Decision for dispute CAC-UDRP-106569

The Complainant alleges that the disputed domain name is confusingly similar to the Trademark as the second level of the domain name consists entirely of the Trademark, preceded only by the term ‘jewelry’, and as the Trademark remains clearly recognisable in the disputed domain name’s string.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant alleges that the Respondent has no trademark rights in "chanel," "jewelrychanel," or any similar term and is not known by such name; that the Respondent is not affiliated with or connected to the Complainant and has not received any license or consent to use the trademark in any way; and that the Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use.

Finally, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith. With respect to bad faith registration, Complainant alleges that it has built substantial goodwill and recognition in the Trademark, which has been registered for more than 90 years; that Complainant is widely known and has a significant online presence, with tens of millions of followers on CHANEL-branded social media accounts; and that previous UDRP panels have repeatedly recognized the reputation and well-known nature of the Trademark. As a result, the Respondent must have been aware of the Complainant and the Trademark. As to bad faith use, the Complainant alleges that the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Trademark.

RESPONDENT:

The Respondent filed a timely Response. It submits that the disputed domain name was not registered with the intention of infringing or capitalising on the Trademark but for use in connection with the Respondent's e-commerce business. It states that the registration was made in good faith with no intention to mislead or confuse customers and that there was no attempt to divert traffic or create an association with the Trademark.  It stated that it would no longer use the domain name.

(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; 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.

1. The Panel accepts that the disputed domain name is confusingly similar to the Trademark because the Trademark is recognizable in the disputed domain name. It is well established that a domain name that fully incorporates a trademark may be confusingly similar to such a trademark within the meaning of the Policy despite the addition of generic terms such as "jewelry".

2. The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy. The Respondent argued that it had registered the disputed domain name for use in connection with its e-commerce business.

Based on the evidence on file, the Panel cannot find any rights or legitimate interests of the Respondent. In particular, the Respondent's website does not meet the Oki Data criteria because, at a minimum, the Respondent has not disclosed its complete lack of relationship or connection with the Complainant. In addition, neither party claims that genuine products are offered on the Respondent's website. on the website. As a result, the Panel considers that the Respondent's website was a clear cut trademark infringement and that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

3. The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and the Complainant's rights in the Trademark as the Trademark is well-known. Furthermore, given the fact that the Respondent offers jewellery, which is one of the Complainant's core products, it is obvious that the Respondent, as a direct competitor of the Complainant, must have known about the Complainant and its well-known Trademark. The Respondent has also not denied knowledge of the Trademark.

As to bad faith use, by using the disputed domain name in connection with a website mentioned above, the Respondent has, in fact, diverted traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Respondent claimed that the disputed domain name was not registered with the intent to infringe or capitalise on the trademark, but for use in connection with the Respondent's e-commerce business. However, the Panel found that there had been an actual infringement of the Complainant's rights. The Respondent's asserted good faith in this respect cannot help to avoid a finding of bad faith use.