The Complainant is Balenciaga of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is xiong xuelin aka xuelin xiong of Guangzhou, Guangdong Province, the People’s Republic of China. 2. The Domain Names and Registrars
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. The disputed domain names and are registered with 35 Technology Co., Ltd. The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2010. On October 29, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd., 35 Technology Co., Ltd. and B, Inc. a request for registrar verification in connection with the disputed domain names. On November 1, 2, and 11, 2010, HiChina Zhicheng Technology Ltd., 35 Technology Co., Ltd. and B, Inc. transmitted by emails respectively to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On November 11, 2010, the Center transmitted a communication by email to the parties in both Chinese and English regarding the language of the proceeding. On November 12, 2010, the Complainant confirmed its request that English be the language of the proceeding as initially submitted in the Complaint. The Respondent did not comment on the language of the proceeding. The Center sent an email communication to the Complainant on November 11, 2010 regarding the Registrar information. The Complainant filed an amendment to the Complaint on November 12, 2010.
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 November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 13, 2010. The Panel finds that it was properly constituted. The Panel 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, Balenciaga is a French company which business consists of design and sale of high-end clothes, shoes and accessories, which are sold worldwide.
The Complainant initiated its work in 1918 through the work of the fashion house's founder, designer Cristobal Balenciaga and was registered on May 9, 1955. Since its establishment, the Complainant has been using the BALENCIAGA mark in connection with its goods.
The Complainant is the owner of multiple trademark registrations for the mark BALENCIAGA around the world. For example: United States trademark registration No. 3344631 – BALENCIAGA, with the registration date of November 27, 2007; United States trademark registration No. 1018311 – BALENCIAGA, with the registration date of August 12, 1975; French trademark registration No. 1218946 – BALENCIAGA, with the registration date of December 5, 1972; International trademark registration No. 397506 – BALENCIAGA, with the registration date of April 13, 1973 designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, Italy, Morocco, and others; Chinese trademark registration No. 583204 – BALENCIAGA, with the registration date of February 20, 1992; European Community trademark registration No. 008360802 – BALENCIAGA, with the registration date of December 24, 2009, and many more.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the mark BALENCIAGA. For example: , , , , , , and .
The disputed domain names were registered on the following dates:
was registered on March 16, 2010;
was registered on March 16, 2010;
was registered on March 15, 2010;
was registered on March 15, 2010;
was registered on September 16, 2009.
Currently, all the disputed domain names resolve to an error page, which displays the following announcement: “Internet Explorer cannot display the webpage”.
Until recently, the disputed domain names , and led Internet users to websites that offered for sale, among others, replicas of Balenciaga handbags, while using Complainant's BALENCIAGA mark.
The disputed domain name used to resolve to a "pay per click" webpage. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the BALENCIAGA trademark that is owned by the Complainant, as they incorporate the trademark as a whole. The Complainant further argues that the additional elements and terms in the disputed domain names are insufficient to avoid confusing similarity between the BALENCIAGA trademark and the disputed domain names, as follows:
1) The additional element "us" is not sufficient to distinguish the disputed domain name from its BALENCIAGA trademark, since it might indicate a country, the United States, as a place of business.
2) The additional generic term "home" placed after the term "balenciaga" is not sufficient to distinguish the disputed domain name from its BALENCIAGA trademark since many trademark owners use the word "home" to designate their corporate website.
3) The additional term "tw1" is insignificant and does not distinguish the disputed domain name , from its BALENCIAGA trademark, as it relates, either to a country code, or to an Austrian TV channel that has no connection to the Respondent.
4) The adjunction of the number "1314" after the term "balenciaga" does not weaken the similarity between the BALENCIAGA trademark and the disputed domain name .
5) The common term "shop" does not distinguish the disputed domain name , from its BALENCIAGA trademark, since the term is common for the Complainant's activity whose products are sold in shops.
The Complainant further argues that the Respondent’s use of the Complainant’s trademark in the disputed domain names is not a legitimate use.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that it has established tremendous goodwill in the BALENCIAGA mark and that the BALENCIAGA mark has become well-known for high quality fashion.
The Complainant further argues that the Respondent registered the disputed domain names in an attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s marks.
The Complainant further argues that the Respondent was fully aware of the BALENCIAGA marks upon registering the disputed domain names and thus acted in bad faith in registering and using the disputed domain names. The Complainant argues that the Respondent is the registrant of at least 578 domain names, mostly containing well-known trademarks, all related to luxury products.
The Complainant further argues that the Respondent was using the disputed domain names , and to sell goods that are replicas of the Balenciaga handbags while misleading consumers and obtain commercial gain.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreements for the disputed domain names is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain names consist of Latin words, letters and numbers, and do not consist of any Chinese letters or words.
b) The disputed domain names and used to resolve to webpages that offered for sale, among others, the Complainant's handbags, while using the English language.
c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark BALENCIAGA around the world. For example: United States trademark registration No. 3344631 – BALENCIAGA, with the registration date of November 27, 2007; United States trademark registration No. 1018311 – BALENCIAGA, with the registration date of August 12, 1975; French trademark registration No. 1218946 – BALENCIAGA, with the registration date of December 5, 1972; International trademark registration No. R397506 – BALENCIAGA, with the registration date of April 13, 1973 designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, Italy, Morocco, and others; Chinese trademark registration No. 583204 – BALENCIAGA, with the registration date of February 20, 1992; European Community trademark registration No. 008360802 – BALENCIAGA, with the registration date of December 24, 2009, and many more.
The disputed domain name differs from the registered BALENCIAGA trademark by the additional word "us", the hyphen which separates them and by the additional gTLD ".com".
The disputed domain name differs from the registered BALENCIAGA trademark by the additional term "tw1", the hyphen which separates them and by the additional gTLD ".com".
The disputed domain name differs from the registered BALENCIAGA trademark by the additional word "home" and by the additional gTLD ".com".
The disputed domain name differs from the registered BALENCIAGA trademark by the additional number "1314" and by the additional gTLD ".com".
The disputed domain name differs from the registered BALENCIAGA trademark by the additional word "shop", the hyphen which separates them and by the additional gTLD ".com".
The above mentioned domain names integrate the Complainant's trademark BALENCIAGA in its entirety, as a dominant element, with the additional hyphens and the non dominant elements "shop", "home", "us", "tw1" and "1314" that do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s BALENCIAGA trademark.
Previous WIPO panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, "the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark" (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
"The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark" (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of a generic top-level domain (gTLD) “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain names and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain names.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its BALENCIAGA trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns different registrations for the BALENCIAGA trademark at least since the year 1972. Furthermore, the Complainant owns trademark registration for its BALENCIAGA trademark in China, at least since the year 1992. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. Another indication of the Complainant's enormous goodwill in its trademarks is demonstrated in previous UDRP decisions. The Panel cites the following with approval: "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." (Balenciaga v. PrivateP / Level5 Corp.,WIPO Case No. D2010-0038). The vast goodwill and distinctness of the Complainant's BALENCIAGA trademark results with the conclusion that it is highly unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain names.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name is resolved to.
The disputed domain names , and used to lead Internet users to websites that engaged in the marketing of replica Balenciaga handbag. The Respondent’s use of the term “balenciaga” to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making in its BALENCIAGA trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith".
From the evidence provided by the Complainant, it is apparent that the disputed domain name used to resolve to a to a "pay per click" webpage. Although operating a "pay per click" webpage does not constitute bad faith by itself, it was held by previous UDRP panels that it does constitute bad faith when the domain name was chosen due to its similarity of another's mark (see Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715).
All of the disputed domain names currently resolve to parking webpages displaying error announcements. However, the fact that the Respondent does not use the disputed domain names does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Furthermore, the disputed domain names are confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant’s trademark in the disputed domain names and the similarity between the disputed domain names and the Complainant’s mark, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that 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 names , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: December 27, 2010
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