Trademark defence on the internet – The Chantelle case

Published onMay 2017

We recently commented the Vinci case and the misappropriation of domain names such as vinci.group or vinci-group.com (here) to warn about the necessity of monitoring marks on the internet, which is the only solution to be able to react fast and prevent or at least limit damages due to the infringement.

Trademark watch on the internet is only the first step of a defence strategy (See our watch services here). It is often necessary to resort to judicial or extra-judicial proceedings to defend one’s IP rights and interests.

That is what happened in the cybersquatting case against the mark Chantelle.

The mark Chantelle is a female lingerie mark, registered in several countries, and Chantelle goods can especially be found online on the website www.groupechantelle.com. The group Chantelle found out that the domain name groupe-chantelle.com had been registered by a third party and used to create email addresses cloning the email addresses of several members of the accounts department. An email had then been sent from these cloned email addresses to several trading partners of the group in order to misappropriate future payments.

The group Chantelle filed a UDRP complaint before the WIPO Arbitration and Mediation Center.

According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, a complainant can require the cancellation of a domain name or the transfer of a domain name registration if:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

This extra-judicial dispute resolution procedure allows, in cases where the facts are relatively clear, to obtain a legally binding decision cancelling a domain name or ordering the transfer of a domain name, within a few weeks and against payment of affordable fees. As compared to judicial proceedings, the dispute resolution service is consequently faster and cheaper. However, contrary to judicial proceedings, a UDRP complaint does not allow for criminal or civil penalty and does not allow for the award of damages. That is why both procedures are commonly initiated concurrently in cases of fraud or identity theft.

In this case, the group Chantelle won the case quite easily before the administrative panel. Obviously, the domain name groupe-chantelle.com was almost identical to the marks Chantelle and to the domain name groupechantelle.com. The registrant did not respond to the complaint and no website was attached to groupe-chantelle.com, so it was logically found that the registrant had no right or legitimate interest to the domain name. At last, acts and attempts of identity theft and fraud were perpetrated with the domain name, with a view to misappropriating payments intended for the group Chantelle, so it was easy to come to the conclusion that the domain name had been registered and used in bad faith.

It is highly possible that the group Chantelle simultaneously pressed charges against the registrant of the domain name before the criminal courts. However, this decision is a good example of the interest of a UDRP complaint in case of trademark infringement on the internet or in case of fraud or identity theft.

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