Decision for dispute CAC-UDRP-105316

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

Complainant is the owner of a number of trademarks consisting of CHANEL such as e.g.:

- United States Trademark Registration no. 195360 CHANEL (word mark), registered on February 4, 1925, in international class 3.

- United States Trademark Registration no. 302690, registered on April 25, 1933, in international class 3.

- United States Trademark Registration no. 626035, registered on May 01, 1956, in international class 18.

- United States Trademark Registration no. 915139 CHANEL (word mark), registered on June 15, 1971, in international class 25.

- United States Trademark Registration no. 1079438 CHANEL (word mark), registered on December 13, 1977, in international class 25.

Moreover, the Complainant’s parent company also holds other trademark registrations consisting of CHANEL, such e.g.:

- International Trademark nº 201151 CHANEL (word mark), registered on June 15, 1957, in international classes 1, 2, 5, 14, 16, 17, 18, 20, 21, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34. The International trademark designates Singapore, China and Germany, amongst other countries.

- International Trademark nº 318753 CHANEL (word mark), registered on August 11, 1966, in international classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 15, 16, 17, 19, 21, 22, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42. The International trademark designates China, Switzerland and South Korea, amongst other countries.

- International Trademark nº 546534 CHANEL (word mark), registered on November 17, 1989, in international class 25. The International trademark designates China, amongst other countries.

- International Trademark nº 1190042 CHANEL (word mark), registered on July 8, 2013, in international classes 01, 03, 04, 05, 06, 08, 09, 10, 11, 12, 13, 14, 15, 16, 18, 20, 22, 23, 24, 25, 26, 27, 28, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. The International trademark designates China, Spain and Russia, amongst other territories.

- International Trademark nº 1431822 CHANEL (and device), registered on May 24, 2018, in international classes 03, 09, 14, 18 and 25. The International trademark designates Singapore, China, Italy and Benelux, amongst other territories.

The Complainant is a subsidiary of the Chanel group, a world leader in creating, developing, manufacturing and distributing luxury products. Founded by Gabrielle Chanel at the beginning of the last century, the Chanel group offers a broad range of high-end creations, including ready-to-wear, leather goods, fashion accessories, eyewear, fragrances, makeup, skincare, jewellery and watches.

At the end of 2021, the Chanel group reported global revenues of USD 15.6 billion in spite of the Covid-19 pandemic and employed over 28,500 people worldwide. Likewise, Chanel is considered one of the most valuable brands in the world by the most prestigious rankings, like Interbrand (#22 in 2021) or Reputation Institute (#27 in 2022). Likewise, as far as the Chinese market is concerned, Chanel has been on top the China’s 39 Top 100 Brands in 2019 and 2020, maintaining its brand value on the back of Chinese consumers “desire for experiential luxury”.

In relation to Complainant’s rights, prior decisions under the UDRP have recognized the reputation and well-known nature of the CHANEL mark such as, e.g. Chanel v. Lequang Chau, WIPO Case No. D2021-4287 (“The Panel finds that the Complainant’s trademark enjoys wide reputation”), or Chanel v. Domain Administrator, See PrivacyGuardian.org / JINJIN JIANG, SEGESW, WIPO Case No. D2021-4208 (“The Panel agrees with the Complainant and previous panels that the Complainant’s trademark is a wellknown trademark within the fashion industry.”).

The disputed domain name was registered by the Respondent on 31 March, 2022.

The Complainant submits that the requirements of the Policy have been met and that the disputed domain name should be transferred to it. The Complainant makes a number of legal arguments (referenced below) and also supplies a set of annexes providing evidence of its activities and of the Respondent's use of the disputed domain names. 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.

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:

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

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

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

The Panel has examined the evidence available to it and has come to the following conclusion concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:


RIGHTS

The Complainant has established rights in the name CHANEL. The disputed domain name <CHANELHANDBAGSFACTORY.COM> is found to be confusingly similar to the Complainant’s trademark and company name. This finding is based on the settled practice in evaluating the existence of a likelihood of confusion of:
a) disregarding the top-level suffix in the domain names (i.e. “.com") in the comparison, and
b) finding that the simple combination of a trademark and a generic term referring to the very goods manufactured and offered for sale by the trademark’s proprietor under that very name (“handbags”) in conjunction with a further purely generic phrase referring to the manufacture of these very goods (“factory”) would by no means be considered sufficient to distinguish a domain name from a trademark.

The disputed domain name is therefore found to be confusingly similar to the earlier rights in the name CHANEL and the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The onus to make out a prima facie case that the Respondent lacks rights or legitimate interests is placed on the Complainant. However, once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the use of the CHANEL trademark and the Respondent is not commonly known under the disputed domain name. The website operated under the disputed domain name shows no link whatsoever to the name at all, so that there is nothing that could be interpreted as rights or legitimate interests of the Respondent. Since the Respondent has not filed a response, the Respondent has also failed to put forward any arguments at all which could change this finding.

The Panel therefore concludes that the Respondent did not refute the Complainant’s prima facie case and has not established any rights or legitimate interest in the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

BAD FAITH

The Panel finds that the Complainant has established that the disputed domain name was registered by the Respondent and is being used by the Respondent in bad faith.

The well-known nature of the CHANEL trademark has been confirmed in a number of earlier decisions such as e.g. Chanel v. Lequang Chau, WIPO Case No. D2021-4287 or Chanel v. Domain Administrator, See PrivacyGuardian.org / JINJIN JIANG, SEGESW, WIPO Case No. D2021-4208. It is distinctive and well known around the world for fashion and accessories.

The Respondent has copied the Complainant’s trademark “CHANEL” and has combined it with generic terms referring to the very products of the Complainant “HANDBAGSFACTORY”. It is therefore practically inconceivable that the Respondent was not aware of the goodwill of the Complainant’s trademark at the time of registering the disputed domain name. Therefore, this registration can only be viewed as an attempt to exploit the goodwill vested in the trademark by attracting Internet users and confusing them to believe that the website connected to the disputed domain name offers the services of an entity that is affiliated to the Complainant. 

No other reason for registering a combination of the trademark of the Complainant together with generic terms as a domain name appears even remotely feasible. Any, even the most basic Google search in respect of the wording CHANEL would have yielded obvious references to the Complainant. 

The website connected to the disputed domain name makes no bona fide use of the Complainant’s trademark and it is obvious that there is no link of disputed domain name and content. The use made by the Respondent is neither use of the disputed domain names in connection with a bona fide offering of goods or services, nor legitimate non-commercial or fair use. The prima facie evidence provided by the Complainant was not challenged by the Respondent.

The Panel therefore concludes that the Respondent has registered and is using the disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(iii) of the Policy.