WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Balenciaga v. PrivacyP / Level5 Corp. Case No. D2010-0038 1. The Parties
The Complainant is Balenciaga of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is PrivacyP / Level5 Corp. of Roseau Valley, the Commonwealth of Dominica. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2010. On January 11, 2010, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On January 22, 2010, Lead Networks Domains Pvt. Ltd. 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 January 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 12, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on February 22, 2010. 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 French company that has been registered since 1955 but has been in existence since 1918 through the work of the fashion house's founder, Cristobal Balenciaga. The Complainant's business consists of the design and sale of women's and men's ready-to-wear clothes, shoes and accessories which are sold around the world.
The Complainant holds a number of trademark registrations dating as far back as 1951 for the BALENCIAGA trademark for countries all around the world, including France, the United States, Japan, the United Arab Emirates and a number of other locations.
Furthermore, the Complainant also holds a significant number of domain names incorporating the BALENCIAGA trademark for a number of locations around the world, many of which predate the registration date of the disputed domain name.
The Respondent in this case is an entity holding the disputed domain name of which is registered with Lead Networks Domains Pvt. Ltd. According to a WhoIs database search, the disputed domain name was initially registered on May 8, 2005. 5. Parties' Contentions A. Complainant
In presenting its initial argument under paragraph 4(a) of the Policy claiming that the disputed domain name of is virtually identical to a trademark in which the Complainant has rights, the Complainant has presented significant evidence of trademarks and domain names which have been registered all around the world incorporating the BALENCIAGA trademark. The Complainant has indicated that many of the registered trademarks and domain names incorporating the BALENCIAGA trademark have been registered well before the disputed domain name was registered by the Respondent in May of 2005.
With respect to the disputed domain name, the Complainant contends that with the exception of the “.com” ending, the domain name of differs from the BALENCIAGA trademark by only one letter. The Complainant argues that although almost identical, the disputed domain name is still confusingly similar to a trademark in which the Complainant has rights.
The Complainant alleges that this letter substitution would qualify as “typosquatting,” which is a type of Internet cybersquatting. In this case, the user typically registers a domain name that is similar to a well-known brand or domain name in hopes that a number of Internet users will mistakenly input the domain name and be redirected to the user's domain name. The Complainant then argues that domain names that are frequently mistyped can capitalize off the high volume of traffic by selling advertising space.
Accordingly, based on the fact that BALENCIAGA is a well-known trademark and is used around the world, the Complainant avers that even the “typosquatted” domain name would not be considered sufficiently distinct from the Complainant's trademark.
In arguing the second element under paragraph 4(a) of the Policy, the Complainant notes that it is highly unlikely that the Respondent has any trademark rights to either BALENCIAGA or even BELENCIAGA.
Furthermore, in evidencing its rights to the BALENCIAGA trademark, the Complainant has provided trademark registrations from the United States, Canada, Benelux, the United Kingdom of Great Britain and Northern Ireland, Japan and a number of other locations. The Complainant then argues that as the owner of the BALENCIAGA trademark, it has never granted a license or right to the Respondent to use the BALENCIAGA trademark or register a domain name incorporating the BALENCIAGA trademark.
In further evidencing that the Respondent has no rights or legitimate interest to the disputed domain name, the Complainant argues that the Respondent has made no attempt to use or any preparations to use the domain name and has not evidenced that any goods or services are being offered in connection with . The Complainant avers that the disputed domain name simply resolves to pay-per-click commercial links, some of which resolve to websites of the Complainant's competitors. Therefore the Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name and is additionally not making a legitimate noncommercial or fair use of the domain name without the intent for commercial gain.
In establishing the third element that the disputed domain name was registered and is being used in bad faith, the Complainant goes into a detailed background of the beginning of its business dating back to 1918 and the work of its founder, Cristobal Balenciaga. The Complainant then evidences that the BALENCIAGA trademark has gained significant goodwill and notoriety across the world. Two examples provided by the Complainant are the brand's appreciation by celebrities around the world as well as the inclusion of the term “Balenciaga” into a French dictionary.
The Complainant then argues that the Respondent's virtual incorporation of the BALENCIAGA trademark into the disputed domain name was made with full knowledge of the Complainant and the BALENCIAGA trademark. The Complainant argues that the term “Balenciaga” is an original term, with no particular meaning that is linked with the fashion industry. The term “Balenciaga” is regularly quoted in many different channels of the media and is primarily linked to the Complainant and its business.
The distinctiveness of the Complainant's trademark in this respect is then compared to the disputed domain name of . The Complainant argues that the registration of could not have resulted from chance or coincidence and was only motivated by the Respondent's desire to create an illegitimate association with the Complainant and to divert Internet traffic.
The Complainant notes that the above factors combined with the notoriety of the BALENCIAGA trademark and its association with the Complainant and its business sufficiently evidences the Respondent's bad faith. In evidencing the bad faith use by the Respondent, the Complainant notes that the disputed domain name resolves to a landing page consisting entirely of commercial links or pay-per-click advertising. These links embody websites relating to fashion and in some cases include websites of the Complainant's competitors. Accordingly the Complainant argues that this use is not a bona fide use and that the Respondent has tried to divert Internet users to the disputed domain name for commercial gain. The Complainant goes on to indicate that this use creates a serious likelihood of confusion and also impacts the business of the Complainant. Accordingly the Respondent's registration and use of is in bad faith.
The Complainant goes on to close its case by indicating that the Respondent has already been involved in previous UDRP decisions and that based on its research, the Respondent could be in the practice of registering domain names that are similar to well-known trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with the Rules, a panel is required to render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)).
Additionally, in each case a complainant must establish each element of paragraph 4(a) of the Policy, which are as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. A. Identical or Confusingly Similar
In accordance with its obligations under paragraph 4(a)(i) of the Policy, the Complainant must first evidence that the disputed domain name of is identical or confusingly similar to a trademark in which the Complainant has rights.
As evidenced by Annexes 3A-3H to the Complaint, the Complainant has produced significant evidence of the registration of the BALENCIAGA trademark in France, the United States, Japan, China, the United Arab Emirates and elsewhere around the world. In many cases, the registration dates for the various BALENCIAGA trademarks go back over thirty years, with one even dating back to 1951. The Complainant has also evidenced through Annexes 4A through 4O to the Complaint that it holds a number of registered domain names incorporating the BALENCIAGA trademark, many of which predate the Respondent's registration of which was registered in May of 2005. A few examples of the Complainant's registered domain names include , , , and .
The Panel finds that the Complainant has presented significant evidence of its rights to the BALENCIAGA trademark. The Complainant has alleged in this case that the disputed domain name of is almost identical to the BALENCIAGA trademark of the Complainant.
The Panel agrees with the Complainant's contention that the “.com” ending of the disputed domain name is not relevant for the purposes of determining if the disputed domain name is identical or confusingly similar to the BALENCIAGA trademark and is an irrelevant distinction that does not alter the likelihood of confusion. VAT Holding AG v. V, WIPO Case No. D2000-0607; Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709.
The issue here is whether the fact that the disputed domain name of incorporates a different spelling than that of the BALENCIAGA trademark makes the domain name identical or confusingly similar to the BALENCIAGA trademark. Here as the Complainant argues, many panels in the past have found that “typosquatting”, the intentional misspelling of a trademark in which another party has rights, can result in a domain name being considered confusingly similar to a trademark in which the complainant has rights. See Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937. The Panel finds support from one previous panel decision where the panel considered the context in which the domain name was being used as well as the similarity between the domain name and the complainant's trademark. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
In the present case, the Complainant has evidenced the numerous registrations of the BALENCIAGA trademark around the world and the long history and goodwill associated with the trademark. The Complainant has also evidenced that the trademark is not a generic or common term, but is actually the surname of the Complainant's original founder Cristobal Balenciaga.
The Panel considered the remark made by the Complainant that the term “Balenciaga” has entered a French dictionary. In this regard, the Panel conducted some research in order to determine whether the inclusion of the term “Balenciaga” in a French dictionary could mean that the term has become generic. The Panel concluded that this is not the case. The term is being included in a section of a “dictionary” that provides definitions of people and other factual terms of reference, as opposed to a language dictionary per se.
Based on the above, the Panel finds credibility in the Complainant's contention that the Respondent is a “typosquatter” since the disputed domain name incorporates the majority of this unique trademark. As a result, despite the replacement of the “a” with an “e”, the Panel is of the opinion that the disputed domain name is confusingly similar to the BALENCIAGA trademark which the Complainant has rights to. The Complainant has therefore met the first element of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once that case has been made the burden shifts to the Respondent who must demonstrate that it has rights or a legitimate interest in the domain name. Belupo d.d. v. WACHEM d.o.o,WIPO Case No. D2004-0110.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that the Respondent may use to demonstrate that it possesses rights or legitimate interests in a domain name. The Panel does not need to get into an exhaustive determination of whether the Complainant has rights to the BALENCIAGA trademark as the Complainant has presented significant evidence in the Annexes to the Complaint of numerous trademark registrations from all over the world going back as far as 1951. In addition, the Complainant has also produced evidence of a number of domain name registrations incorporating the BALENCIAGA trademark.
The Respondent on the other hand has not presented any evidence that the Complainant or any other party gave it a right to utilize the BALENCIAGA trademark whether in the form of a license or otherwise. The Complainant has indicated that it has not provided the Respondent with any such license or authority to use the BALENCIAGA trademark either. As far as both the “Balenciaga” and “Belenciaga” terms, the Respondent has not presented any evidence that they were commonly known or associated with either of these terms.
While it is clear that the Respondent did not have the Complainant's authority to use the BALENCIAGA trademark or that it was commonly known by that trademark, these facts alone are not conclusive as to whether the use was legitimate. Amscot Corporation v. Fibertech Columns, Inc., WIPO Case No. D2005-0656. A panel can also assess whether the use was in connection with a bona fide offering of goods or services as well as if the respondent is making a legitimate, noncommercial or fair use of the domain name without the intent for commercial gain or to tarnish the trademark at issue.
With particular respect to landing pages, if the links are based on the generic value of the domain name and do not implicate any trademark rights, such a use can be considered bona fide. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. If however the links were targeted to the trademark name and the services offered by the Complainant, such use would not constitute a fair or legitimate use. See Microsoft Corporation v. M aka Tarek Ahmed,WIPO Case No. D2000-0548.
In this case, as the Panel noted above, reverts to a landing page which primarily consists of pay-per-click advertising links. Most of the links relate to fashion and fashion accessories that the Complainant sells in its business, some of which even advertise the goods of the Complainant's competitors. In this case, advertising the links of a competitor of the trademark holder is not a bona fide, legitimate or fair use of the disputed domain name. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Here no argument can be made that the Respondent was only attempting to capitalize off the generic value of the trademark, as the BALENCIAGA trademark is not only well-known, but unique.
In this case it is clear that there is intent to utilize the disputed domain name for commercial gain due to the pay-per-click links. While previous cases have held that the use of pay-per-click links at a domain name can in certain circumstance constitute a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy (Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED., WIPO Case No. D2008-1675) the circumstances of each case must be evaluated by the panel.
Here there is no bona fide offering of goods or services or legitimate use of the domain name. In this case the pay-per-click links on the website at the disputed domain name advertised goods associated with the business of the Complainant as well as the Complainant's competitors. Such a use would not constitute a fair use. Here the disputed domain name of was clearly targeted towards the goodwill of the Complainant's trademark and sought to misleadingly divert Internet users to the disputed domain name.
Accordingly, based on the factors above, the Panel finds on a balance of the probabilities, that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The final element that the Complainant must evidence under the Policy is that the disputed domain name of was registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration, however this list is not exhaustive.
Throughout its Complaint, the Complainant has heavily emphasized the history behind its business, its initial founding in 1918 and the BALENCIAGA trademark. The Complainant also details the progression of the business from a local haute couture house in Spain to a widely known and recognized fashion business. Over the years a number of trademark registrations incorporating the BALENCIAGA trademark were made around the world. Additionally, a number of domain name registrations were also made in the same respect.
The Panel considers this history and notoriety of the Complainant's trademarks to be important in assessing whether the domain name was registered in bad faith. Many, if not the majority of the trademark registrations and the domain name registrations incorporating the BALENCIAGA trademark, predate the Respondent's May 8, 2005 registration of the disputed domain name. The Panel has found that based on the extent of the evidence provided, that the Complainant and its business has achieved a certain reputation and goodwill around the world through the use of the BALENCIAGA trademark in its business.
The Panel does not find that the term “Balenciaga” is a generic word. In actuality it is a distinct term as it is the surname of the founder of the Complainant's business, Cristobal Balenciaga. In light of the extent and duration of the Complainant's business the Panel finds that the term “Balenciaga” is a widely-known and recognized term that has achieved a certain degree of recognition around the world.
At this point the Panel would like to note that as past decisions have emphasized, a panel is permitted to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In this case the Respondent's domain name is confusingly similar to a trademark in which the Complainant has rights. Additionally, the landing page of resolves to a number of pay-per-click links that are primarily related to fashion and fashion accessories which is the primary business of the Complainant.
The Panel also finds some support in the Complainant's contention that the Respondent had constructive notice of the Complainant's rights to the BALENCIAGA trademark as other panels have considered in the past. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Sterling Jewelers Inc. v. Sterling Jewelers, Inc. and Domain Traffic,WIPO Case No. D2002-0772. In light of the long history and world-wide extent of the Complainant's business combined with the similarity of the products being offered on , the Panel can conclude based on a preponderance of the evidence that the disputed domain name was registered in bad faith.
As far as bad faith use, the Panel finds support in the Complainant's contention that the Respondent sought to utilize the disputed domain name to attract Internet users for commercial gain. Under paragraph 4(b)(iv) of the Policy, a party can be found to be using a domain name in bad faith if they have intentionally tried to attract Internet users for commercial gain to the website by creating a likelihood of confusion with the Complainant's mark.
In this case, the Panel has already acknowledged the reputation and notoriety associated with the BALENCIAGA trademark. The Panel has also concluded above that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. In this case due to the similarity between the disputed domain name and the Complainant's trademark as well as the similar product offerings, the Panel finds that the disputed domain name is being used in bad faith. Here there is sufficient evidence for the Panel to conclude that the Respondent has tried to create a likelihood of confusion by registering a domain name that was confusingly similar to a trademark in which the Complainant had rights. Through the use of the pay-per-click links, the Respondent specifically targeted and sought to capitalize off the Complainant's trademark by attempting to attract Internet users to its domain name for commercial gain. The bad faith use is further emphasized by the fact that in some cases the links resolve to competitors of the Complainant's business.
In light of the evidence already put before it, the Panel does not find it necessary to evaluate the Complainant's contention that the Respondent has engaged in a pattern of cybersquatting despite the fact that this claim may be persuasive.
Based on the preponderance of the evidence put forward by the Complainant, the Panel finds that the Respondent had registered and is using the disputed domain name of in bad faith. Accordingly, the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: March 8, 2010
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