WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chanel, Inc. v. Cologne Zone
Case No. D2000-1809
1. The Parties
The Complainant is Chanel, Inc., a corporation located in New York, New York, U.S.A.
The Respondent is Cologne Zone located in Miami Beach, Florida, U.S.A.
2. The Domain Names and Registrar
The domain names at issue are <chanelperfumes.com> and <chanelperfumes.net> ("Domain Names").
The registrar is Registrars.com, San Francisco, California, U.S.A.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on December 26, 2000. Respondent submitted an informal email response on January 14, 2001.
On February 9, 2001, the WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as Panelist.
4. Factual Background
Complainant is a manufacturer, importer and seller of perfume and luxury products throughout the world. The CHANEL name and mark have been used in the United States for over 70 years. The name and mark is used for perfume, other products and also for retail store services. As a result of extensive sales, advertising and media recognition the name and mark is well-known. The mark has been recognized as well-known and famous by the U.S. Courts and in prior proceedings under the ICANN Policy.
Complainant is the owner of many federal and international trademark registrations for the CHANEL mark, including registrations in the U.S. dating back to 1925.
Respondent registered the Domain Names on December 13, 1999. It appears that the Domain Names have not been used for any functioning web site.
Respondent claims it has been in the perfume business for over ten years, sells CHANEL products, and is a "very large distributor for name brand designer fragrances." Respondent asserts that Complainant was negligent for failing to register the Domain Names. It claims it intends to use the Domain Names for a web site selling various brands of perfume, including CHANEL perfume, and has invested a lot of money in development of the site.
Complainant sent a letter of objection to Respondent on August 29, 2000, and claims it received no response. Respondent contends that it has contacted Complainant's counsel trying to settle this dispute. In its submission in this proceeding, Respondent states: "If we disturb the traffic from Chanel.com, which is not our intent, they will lose alot [sic] more money, than if they were to settle for a few thousand dollars."
5. Parties Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith.
Respondent claims he intends to use the Domain Names for his perfume business.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the respondent has no rights or legitimate interests in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, "perfumes" is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business. See Chanel, Inc. v. Estco Technology Group, D2000-0413 (WIPO September 18, 2000)(finding <chanelstore.com> and <chanelfashion.com> confusingly similar to CHANEL). Therefore, I find that the Domain Names are confusingly similar to Complainant's mark as required under Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark at issue. Paragraph 4(c) of the Policy.
Here, the Domain Names have not yet been used and Respondent is not known by the Domain Names.
Respondent claims to have invested $150,000 in the development of a web site that "will be airing soon with all the fine designer fragrances from all around the world." This claim is not supported by the required certification or by any evidence. However, for the purposes of this decision, I will accept the facts in Respondent's informal submission as being true.
The mere fact that Respondent has a plan to use the Domain Names does not create a right or legitimate interest in them. The Policy requires a plan to make bona fide use. Bona fide use does not exist when the intended use is an deliberate infringement of another's rights. As stated in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO October 12, 2000), "use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
Here, Respondent is well-aware of Complainant's rights in the CHANEL mark. He selected the mark because of its association with Complainant, yet admittedly intends to use it to attract customers to a site where he will sell numerous other brands. The inevitable result of this knowing use of another's mark is an infringement, regardless of Respondent's claim that it "is not our intent" to divert traffic from Complainant. In short, Respondent's proposed use is not a bona fide use of the Domain Names and does not give rise to any right or legitimate interest in them.
C. Bad Faith Registration and Use
I also believe that Respondent has registered and used the Domain Names in bad faith. As noted above, it selected the Domain Names because CHANEL is a well-known mark for perfume, but intends to use them for sites to sell various brands of perfume. Respondent acknowledges that its planned use may disturb traffic from Complainant's site. When it selected the Domain Names, Respondent knew they corresponded to Complainant's mark, but felt entitled to register them because of Complainant's "negligence" in failing to do so first. It also appears that its response to Complainant's objection was to use the Domain Names to try to obtain "a few thousand dollars" from Complainant.
It seems that Respondent's proposed use of the Domain Names will necessarily result in a likelihood of confusion with Complainant as to source, sponsorship, affiliation or endorsement of Respondent's planned web site. Internet users will be "baited" to Respondent's site by the use of Complainant's well-known mark, then potentially "switched" to other brands. The Courts have long recognized that such conduct is not permitted. See Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). Because Respondent knows of Complainant's mark and operates in the same industry, it cannot avoid liability under the Policy by pleading that it does not intend to cause the obvious and inevitable results of its deliberate actions.
Under the circumstances admitted by Respondent, it appears that Respondent registered the Domain Names to use them to attract Internet users to its commercial web site based on confusion with Complainant's mark. Such conduct is evidence of bad faith registration and use under Paragraph 4(b)(iv) of the Policy.
I find that the Domain Names are confusingly similar to a mark in which Complainant has rights, that Respondent lacks any right or legitimate interest in the Domain Names and that the Domain Names were registered and used in bad faith. Therefore, I find in favor of Complainant and grant its request for transfer of the Domain Names <chanelperfume.com> and <chanelperfumes.com>.
Mark V. B. Partridge
Dated: February 22, 2001