The Complainant is Balenciaga of Paris, France represented by IP Twins S.A.S. of France.
The Respondent is liu zhixian, zhixian liu of Fujian, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with N LLC. 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 N LLC. a request for registrar verification in connection with the Domain Name. On November 1, 2010, N 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 November 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2010.
The Center appointed Ian Lowe as the sole panelist in this matter on November 30, 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, Balenciaga, is a French company registered in 1955. Its business was founded by couturier Cristobal Balenciaga in San Sebastian, Spain in 1918. The House of Balenciaga creates women’s and men’s ready-to-wear, shoes and accessories. The Complainant is the proprietor of numerous trademark registrations in respect of the word mark BALENCIAGA around the world dating in particular from the 1970s and 1980s. It owns numerous domain names comprising “balenciaga”.
The Domain Name was registered on November 27, 2009. At the date of the Complaint it resolved to a website offering for sale what purport to be Balenciaga bags. 5. Parties’ Contentions A. Complainant
A summary of the submissions by the Complainant is as follows:
The Complainant and its predecessors have carried on business in France since 1937. It is the proprietor of numerous registered trademarks in respect of the mark BALENCIAGA in classes 18 and 25 (and others) in France, the United States, Japan, China and the United Arab Emirates, and of international registrations designating a number of countries in Europe and Vietnam. These include France registration number 1218946 registered on December 5, 1972, United States registration number 1018311 registered on August 12, 1975 and China registration number 598321 registered on June 10, 1992.
Ignoring the “.com” suffix, the Domain Name comprises the word BALENCIAGA together only with the generic term “bags”. Accordingly, as many previous UDRP panelists have found, the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Respondent does not have any rights or legitimate interests in respect of the Domain Name. According to trade mark searches in a number of major trade mark offices, the Complainant is the only proprietor of registered trademarks in respect of BALENCIAGA. The Respondent is in no way affiliated with the Complainant and has no consent from the Complainant to register the Domain Name. The Respondent has not put forth any legitimate reason why he has registered the Domain Name.
BALENCIAGA is not a common noun or word. It is a family name but it has become a very famous trademark referable only to the Complainant’s products. The registration of the Domain Name could not result from coincidence and was motivated by the will to create an illegitimate association with the Complainant and misleadingly to divert customers.
The Domain Name redirects to a commercial website which offers bags for sale that are presented as Balenciaga bags. Since the Respondent has no right to the Complainant’s trademark and is not authorized to use the mark BALENCIAGA, there is a strong presumption that the bags are counterfeit. The Respondent has therefore intentionally attempted to attract (for commercial gain) Internet users to his website by creating a likelihood of confusion with the Complainant’s mark to induce members of the public to visit the website and purchase on this website.
The Respondent has been involved in an earlier UDRP decision (Missoni S.p.A. v. Liu Zhixian,WIPO Case No. D2010-0371 ), a United States District Court case involving Chanel domain names and has registered numerous domain names related to well known trademarks including
; ; and . He is therefore used to cyber squatting and counterfeit activities. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has adduced uncontroverted evidence of numerous registrations in respect of the trademark BALENCIAGA. The Domain Name comprises the BALENCIAGA mark together only with the additional generic element ”bags”. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Complaint does not deal directly with the question whether the Respondent is an authorized reseller of the Complainant’s products but states that it has not authorized the Respondent to use its famous trademark. It also suggests that the Respondent is selling counterfeit products from his website but does not give any detail as to its grounds for that assertion. The Complainant only exhibits one screenshot of the Respondent’s website and does not give any detailed justification for its allegation that the bags offered by the Respondent are counterfeit. It appears that the website only offers what it claims are Balenciaga bags and no others but there is only limited evidence of what is on the site.
The Complainant’s evidence on this element is not therefore impressive. The Respondent has not, however, replied to the Complainant’s contentions. He has not displaced the assertion on the part of the Complainant that the Respondent has no rights or legitimate interests in the Domain Name or established, for example, that he was an authorized reseller of the Complainant’s products, that he was only selling the Complainant’s goods from the website and that his relationship with the Complainant was made clear. In short, the Respondent has done nothing to establish the criteria set out in Oki Data Americas, Inc. v. ASD, Inc. ,WIPO Case No. D2001-0903, referred to in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, that might have justified his use of the Complainant’s mark in the Domain Name.
Accordingly, the Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent must have had the Complainant’s notorious trademark in mind when he registered the Domain Name, as evidenced in particular by the use to which the Domain Name has been put. In view of the Panel’s finding that the Respondent has no rights or legitimate interests in the Domain Name, it follows that the Domain Name was registered in bad faith.
In the absence of any legitimate interests, the Respondent’s use of the website for the purpose of offering for sale what purport to be the Complainant’s products is such that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site and of products on the web site.
In the circumstances, the Panel finds that the Respondent has registered and used the Domain Name in bad faith. 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.
Ian Lowe
Sole Panelist
Date: December 14, 2010
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