policy has therefore been established.
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, nor is there evidence that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. Respondent did not respond to the Complaint filed. The Panel further notes from the case file that the address furnished by Respondent in its domain registration is totally nonsensical and indicative of an intention by Respondent to remain uncontactable and anonymous, and of a bad faith intention at the time of registering the disputed domain name. The Panel draws a negative inference from these circumstances.
Complainant is only required to establish a prima facie case showing a lack of rights or legitimate interests on Respondent's part, after which the burden of production shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0"). In the absence of any explanation from Respondent, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel is therefore satisfied that the second element of paragraph 4(a) of the Policy has therefore been established.
On the issue of whether registration and use of the disputed domain name has been in bad faith, the Panel firstly declines to make a finding of constructive knowledge on Respondent's part simply on the basis of the existence of Complainant's U.S., Chinese and European Community trademark registrations. Secondly, Complainant has not proffered evidence to prove that the goods sold on Respondent's website are in fact counterfeit. The Panel therefore does not base its decision on either of these points put forward in the Complaint.
The Panel agrees that Complainant's mark is well known and taking into account the fact that (i) the composition of the disputed domain name reflects a clear appreciation by Respondent of this with its choice of the suggestive domain name, i.e. the offering of (and the offering of information about) discounted CHLOÉ goods; and (ii) Complainant's CHLOÉ trade mark appears clearly on Respondent's webpage and what appear to be CHLOÉ bags (including Complainant's said iconic Paddington handbag) are offered for sale, the Panel concludes that Respondent must have known of Complainant and/or of its CHLOÉ mark.
The choice of the disputed domain name, which Respondent registered, must have been deliberate with the intention to "attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location" (paragraph 4(b)(iv) of the Policy). The offer for sale of the products of Complainant's competitors on Respondent's website is also disruptive to Complainant's business and such activities have been considered to be evidence of bad faith registration and use. (See S.A.S. Jean Cassegrain v. Yeon-Gu Kim, WIPO Case No. D2005-0275; Paul Barnett Puckett, Individually d/b/a Nature's Window v. Christopher D. Miller, WIPO Case No. D2000-0297.)
The Panel is therefore satisfied that the third element of paragraph 4(a) of the Policy has therefore been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <chloe-discount.info> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: October 2, 2014