Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA283474
`ESTTA Tracking number:
`05/12/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168097
`Plaintiff
`Chanel, Inc.
`MICHAEL CHIAPPETTA
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`866 UNITED NATIONS PLAZA
`NEW YORK, NY 10017
`UNITED STATES
`mchiappetta@fzlz.com
`Other Motions/Papers
`Michael Chiappetta
`mchiappetta@fzlz.com,bsolomon@fzlz.com,mortiz@fzlz.com
`/Michael Chiappetta/
`05/12/2009
`Trial Declaration of Veronica L. Hrdy (F0456314).pdf ( 253 pages )(10958546
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`——————————————————————————————————————————————————————x
`
`CHANEL, INC.,
`
`Opposer/Petitioner,
`
`—against-
`
`FRANK MAURIELLO,
`
`'
`
`:
`:
`'
`
`Consolidated Proceedings:
`Opposition No. 91 168097
`Opposition No. 91172654
`Cancellation No. 92046246
`
`Applicant/Registrant.
`____________________________________________________-..x
`
`TRIAL DECLARATION OF VERONICA L. HRDY
`
`VERONICA L. HRDY declares under penalty of perjury as follows:
`
`1.
`
`I am Vice-President—General Counsel of Opposer and Petitioner Chanel, Inc., a
`
`corporation duly organized under the laws of New York, with offices at 9 West 57”‘ Street, New
`
`York, New York. Chanel, Inc. is a private company that is exclusively entitled to conduct business
`
`under the CI-IANEL name in the United States. Chanel, _Inc. is affiliated with other Chanel entities
`
`throughout the world (Chanel, Inc. and worldwide Chanel entities, collectively, “Chanel”).
`
`I first
`
`joined Chanel as Counsel in June 1987, became Vice-P1'esident—Counsel in 1991, and was
`
`appointed to my present position in 1998.
`
`I submit this declaration as testimony in connection with
`
`the above-captioned consolidated proceeding.
`
`2.
`I have access to the books and records of Chanel relevant to the matters covered
`herein. As a result ofmyjob responsibilities I am generally familiar with the histoiyidofChanel, its
`marks, its products, and the development ofits operations and activities.
`I confirm that the facts and
`
`matters set out herein are based on my own knowledge and from the records and documents of
`
`Chanel to which I have access.
`
`{F0429Sl9.l ]
`
`.-
`
`-
`
`1
`
`

`
`3.
`
`Among my responsibilities as the Vice-President-General Counsel of Chanel is the
`
`protection of Chanel’s trademarks, enforcement of the rights in our marks and preventing
`
`infringement or dilution of our marks.
`
`I oversee all litigation in the United States relating to
`
`Chanel’s trademarks. The protection of these marks is of paramount concern to me and to the
`
`company.
`
`A.
`
`Chanel’s Licensing and Enforcement of the CHANEL Marks
`
`4.
`
`The CHANEL trademark and its CC Monogram (collectively, the “CHANEL
`
`Marks”) are property of incalculable value to the Chanel. Chanel owns more than 70 U.S.
`
`registrations for marks that include one or both of the CHANEL Marks.
`
`5.
`
`Chanel frequently receives requests from third parties to use the CHANEL marks.
`
`Chanel is extremely selective as to who it permits to use the CHANEL Marks, and only allows use
`
`of the marks that upholds the integrity and prominence of the CHANEL brand.
`
`6.
`
`Owing to the fame and value of the CHANEL Marks, many third parties attempt to
`
`trade on the marks’ popularity by selling products bearing counterfeit CHANEL Marks and by
`
`selling products bearing marks that are confusingly similar to and/or dilutive of the CHANEL
`
`Marks.
`
`7.
`
`Chanel expends a great deal of resources policing the CHANEL Marks and enforcing
`
`its rights therein. In the U.S., Chanel employs a trademark watch service to monitor trademark
`
`applications for potentially confusing and/or dilutive marks. Chanel also vigilantly scans the
`
`marketplace for counterfeit and infringing marks. Other information about infringements is
`
`brought to our attention by customers and by our employees.
`
`8.
`
`When Chanel discovers or is told of a potentially infringing mark, it does not
`
`hesitate to take action. During the period from 2002-2009, Chanel filed over 100 lawsuits
`
`[P04298191 )
`
`2
`
`

`
`alleging trademark infringement. In almost all cases, the defendant was infringing either the
`
`CHANEL mark or the CC Monogram mark or both. This led the The New York Times, in an
`
`article from On January 29, 2007, to identify Chanel as one of the top 10 filers of trademark
`
`lawsuits. Exhibit Y attached hereto is a true and correct copy of the referenced article.
`
`9.
`
`During the same period 2002-2009, Chanel filed more than 25 opposition
`
`proceedings with the Trademark Trial and Appeal Board against marks that were confusingly
`
`similar to the CC Monogram mark. Exhibit Z attached hereto consists of a list of those opposition
`
`proceedings.
`
`10.
`
`Chanel has filed 11 successful domain name disputes pursuant to the Uniform
`
`Domain Name Dispute and Resolution Policy with the World Intellectual Property Organization
`
`(WIPO). Annexed hereto as Exhibit AA are the decisions in those cases. In many of those cases,
`
`the WIPO paneiist(s) acknowledged the fame of the CHANEL brand and mark, including as
`
`follows:
`
`a.
`
`Referring to the CHANEL mark as “famous.” Chanel Inc. v. Bontempo, WIPO
`
`Proceeding No. D2002—0721.
`
`b.
`
`Finding respondent’s domain name to be confusingly similar to Chanel’s “famous
`
`trademarks.” Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Proceeding
`
`No. D2000—1833.
`
`c.
`
`Acknowledging that “the CHANEL mark has been recognized by courts and
`
`WIPO as being famous.” Chanel, Inc. v. IGGI Networlcs, Inc.., WIPO Proceeding No. D2000-
`
`1831.
`
`d.
`
`Referring to Chanel’s “incontestably famous trademark CHANEL.” Chanel, Inc. V.
`
`Uraina Heyward, WIPO Proceeding No. D2000-1802.
`
`[F04?.9Bl9,] 1
`
`3
`
`

`
`e.
`
`Finding that the CHANEL mark is “famous” and acknowledging that courts have
`
`recognized the CHANEL mark “as being famous.” Chanel, Inc. v. Buybeautycom, WIPO
`
`Proceeding No. D2000-l 126.
`
`f.
`
`Referring to the “famous trademark, CHANEL.” Chanel, Inc. v. Estco Technology
`
`Group, WIPO Proceeding No. D2000-0413.
`
`ll. Of course, not every infringement of the CHANEL Marks discovered by Chanel
`
`results in a formal proceeding, as many infringe1's abandon their efforts upon receiving a cease-
`
`and-desist letter or other communication from Chanel. Every year, Chanel sends multiple
`
`dozens of cease-and-desist letters to individuals and companies who are infringing the CHANEL
`
`Marks. Most of the recipients agree to stop their unlawful behavior without formal process by
`
`Chanel. When the individuals or companies have applied to register a mark that is confusingly
`
`similar to the CHANEL Marks, Chanel typically also files for an extension of time to oppose the
`
`mark. Many times, the applicant abandons the mark rather than pursuing it in the face of
`
`Chanel’s objection. For example, during the period f1'om 2002 through 2008, at least 23
`
`applicants abandoned their trademark applications for marks that were confusingly similar to one
`
`of the CHANEL Marks after Chanel filed Requests for Extension of Time to file an Opposition
`
`proceeding in the TTAB. Exhibit BB attached hereto contains a list of applications that were
`
`abandoned after Chanel filed a Request for Extension of Time to file an opposition proceeding
`
`against the application.
`
`B.
`
`Courts Have Deemed the CHANEL Marks To Be Famous and Strong
`
`12.
`
`Frequently as part ofjudgments and decisions rendered in cases brought by Chanel
`
`for trademark infringement and dilution, courts have acknowledged the fame and/or strength of the
`
`CHANEL Marks. By way of example, the CHANEL Marks have been deemed famous and strong
`
`{l"'0tI29BI9.l
`
`}
`
`4
`
`

`
`in the following cases: Chanel v. Minran PU, 2009 WL 722050 at *7 (D. Kan. 2009); (finding that
`
`the CHANEL Marks are “very distinctive” and both conceptually and commercially strong);
`
`Chanel, Inc. v. Schwartz, 2007 WL 4180615 (E.D.N.Y. 2007) (finding that the CHANEL Marks are
`
`“strong”); Chanel v. Xiao Feng Ye, 2007 WL 2693850 at *5 (E.D.N.Y. 2007) (finding a high
`
`likelihood of confusion “particularly in light of how famous Chanel’s mark is. . .”); Chanel, Inc. v.
`
`French, 2006 WL 3826780 at *1-2 (S.D. Fla. 2006) (“The [CHANEL Marks] qualify as ‘famous
`
`marks’ as that term is used in 15 U.S.C. § 1l25(c)(l) .
`
`.
`
`. .”); Chanel, Inc. V. Goralashevsky, 558 F.
`
`Supp. 2d 532, 5 38 (D.N..T. 2007) (calling CHANEL and CC Monogram 1na.rks “strong and
`
`established marks”); see also Louis Vuitton Malletier S.A.. v. Haute Diggity Dog, LLC, 507 F.3d
`
`252 (4"‘ Cir. 2007) (referring to Chanel No. 5 as a “famous and expensive” brand). The foregoing
`
`decisions are annexed hereto as Exhibit CC.
`
`13.
`
`Likewise, the district courts in the Central District of California, the Southern
`
`District of Florida, the Northern District of Georgia and the Southern District of New York, have
`
`all issued recent summary judgment or other final orders acknowledging the strength and/or
`
`fame of the CHANEL Marks. Chanel, Inc. v. Bryan, Civ. No. 1:07-CV—225—0DE at *1 1-12
`
`(N .D. Ga. Nov. 18, 2008) (finding that CHANEL Marks are famous to support granting
`
`summary judgment on dilution claim); Chanel, Inc, v. Singh, Case No. CV 05-4749-CAS
`
`(PJWX) at *15 (C.D.Ca. July 9, 2007) (holding that the CC Monogram mark is “strong”);
`
`Chanel, Inc. v. Mason, Case No. 05-61883-CIV-WPD at *6, *7 (S.D. Fla. Dec. 1, 2006)
`
`(granting summary judgment to Chanel and finding that “Chanel has shown that [the CHANEL
`
`Marks] are strong marks” and that they are “distinctive and famous”); Chanel, Inc. v. Sinaie,
`
`Case 2:05-cv-06036-SJO—SS at *16 (C.D.Ca. July 24, 2006) (granting summary judgment to
`
`Chanel and holding that the CHANEL Marks are “strong”); Chanel Inc. v. Barrera, CV 06-2768
`
`[I70429B I 9.1 ]
`
`5
`
`

`
`SVW (RCX) at *12-13 (C.D. Ca. Feb. 5, 2000) (finding that CHANEL Marks are famous to
`
`support granting summary judgment on dilution claim); see also Chanel, Inc. v. Teng Da
`
`Trading Inc., Civ. No. 07cvll1l3 (NRB)(GWG) at *5 (S.D.N.Y. Oct. 23, 2008) ( “the CC
`
`Monogram is a strong and famous trademark”). The foregoing orders are annexed hereto as
`
`Exhibit DD.
`
`C.
`
`The Marks of Frank Mauriello At Issue In This Consolidated Proceeding
`
`14.
`
`Chanel first learned. of Frank Mauriello and his marks that are the subject of his
`
`applications and registration at issue in this consolidated proceeding (the “Mauriello Marks”)
`
`when it received watch notices concerning publication of such marks. Chanel is not aware of
`
`any use of the Mauriello Marks in commerce.
`
`15.
`
`The back-to-back, interlocking EE monogram mark that is at issue in this
`
`consolidated proceeding is particularly troubling to Chanel, and likely to confuse consumers, for
`
`several reasons. Like the letters “c” in Chanel’s CC monogram mark, the letters “e” in Mr.
`
`Maurielll0’s EE monogram mark are curved, presented back-to-back and interlocking. Also, the
`
`loops in the letters “e” are compressed towards the top of the letters, causing the EB monogram
`
`mark to greatly resemble the CC monogram mark. Further, the BE monogram mark is a logo for
`
`Mr. Mauriello’s word mark ENELLE, which itself mimics the CHANEL mark Moreover, Mr.
`
`Mauriello has applied to register the Mauriello Marks in connection with a list of goods that are
`
`actually sold by Chanel under its marks. Clearly, Mr. Mauriello intended his goods and the E13
`
`and ENELLE marks to mirror Chanel’s goods and the CC Monogram and CHANEL marks.
`
`16.
`
`I am also responsible at Chanel for negotiating settlement and consent agreements
`
`with third parties concerning their use or registration of their marks. Under certain limited
`
`circumstances (e. g., different goods; distinguishable marks), Chanel has consented to use or
`
`IFOLIZQE 19. I
`
`}
`
`6
`
`

`
`registration of interlocking letter marks. However, Chanel has never consented to the use or
`
`registration of back-to-back, interlocking, curved, double-letter marks for the products identified
`
`in Frank Mauriello’s applications and registration at issue in this consolidated proceeding, which
`
`are essentially identical to the goods offered by Chanel under the CHANEL Marks.
`
`Declared under penalty ofperjury this uh day of May, 2009 at New York, New York.
`
`
`
`ll-‘§)41‘}8 19 l }
`
`7
`
`

`
`CERTEICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Trial Declaration of Veronica
`L. Hrdy and Exhibits Y - DD is being deposited with the United States Postal Service as first class
`mail, postage prepaid, in an envelope addressed Brian R. Gibbons, Esq., Brian R. Gibbons, P.A.,
`3936 S. Semoran Blvd, Suite 330, Orlando, FL 32822-4015, this 12”‘ day of May, 2009.
`
`
`
`{FD4298 l9.l I
`
`8
`
`

`
`OPPOSER/PETITIONER’S
`
`EXHIBIT Y
`
`CHANEL, INC.,
`
`Opposer/Petitionei‘,
`
`-agains1:-
`
`FRANK MAURIELLO,
`
`Applicant/Registrant.
`
`{I-‘O4-139'J'3.l
`
`}
`
`Consolidated Proceedings:
`Opposition No. 91 168097
`Opposition No. 91 172654
`Cancellation No. 92046246
`
`

`
`CC 09933 E
`
`

`
`..m.
`
`W.
`
`~-Jr»;;.~gsrwgvyvwc.22;,<g-3.5g
`
`

`
`OPPOSER/PETITIONER’S
`
`EXHIBIT Z
`
`CHANEL, INC.,
`
`Opposer/Petitioner,
`
`-against—
`
`FRANK MAURIELLO,
`
`Applicant/Registrant.
`
`[P04439711 }
`
`Consolidated Proceedings:
`Opposition No. 91168097
`Opposition No. 91 172654
`Cancellation No. 92046246
`
`

`
`Chanel Inc. Trademark Trial andA eal Board Proceedin s 2002-2009
`
`(CC Monogram mark)
`
`
`
`
`Daye Dong
`(design mark)
`
`S.N.77538248
`
`
`
`91189429 XinglongLinand
`
`Xinglong Lin and
`Daye Dong
`
`S.N. 77538290
`(design mark)
`
`S.N. 79046465
`Calzaturificio
`GG GARDENIA &
`Gardenia S.r.l.
`
`design
`
`———DweW
`
`3/25/2009
`
`3/25/09
`
`2/10/09
`
`
`
`
`
`Pending
`
`Request for extension
`of protection to U.S.
`withdrawn by
`applicant
`
`
`
`
`
`
`
`
`91489431
`
`91188819
`
`91 186765
`
`91 182842
`
`91182534
`
`91181184
`
`91178950
`
`91178371
`
`91175986
`
`[room-732,1 )
`
`
`
`
`
`
`
`B.L.K. International,
`Inc.
`
`S,N. 77152351
`CC CIRO
`
`10/2/08
`
`Default judgment;
`opposition sustained
`
`Sunbow Sunglasses
`Import, Inc.
`
`CITTERIO & design
`
`S.N. 77236584
`
`3/5/2008
`
`DC & Design
`
`Application
`withdrawn; opposition
`sustained
`
`
`
`
`
`
`
`S.N. 77172494
`
`2/20/08
`
`Default judgment;
`opposition sustained
`
`
`
`
`
`Connor H. Snyder
`and Nathaneal S.
`
`
`
`CG CERTIFIED-
`Swander
`GANGSTACO
`
`
`
`JC Exclusive Inc.
`s.N. 73837233
`
`JC... & Design
`
`
`91 178077
`
`12/1 1/2007
`
`Application
`withdrawn; opposition
`dismissed
`
`
`
`Enesco, LLC
`
`S.N. 78753878
`
`8/ 1 5/07
`
`GG & Design
`
`Suspended pending
`disposition of Opp.
`
`O O Sunglass Inc.
`
`S.N. 78960172
`
`7/13/07
`
`OO DOUBLE-O &
`
`Default judgment;
`opposition sustained
`
`3/2/07
`
`Withdrawal of
`
`
`
`application;
`opposition sustained
`
`Design
`
`
`
`
`S.N. 78636814
`BEACHES
`
`CLASSIC
`
`
`
`
`
`
`COLLECTION CC
`
`CLASSIC
`
`COLLECTION
`
`Gorstew Ltd.
`
`

`
`——DareW
`
`l/25/07
`
`11/21/O6
`
`11/20/06
`
`11/8/06
`
`
`
`
`
`
`
`Application
`withdrawn; opposition
`sustained
`
`Application
`withdrawn; opposition
`sustained
`
`Application
`withdrawn; opposition
`dismissed
`
`Application
`withdrawn; opposition
`dismissed
`
`
`
`
`10/18/06
`
`Withdrawal of
`
`I
`application;
`opposition sustalned
`
`Pending
`
`
`
`
`
`8/30/06
`
`
`
`
`
`
`
`
`
`
`
`
`S.N. 78732219
`EE 2E EYEWEAR
`& Design
`
`S.N. 78642697
`
`(design mark)
`
`S.N. 78715586
`
`&
`
`design
`
`S.N. 78555014
`
`(design mark)
`
`
`
`
`Defendant
`
`Brilliance U.S.A.
`Inc.
`
`
`
`Ching Yun Wang
`
`Jennifer Michelle
`
`MCKCC Chester
`
`Yellowstone
`
`Imports, Inc.
`
`
`
`91175339
`
`91174086
`
`91174071
`
`V
`
`91173835
`
`91173466
`
`91172654
`
`Brilliance U.S.A.
`Inc.
`
`S.N. 78720935
`(design mark)
`
`Frank Mauriello
`
`S.N. 76650737
`EE ENELLE &
`
`design
`
`S.N. 76651132
`
`
`
`
`
`
`
`ENELLE (stylized)
`
`S.N. 76652820
`
`ENELLE (stylized)
`
`S.N. 76653044
`
`ENELLE (stylized)
`
`S.N. 76654037
`
`ENELLEENELLE &
`
`design
`
`S.N. 76654830
`
`BE ENELLE &
`
`design
`
`S.N. 76657982
`
`EE & design
`
`
`
`
`
`S.N. 76657983
`
`ENELLEENELLE &
`
`design
`
`(F00lT1‘J2.l )
`
`2
`
`

`
`Kimberly K. Chalos
`
`S.N. 78504754
`
`
`
`4/24/06
`
`Dismissed without
`
`
`
`Defendant
`
` S.N. 76606952
`
`(design mark)
`
`Connoisseurs
`
`Products Corp.
`
`
`
`DD & Design
`
`2/13/06
`
`prejudice (mark
`abandoned)
`
`Suspended pending
`settlement
`
`negotiations
`
`Frank Mauriello
`
`S.N. 766043 56
`
`12/16/05
`
`Pending
`
`EE & design
`
`Alberto Gozzi S.P.A.
`
`S.N. 78219642
`AG
`
`GOZZI & design
`
`' 7/6/05
`
`Suspended pending
`settlement
`negotiations
`
`
`
`Lori Smith Schell
`
`S.N. 78370843
`
`5/16/05
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dismissed without
`pI'C_] UC11C6
`abandoned)
`
`Dismissed without
`prejudice
`
`Terminated
`(sustained; mark
`abandoned)
`
`Terminated
`(sustained; mark
`"‘ba“d°“"d)
`
`(sustained; mark
`abandoned)
`
`
`
`
`
`ENERGY & design
`
`Bowman, Diaz &
`Mokry
`
`S.N. 78294350
`(design mark)
`
`S.N. 91161671
`Frontier Fashion,
`EB & d -
`Inc.
`
`
`
`eslgn
`
`
`
`
`5/ 16/05
`
`8/3/04
`
`6/ 14/04
`
`Christina Muls
`Delassue
`
`S.N. 78197969
`CC CHRIS &
`CHRIS & design
`
`Lamar Shaheer
`
`Pamsh
`
`S.N. 76480513
`
`GC CLOWN’N
`
`1/23/04
`
`GEAR & design
`
` Terminated
`
`
`Serralles Hotel, Inc.
`
`
`Clara Guillen
`
`Gallardo
`
`
`
`S.N. 78185108
`
`12/24/03
`
`Dismissed with
`
`CC & design
`
`S.N. 76248264
`
`INAKI & CLARA &
`
`
`
`design
`
`prejudice (following
`settlement)
`
`
`
`
`
`3/31/03
`
`Terminated
`
`(sustained; mark
`abandoned)
`
`
`
`91170565
`
`91169163
`
`91168097
`
`91165824
`
`91165237
`
`91165224
`
`91161671
`
`91160996
`
`91159275
`
`91159091
`
`91155949
`
`[FOD|7'1'32.1 ]
`
`3
`
`

`
`Terminated
`
`;::::::“::;;m
`
`D-MLW
`
`4/ 1 7/02
`
`
`
`
`
`91 125684
`
`
`Defendant
`
`Jay-Y Enterprise
`C0,, Inc.
`
`S.N. 76106633
`
`{F(J()l'1'TJ2,l }
`
`4
`
`

`
`OPPOSER/PETITIONER’S
`
`EXHIBIT AA
`
`CHANEL, INC.,
`
`Opposer/Petitioner,
`
`-against-
`
`FRANK MAURJELLO,
`
`Applicant/Registrant.
`
`Consolidated Proceedings:
`Opposition No. 91 168097
`Opposition No. 91 172654
`Cancellation No. 92046246
`
`

`
`WD30 Domain Name Decision: D2009-0081
`
`http://www.wipo.int/amc/en/domains/docisions/html/2009/d2009-0081...
`
`
`
`WIPO Arbitration and Mediation Center
`
`ADMINISTRATIVE PANEL DECISION
`
`Chanel, Inc. v. Domain Privacy Group, Inc. I Charlene Newport
`
`Case No. D2009-0081
`
`1. The Parties
`
`The Complainant is Chanel, inc. of New York, United States of America, represented by Fross Zeinick Lehrman & Zissu, PC, United
`States of America.
`
`The Respondent is Domain Privacy Group, Inc. of Toronto, Canada I Charlene Newport of inveroargiil, New Zealand.
`
`2. The Domain Name and Registrar
`
`The disputed domain name <chaneisa|e.com> is registered with Netfirrns, Inc.
`
`3. Procedural History
`
`The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2009. On January 22, 2009, the
`Center transmitted by email to Netfirms, Inc., a request for registrar verification in connection with the disputed domain name. On
`January 22, 2009, Netfirrns, inc. transmitted by email to the Center its verification response disclosing registrant and contact information
`for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an
`email communication to the Complainant on February 2, 2009 providing the registrant and contact information disclosed by the
`Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the
`Complaint on February 4, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the
`formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"). the Rules for Uniform Domain
`Name Dispute Resolution Policy (the ‘'Rules’'), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
`(the "Supplemental Rules").
`
`In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the
`proceedings commenced on February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was
`
`February 26, 2009. The Respondent did not submit any response. Accordinly, the Center notified the Respondent's default on March
`2, 2009.
`
`The Center appointed David Perkins as the sole panelist in this matter on
`
`March 6, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
`of impartiality and independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
`
`I of‘?
`
`4/30/2009 1:24 PM
`
`

`
`WIPO Domain Name Decision: D2009-0081
`
`http:l/www.wipo.int/amc/en/domainsldecisions/htmll2009ld2009-0081
`
`4. Factual Background
`
`4.A The Complainant
`
`4.A.1 The Complainant, Chanel Inc., is a premier manufacturer. importer and seller of luxury products including bags, shoes, clothing,
`fragrances, skin care, cosmetics, jewelry, sunglasses and other accessories which are sold worldwide under the CHANEL trademark. It
`has been trading in the United States for over 80 years and its brand, CHANEL, is one of the most recognized and respected names in
`the fashion and beauty field.
`
`4.A2 The Complainant's products are advertised under the CHANEL mark on television, radio and in numerous magazines and
`publications circulating both in the United States and internationally. The Complainant has spent over USD 250 million on advertising
`and promotion over the past 5 years. The Complainant also conducts special events, such as its recent mobile art travelling exhibition in
`Hong Kong, SAR of China, Tokyo and New York.
`
`4.A.3 The Complainant's CHANEL products are sold through its own CHANEL retail stores and in exclusive boutique stores and stand
`alone jewelry boutiques in famous US department stores such as Neiman Marcus, Barney's, Macey's, Nordstrom and Saks Fifth
`Avenue. Currently, there are more than 2500 outlets in the United States that sell CHANEL products.
`
`4.A4 The Complainant has also had an lnternet presence at <chanel.com> since 2000. Apart from providing news about the
`Complainant, highlights of the Complainant's fashion shows, featuring its products and providing a store locator service identifying
`Chanel stores both in the US and worldwide, Chanel fragrances, beauty products and certain fashion accessories can be purchased
`through its website. Over the period January to March 2008 inclusive, more than 4 million visitors used the <chane|.com> website.
`
`4.A.5 The Complainant is the proprietor of some 29 trademark registrations for CHANEL in the United States, which covers a number of
`classes of goods and services, the earliest dating from 1925. Of that number, 22 are incontestable under US law, with the result that
`such registrations are conclusive evidence of the Complainant's exclusive rights in the CHANEL trademark. The CHAN EL trademark is
`also widely registered worldwid.
`
`4.A.6 The Women's Wear Daily (WD) 100 of July 2005, which lists the best known fashion brands, listed the CHANEL brand as 35
`having a sales voiurne of USD 2.8 billion. In 2006, the ranking moved to 34 and sales to USD 3.3 billion. In 2007 and 2008 the rankings
`were, respectively, 42 and 38. |nterbrand's "Best Global Brands" Report in 2008 ranked the CHANEL brand at 60, which is higher than
`many otherwell-known marks, such as YAHOOI: KLEENEX: STARBUCKS and VISA.
`
`4.A7 Books have been written about the House of Chanel and its founder, Coco Chanel, including "Chanel (The Universe of Fashion)"
`by Francois Baudot and "Chanel: AWoman of her own" by Alex Madsen. There have also been television documentaries for example,
`"Chanel, Chanel" and "Coco Chanel" (BBC) a musical entitled “Coco" and a recent movie on the Lifetime Television cable network
`entitled “Coco Chanel".
`
`4.A.B The CHANEL mark has been held to be well-known and distinctive by US Courts. For example, Chanel, lnc v. Smith 178 USPQ
`630, 631 (N.D. Cal. 1973) and Chanel, lnc v. Italian Actlvewear of Florida, lnc 931 F. 2d. 1472, 1474 (11"‘ Cir. 1991). The mark has
`also been recognized as a well-known mark in decisions under the Policy. For example: Chanel, lnc v. Cologne Zone, WIPO Case No.
`D2000-1809; Chanel, lnc v. lGGl Networks, lnc, WIPO Case No. D2000—1831; and Chanel, lnc 1/. Designer Exposure, WIPO Case No.
`D2000-1832.
`
`4.A.9 The CHANEL mark has also been featured in films, songs, literature and in art. An example of the latter is, the famous Warhol
`painting of the CHANEL No. 5 bottle. In addition, well-known companies, such as Mercedes-Benz, have requested the right to make use
`of the CHANEL mark and CHANEL products in their national advertising campaigns.
`
`4.A.10 The 29 US trademark registrations for CHANEL referred to in paragraph 4.A.5, are set out below.
`
`
`
`iiin¢gi.iin¢..ii
`
`
`
`A stisisgaiisigd and as .;+s.au;e) in
` ma.-1; '
`' Commerce
`
`
`
`195,360
`
`A
`
`'c§i'-'l)oir§ii"s'L'”
`
`302,690
`
`CHANEL
`
`e
`
`3
`
`'
`
`'7
`
`iiaggigigirea i=e15riii.:.i;r'z$2i; "1525"
`
`if
`
`A
`
`if
`
`if
`
`j First Used in Commerce January 1, 1920
`5 Registered April 25, 1933
`
`%
`31
`
`3
`
`1 First used in Commerce January 1, 1921
`Registered June 14, 1949
`
` First U$ed_i"_.99!T1rrisr9° Jamlaw 1. 19?‘? .
` F_”.3t U39 5.F‘..CF".*.‘i‘T'$".".°‘.° *’3"“a'V 1» 19?‘. .
`
`Registered August 21, 1949
`
`4/30/2009 1:24 PM
`
`510,992 777
`
`CHANEL
`
`513,132
`
`CHANEL.
`
`W 7
`
`= U
`
`Z US
`
`1 us
`
`2 of?
`
`

`
`WIPO Domain Name Decision: D2009-0081
`
`http://www.wipo.int/amc/en/domains/decisions/htm1l2009/d2009-0081...
`
`612.169
`
`CHANEL
`
`14
`
`= Registered September 13, 1955
`
`626.035
`
`‘CHANEL
`
`A 18
`
`T First Used before in Commerce 1925
`Registered May 1. 1956
`
`302.351
`
`CHANEL
`
`
`
`
`
` First Used in Commerce November 24, 1954
`
`
`
` .
`. Registered January 25, 1966
`..
`.
`..
`:'=._i'T.*T'.t..1:_’§9F.‘._.i." 9E.’.i.".‘.i'_'i.&.’.’_‘T'.“_3..~’..?‘."..L.'.?.'3v'_..1.- 19.2.0.
`mTRegistered November10,1970
`' 14
`'
`In CHANEL H
`902,190
`T
`T
`T
`FirTstTUseTdiri Commerce 1925
`2
`Registered January 19. 1971
`
`1 903.2621
`
`5
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`915.139
`
`"CHANEL
`
`2
`
`5
`
`T
`
`First Used in Commerce 1925
`Registered June 15. 1971
`
`_
`.
`
`711W CHANEL
`
`US
`
`
`
`1
`
`s
`
`US
`
`E
`
`us
`
`
`
`
`' CHANEL".
`
`
`1' CHANELC A
`it 12471
`11
`
`T
`
`T
`
`T
`
`5
`
`T
`
`T
`
`TT
`
`T
`
`930.567
`
`CHANEL
`
`111.057.3951
`
`1.079.438
`
`CHANEL
`
`T
`25
`
`_25
`
`1TlT-first Use in Commerce March 17. 1970
`1 Registered March 7. 1972
`
`
`..
`.. ..
`
`Registered March 13, 1973
`F1,"9? .999"! G9mmeres,Dec=embs.rs?2- 1971 .
`‘; Registered April 13, 1976
`First Use in Gomsmesrcesseptembsr 23-.1972
`1 Registered December 13. 1977
`i
`
`T
`
`T
`
`T
`
`K
`
`TT
`
`T
`
`‘
`' j1.o37.999
`
`T
`
`1.177.400
`
`CHANEL
`
`f5
`
`:25
`
`;
`;
`,1
`ECHANEL
`
`CHANEL
`is
`5 CHANEL
`
`1.241.265
`is
`1,263,845
`
`:
`
`g4
`
`is
`
`C
`
`First Use in Commerce October 21, 1976
`Registered March 23, 1973
`1'71""-‘PF L..’?'.'..°. 1.”. ..C.9m'T‘°.F°e. S°P19.’."be" 1976
`Registered November 10, 1981
`
`
`..
`
`._
`
`
`
`
`
`
`ius I
`1
`TUS
`1
`.
`US
`
`1
`
`is
`
`US
`
`us
`
`T
`
`T
`
`T
`
`T
`
`T
`f 16 3. 13
`=
`
`7
`77
`7
`7
`7
`i
`1 CHANEL
`
`
`
`7
`
`7
`
`77
`
`T
`9
`
`Registered June 7, 1983
`is;FisrstUsesi.riF3°mrrier<ie1925...
`
`Registered January 10, 1984
`= First Use in Commerce 1977
`Registered July 9, 1935
`First use in Commerce November 24. 1954
`r Registered July 16. 1985
`FirstsU,sss,is=1s99rnrnsr9e Jsanusry 1-. 1920
`A
`;Registered November1. 1988
`First sU$9.sin Csommesrssfisptsmbsr 4. 19.87.
`5 Registered October 3, 1939
`First Use in Commerce 1976
`Registered December 19. 1989
`§First Use in Commerce October 1987
`3 Registered June 18. 1991
`
`
`
`I
`
`I
`
`7
`
`-
`:
`
`T
`
`1 1,347,677
`1
`
`_ CHANEL
`
`1,343,842
`
`1
`
` 1
`
`' 1,539,104.
`T
`1.571.787
`
`US
`
`1.347.375" '
`
`1,360,366
`
`
`
` ;1,510,757 7 A
`11’
`
`
`H
`
`. CHANEL
`1
`3 CHANEL
`
`CHANEL
`
`I
`
`'42" '
`
`it 1
`
`14
`
`T
`
`T
`
`T
`
`6
`
`'2
`
`CHANEL
`
`
`
`l21'
`
`'
`
`First Use in Commerce 1985
`Registered October 15, 1991
`
` First Use in Commerce 1984
`
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`

`
`WIPO Domain Name Decision: D2009—0081
`
`http://www.wipo.int/amc/enfdomains/decisions/html/2009/d2009—0O81...
`
`1,733,051
`
`CHANEL
`
`.
`.
`.
`2,812,740
`
`.
`
`.
`
`3,133,139
`..
`3,134,695
`
`.
`.
`CHANEL
`
`T
`
`
`
`CHANEL
`.
`CHANEL
`
`.
`
`US
`
`US
`
`US
`
`..
`US
`
`.
`
`_
`
`3
`I
`I
`
`8
`
`26
`
`Registered November 17, 1992
`
`
`Firsi.U~°>e. in CP.'T".'l9i°°1.9.54
`Registered February 10, 2004
`
`..
`
`.
`
`First Use in Commerce January 1, 1986
`
`
`
`.
`
`14
`.
`.
`9, 20, 25, 26
`and 28
`
`
`
`Registered August 22, 2006
`. First Use in C°mmerce19,25
`Registered August 29, 2006
`
`_ First Use in Commerce respectively
`
`January 1991 (Cass 9): September 1, 2004 (Class
`3 20): September 1, 2004 (Classes 25 and 24) and July
`. 7 1 399%? (Glass 25).
`
`
`
`4.B The Respondent
`
`4.B.1 In the absence of a Response, the information relating to the Respondent and her activities is taken from the Complaint.
`
`4.B.2 The disputed domain name <chanelsale.com> was registered on March 8, 2008. An Internet user accessing that domain name is
`directed to a webpage that identifies ongoing auctions at the eBay website for products which may, or may not, be genuine CHANEL
`products. Those depicted and offered on the printout from the homepage of January 16, 2009 include so-called CHANEL boutique pink
`boucle wool skirt suit: CHANEL beige quilted boots: CHANEL CC luggage, handbag, purse shoulder XL: CHANEL CC logo key chains
`wall purse bag in box: CHANEL flamenco black lace 36 dress: CHANEL Chance Eau Fraiche and CHANEL sunglasses.
`
`4.B.3 On that homepage, the CHAN EL mark is prominently displayed and is in a font and logo type almost identical to that used by the
`Complainant. The word “sale” is separately displayed in a different colour, size and font. Consequently, the website is simply titled,
`CHANEL. There is no information as to the source or sponsor of the website.
`
`4.B.4 The Panel takes note that the eBay partner network rewards third parties. such as the Respondent, who create websites that will
`attract visitors to eBay pages and auctions. Such a member of the partner network receives money from eBay for so-called “quality
`traffic". whether that be a customer who places a bid on one of the items identified on the website, a person who purchases an item
`from the website, or a person who visits the website and goes on to register with eBay. The amount of the payment depends upon how
`much "quality traffic" the third party attracts to eBay.
`
`5. Parties’ Contentions
`
`5.A Complainant
`
`5.A.1 Identical or Confusingly Similar
`
`5.A.1.1 Based on paragraph 4.A above, the Complainant asserts that it has rights in the registered trademark CHANEL and that the
`CHANEL mark is a well-known trademark.
`
`5.A.1.2 Because the disputed domain name incorporates the CHANEL trademark, it is the Complainant says confusingly similar to that
`trademark. The Complainant cites decisions under the Policy in support of that proposition, namely lnr'ospace.com.lnc v. infospace
`Technology Co. Ltd, where the complainant's registered trademark was INFOSPACE and the disputed
`domain name was <microinfospace.com>; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No.
`D2005-1105, where the complainant's registered trademark was HITACHI and the disputed domain name was
`<hitachisemiconductor.com>; EAuto LLC v. EAuto Parts, WIPO Case No. Q2000-0095, where the complainant's registered trademark
`was EAUTO and the disputed domain name was <eautoparts.com>; and Chanel, inc v. Estco Technology Group [WIPO Case No.
`D2000-0413] where the disputed domain names were <chanelstore.com> and <chanelfashion.com>.
`
`5.A.2 Rights or Legitimate Interests
`
`5.A.2.1 Because the CHANEL name had been widely registered and used for more than 80 years before the Respondent registered the
`disputed domain name, the Complainant says that the Respondent was clearly on notice of the Complainant's rights in the CHANEL
`mark. The Complainant refers to the decision in Chanel‘, inc v. Buybeauty.oom, WIPO Case No. D2000-1126, where the panel said,
`citing an earlier decision under the Policy in Gueriain S.A. v. Pei kang, WIEO Case No. D2000-0055, that given the fame and
`substantial use of the CHANEL mark, "no actual or contemplated bona ride or legitimate use of the Domain Name <buychanel.com>
`could be claimed by Respondent". The Panel then went on to say:
`
`"Finally, where. as here, the CHANEL mark is venerable and distinctive, it is not reasonably possible for Respondent to demonstrate
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`WIPO Domain Name Decision: D2009-0081
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`any legitimate interest in a domain name consisting of the CHANEL mark."
`
`The Complainant also cites for the same proposition Nike, inc V. B.B. de Boer, WIPO Case No. D2000-1397. where the disputed
`domain name was <nike-shoes.com> and the panel held:
`
`"given that Complainant's trademark is distinctive and famous to the point where it may not be used by other persons even in fields or
`industries unrelated to Complainant's activities, one would be hard pressed to find a person who may show a right or legitimate interest
`in a domain name containing Complainant's trademark."
`
`5.A.2.2 Further, Complainant states that the Respondent is neither licensed nor othenivise authorized to use the CHANEL mark.
`
`5.A2.3 Next, the Complaint states that there is no evidence to show that the Respond