When you are a brand like Chanel, protecting the brand’s integrity is of the utmost priority. Since the market for counterfeit goods is far-reaching and vast, it’s difficult to control the sale of counterfeit products.
In recent years, counterfeiters have come under attack, notably in New York City and the infamous Canal Street where you used to be able to get knock offs of just about anything. Last December, numerous businesses were closed down and NYC officials confiscated over $1 million in bootleg goods. And that’s not all; eBay, the online store has been sued (sometimes successfully) by the likes of Louis Vuitton (NYTimes.com) and Tiffany (MarketWatch.com) for selling counterfeit merchandise.
It seems that the problem of counterfeit goods is not just a problem on the streets and on eBay. The problem extends to domain names as well. We’ve all heard stories of domain names purchased with the intent of selling the name to a rightful owner for an exorbitant amount. That’s not the only foul play regarding domain names.
Some domain names incorporate a brand name solely for the purpose of selling counterfeit products. For example, chanelsunglassessale.com – Chanel has no intention of every using that domain – but the brand had a problem with someone else using its brand name in their url to sell fake products. In recent years, Chanel has brought several cases against people/companies that purchase domain names with Chanel in the url where the intent is to use the site to sell counterfeit goods.
Chanel has taken great care in trademarking its name and logo around the world – it seems unfair that anyone could then snatch up a url that could confuse customers into thinking they were purchasing legitimate product – and apparently, Courts agree. A little while back, Chanel filed a complaint with the World Intellectual Property Organization Arbitration and Mediation Center against Chenying of Xiang Gang, the People’s Republic of China, for purchasing the following domain names: chanelsunglassessale.com; chaneljewelrysale.com; chanelbagsales.com.
The Complainant [Chanel] stressed that the sale of counterfeit goods on the websites under the disputed domain names is paradigmatic bad faith. The Complainant argues that the public is likely to be confused into believing that the disputed domain names and the websites associated therewith have a connection with the Complainant.
The mediators found in favor of Chanel stating that (1) the url was confusing similar with Chanel’s trademark; (2) Chenying didn’t have any rights to use the Chanel name; and (3) the url names were purchased in bad faith. The decision, dated February 19, 2010 can be read in full on the WIPO site.
It appears the url transfers have not yet been made, but I would bet that they will either be taken down very soon, or look like the sites below…