WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Balenciaga v. [1966810]: Tech Administrator domainextra@, -------, -------, Null Case No. D2009-1192 1. The Parties
The Complainant is Balenciaga, Paris, France, represented by IP Twins S.A.S., France.
The Respondent is [1966810]: Tech Administrator domainextra@, -------, -------, Null , C/o Moniker, Florida, United States of America, of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2009. On September 9, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On September 10, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 October 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2009.
The Center appointed Jane Lambert as the sole panelist in this matter on December 1, 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. 4. Factual Background
The Complainant is a public company incorporated with limited liability in France. It bears one of the best known names in fashion. Its founder, Cristobal Balenciaga, was described by Christian Dior as “The Couturier of Couturiers” and “The Master of us all”. Now part of the Gucci group, the Complainant designs ladies' and gentlemen's clothing, accessories, fragrances and other fashion items which it sells in substantial quantities under the Balenciaga brand around the world.
To protect its brand, the Complainant has registered BALENCIAGA as a word mark for clothing, accessories and other goods in Class 25 and various other classes in its principal markets.
The Complainant spends substantial sums on advertising and promoting its products in all media including the internet. Those products are often featured in the trade press and newspapers and magazines generally.
Very little is known of the Respondent save that he or she has registered the disputed domain name with Moniker Privacy Services of Pampona Beach in the United States of America. 5. Parties' Contentions A. Complainant
The Complainant claims the transfer of the disputed domain name on the following grounds:
(1) The domain name is confusingly similar to a Trademark in which the Complainant has Rights
The Complainant has registered BALENCIAGA as a trademark for women's and men's clothing, accessories and other luxury goods in several classes in many countries. For instance, the word is registered for “Articles of clothing for men; articles of ready-made clothing for women” in Class 25 with the Trade Marks Registry of the UK Intellectual Property Office under registration number 1129815 with effect from March 6, 1980. The disputed domain name differs from the registered mark in only one letter.
(2) The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant has granted no licenses under its trademarks. The word “balenicaga” has never been registered as a trademark anywhere in the world. It is improbable that the Respondent is known by that name.
(3) The Domain Name was registered and is being used in Bad Faith
The Complainant relies on the following circumstances and propositions:
(a) Balenciaga is a well known fashion house of which the Respondent must have been aware.
(b) It contends that “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively” quoting the panel's dicta in Orchard Supply Hardware LLC v RareNames, Web Reg; NAF Case No. FA1178941 and citing also Samsonite Corporation v. Colony Holding; NAF Case No. FA 94313 and Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397.
(c) It has parked the domain name on a pay per click web site where it is doubtlessly taking advantage of surfers' typographical errors.
(d) Moniker has been a respondent to a number of other domain name disputes all of which have been decided in favour of the complainant which indicates “a repetitive pattern of cyber-squatting.” B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
The Complainant must prove that each of these three elements is present. A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the British trademark number 1129815 mentioned in paragraph 5 A (1) above. The domain name differs from that mark only in the transposition of the letters “i” and “c” in the third syllable. The disputed domain name could easily spring from a typing error or a memory or concentration lapse which is likely to happen many times a day. The Panel is therefore satisfied that the first element is present. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence that any of the above circumstances apply. Nor is there evidence of any other circumstance that would indicate that the Respondent has rights or a legitimate interest in the disputed domain name. Accordingly, the Panel finds that the second element is present C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The disputed domain name appears on a pay per click site. The site is divided into three panels one of which lists sponsored searches for such products as Prada, Gucci and Chanel handbags, designer and wholesale handbags and Gucci and designer shoes. The obvious purpose of such sites is to generate revenue which of course is a “commercial gain” within the meaning of paragraph 4(b) (iv) of the Policy. Having already found that the disputed domain name is confusingly similar to at least one of the Complainant's marks, the Panel is satisfied that the Respondent has created a likelihood of confusion with the Complainant's mark as to the location of the Complainant's products or services on the Respondent's website and location. Accordingly the Panel finds that the third element of paragraph 4(a) of the Policy is met.
That is enough to dispose of the application but since the Complainant has raised other arguments the Panel adds that she is not persuaded that there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively and declines to follow the cases cited to her. As she said in Balenciaga v. Registrant [7021]: Registrant,WIPO Case No. D2009-1410:
“The Policy does not define “bad faith” but offers examples of circumstances that would entitle a panel to find that bad faith is present. As the panel observed in Intesa Sanpaolo S.p.A. v. George Papadakos,WIPO Case No. D2008-1531, those circumstances are consistent with the consensus in common law countries and also at OHIM (the European Union Trade Marks and Designs Registry) that “bad faith” connotes not just dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” (per Mr. Justice Arnold in Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and Others [2008] EWHC 3032 (Ch) (December 9, 2008) [2008] EWHC 3032 (Ch), [2009] Bus LR D81, [2009] RPC 9. To presume dishonesty or even “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” from some sort of “constructive awareness” (whatever that may mean) is going too far in this Panel's opinion.”
Since the registrar Moniker is not a party to this dispute it is unnecessary to consider whether that company has been involved in “a repetitive pattern of cyber-squatting” but the Panel wishes to make clear beyond peradventure that she has seen no evidence of impropriety on the part of that company in this case. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Jane Lambert
Sole Panelist
Dated: December 15, 2009
Full & Egal Universal Law Academy