Chloé S.A.S. v. balie chen / chenbalie
Claim Number: FA1404001555250
Complainant is Chloé S.A.S. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is balie chen / chenbalie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chloeoutlet.us>, registered with 1API GMBH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2014; the National Arbitration Forum received a hardcopy of the Complaint on April 22, 2014.
On April 25, 2014, 1API GMBH confirmed by e-mail to the National Arbitration Forum that the <chloeoutlet.us> domain name is registered with 1API GMBH and that Respondent is the current registrant of the name. 1API GMBH has verified that Respondent is bound by the 1API GMBH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chloeoutlet.us. Also on April 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On April 22, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 15, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a world famous fashion house, which designs, manufactures, and sells luxury clothing, leather goods, shoes, eyewear and fragrances. Complainant’s company was founded in 1952 and introduced its first collection in 1956.
Complainant provides evidence of the United States Patent and Trademark Office (“USPTO”) registration certificate for the CHLOE mark as well as the Chinese State Administration for Industry and Commerce (“SAIC”) and European Union’s Office for Harmonization in the Internal Market (“OHIM”) registration certificates for the CHLOE` mark. USPTO (Reg. No. 1,491,810 registered June 14, 1988); SAIC (Reg. No. 522,314 registered June 20, 2000) and OHIM (Reg. No. 3,683,661 registered September 21, 2005).
Respondent’s <chloeoutlet.us> domain name is confusingly similar to Complainant’s CHLOE marks. Respondent’s disputed domain name incorporates the entire CHLOE mark with the addition of the generic industry term “outlet” and the country-code top level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <chloeoutlet.us> domain name. Respondent is not commonly known by the disputed domain name.
Complainant has not granted Respondent any license, permission, or authorization to use its marks in any way. Respondent has never made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to publish a website displaying images and links that purport to sell products that compete directly with complainant. The products displayed on Respondent’s website appear to be counterfeit knockoff versions of Complainant’s own products.
Respondent registered or is using the <chloeoutlet.us> domain name in bad faith. Respondent uses the disputed domain name to compete with Complainant by offering products that are in competition with those offered by Complainant, thus disrupting Complainant’s business. Respondent uses the disputed domain name to offer for sale, what appears to be counterfeit knock offs of Complainant’s own products, thereby directly competing with the sales of Complainant’s products and commercially benefiting Respondent.
Respondent had knowledge of Complainant and Complainant’s famous marks when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the CHLOE mark through registration of the mark with the USPTO and otherwise.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the CHLOE mark.
Respondent uses the <chloeoutlet.us> domain name to address a website offering counterfeit merchandize as well as merchandize that competes with Complainant’s CHLOE line of products.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark rights in the CHLOE mark through its registration thereof with the SAIC, the USPTO and other registrants worldwide. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s at-issue domain name incorporates the entire CHLOE mark with the addition of the generic industry term “outlet” and the country code top-level domain name (ccTLD) “.us.” Adding a generic or descriptive word to a complainant’s mark, along with a ccTLD does not distinguish the at-issue domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <chloeoutlet.us> domain name is confusingly similar to Complainant’s CHLOE marks under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also, Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “balie chen / chenbalie” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <chloeoutlet.us> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the at-issue domain name to address a website displaying images and links that purport to sell products that compete directly with Complainant. The products displayed on Respondent’s <chloeoutlet.us> website appear to be counterfeit versions of Complainant’s products. Furthermore, the website displays the heading “Chloe” as well as “Personal Chloe online shopper Shop the Chloe you’ll love” and offers various purses, outfits, and eyewear, all of which are categories of products within the purview Complainant’s Chloe trademark. Respondent’s use of the at-issue domain name to sell counterfeit and competing products is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As noted previously, Respondent uses the <chloeoutlets.us> domain name to compete with Complainant by offering counterfeit products as well as products that are competitive alternatives to those offered by Complainant. Respondent’s practice disrupts Complainant’s business and demonstrates bad faith pursuant to Policy ¶4(c)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). Additionally, Respondent use of the confusingly similar domain name to offer the counterfeit versions of Complainant’s products demonstrates Respondent’s bad faith under Policy ¶4(c)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that respondent attempted to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products which demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, considering the notoriety Complainant’s mark, Respondent’s display of Complainant’s logo on the <chloeoutlet.us> website, and Respondent’s use of the domain name to market counterfeit and competing products, Respondent undoubtedly had actual knowledge of Complainant’s CHLOE trademark when it registered the at-issue domain name. Respondent’s prior knowledge of Complainant’s trademark demonstrates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chloeoutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 22, 2014
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