Decision for dispute CAC-UDRP-105056

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

United States Trade Mark Registration No. 195360 CHANEL dated 24 February 1925 for various cosmetics goods in class 3;

United States Trade Mark Registration No. 1241265 CHANEL dated 7 June 1983 1925 for clothing and accessories goods in class 25.

The Complainant is a member of the Chanel group of companies.  The Chanel group was founded by Gabrielle Chanel at the beginning of the 20^th century and it offers a broad range of luxury fashion products including clothing, leather goods, fashion accessories, eyewear, fragrances, makeup, skincare, jewellery and watches.  It trades under the “Chanel” trademark.

At the end of 2021, the Chanel group reported global revenues of USD 15.6 billion.  As far as the Chinese market is concerned, Chanel has been on top the China’s Top 100 Brands in 2019.

The Complainant annexed evidence to the Complaint demonstrating that the Chanel group has designed and sold luxury handbags and purses under the “Chanel” trademark for many years, with one of its well-known classic designs created by Gabrielle Chanel in 1955 still produced and offered for sale.

The Complainant itself, as well as other members of the Chanel group, own various trademarks in various jurisdictions for a broad range of luxury fashion goods consisting of, or containing, the word CHANEL.  This includes the United States registrations referred to above that have subsisted for many years.

The Respondent has provided its name as “Guang Nian Chen” and its address as being located in China.

The Respondent registered the disputed domain name of 13 May 2022. At the time of the Complaint the disputed domain name directed web-users to a website that purported to promoted Jiangxi Copper Corporation and reproduced the content of this entity’s website located at www.jxcc.com.  None of the content disclosed any relationship between Jiangxi Copper Corporation and the Respondent.

The Complainant further alleged, and the Respondent did not deny, that the Respondent had in the past registered other domain names containing well-known trade marks including <cheaplouisvuitton-outlet-sale.net>, <abercrombie-japan-cheap.com>, <cheapgenericviagrausa.com> and <timberlandboot4sale.com>.

The Complainant submits that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name registered by the Respondent be transferred to the Complainant:

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) the disputed domain name has been registered and is being used in bad faith.


The Panel is satisfied the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant asserts it has a United States' trademark registrations for "Chanel". These registrations predate the registration date of the disputed domain name by many years.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a trademark that predates the registration of the disputed domain name in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO 7 May 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). The Complainant has clearly satisfied such in relation to the trademark CHANEL.

The next question is whether the disputed domain name is confusingly similar to the CHANEL trademark.

The Panel disregards the gTLD suffix ".com" for the purpose of this comparison.  Past panels have found that gTLD's are of no relevance in determining whether a domain name is identical or confusingly similar to a trademark (See F.Hoffmann-La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451). Domain names, and the format in which they appear, are globally observed by internet users and consumers every day. They are part of everyday human experience and commonly marketed via offline means (e.g. signage, branded stationary, merchandise, print advertisements, television) in addition to being observed online. Hence the average person who is using the internet is going to clearly understand that in the format of a domain name the gTLD at the end of the domain name is not commonly an element that identifies one particular trader, but rather used generically by multiple traders. This understanding remains so for common gTLDs like ".com", ".net" and ".org" and for less common gTLDs. This common format of domain names is now well understood by the average person and for this reason they will see ".com" as of any brand significance.

However, the inclusion of "pursesale" in the disputed domain name warrant different consideration.  These words are generic and hence of no brand significance in the eyes of the average web user.  However, they do convey a meaning. Namely, that the domain name seeks to promote the "sale" of "purses".  Given the scope of the Complainant's rights and reputation in "Chanel" covers the sale of purses such words only increase the likelihood of confusion. 

The disputed domain name is therefore confusingly similar to the CHANEL trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Respondent's name according to information provided by the registrar for the disputed domain name is "Guang Nian Chen". This name bears no resemblance to "chanelpursesale". Further, the website to which the disputed domain name resolves does not have content which would indicate any right or legitimate interest in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

The Complainant's trade mark is distinctive and very well known internationally.  Further, the CHANEL trademark has a strong long standing international reputation in relation to handbags and purses. In such circumstances it is reasonable to infer that the Respondent registered the strikingly similar disputed domain name with full knowledge of the Complainant's rights the CHANEL trademark. Such similarity will inevitably confuse web-users. It is further reasonable to infer that the only foreseeable purpose that the Respondent had to so register the domain name and direct it to a website was to opportunistically profit from such confusion. Such opportunism has been recognised as bad faith by numerous panels, the Panel refers to the commentary of the learned Gerald M Levine, Domain Name Arbitration, Legal Corner Press, 2nd ed. 2019, pp. 432 to 434.

The above finding alone establishes bad faith registration and use. However, the Panel further accepts the Complainant's submission that in repeatedly registering domain names containing well-known trade marks the Respondent is engaging in a pattern of conduct that suggests the Respondent is engaging in cybersquatting activities in bad faith.  Such a pattern of conduct is further evidence that the Respondent has acted in bad faith in registering and using the disputed domain name.

The disputed domain name has been registered and is being used in bad faith.