The Complainant is PIERRE BALMAIN S.A. of Paris, France, represented by Gide Loyrette Nouel, the People’s Republic of China.
The Respondent is Oscar Lee of Haerbin, Heilongjiang Province, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 10, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On December 13, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 20, 2010. On December 16, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 20, 2010, the Complainant confirmed its request that English be the language of proceeding and filed a Chinese translation of the Complaint. The Respondent did not comment on the language of proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on January 21, 2011. 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.
The registration agreement is in Chinese. The Complainant originally filed the Complaint in English. When it was advised the language of the registration agreement was in Chinese it filed a translation of the Complaint in Chinese.
The Complainant also filed the following submission that the language of proceedings be in English:
“Furthermore, taking into account of the facts below, for communication and cost efficiency as well as for fairness, the Complainant requests English be the language of proceedings if the Respondent does not raise objection to the Complainant’s request regarding the proceeding language:
i) the Complainant is a company registered and located in France where Chinese is not the mother language;
ii) the Respondent is using English as the language for all the contents displayed at the web site pointed by the Disputed Domain Name in this matter - indicating that the Respondent has a very good understanding of English…”
The Respondent has not raised any objection. Given that the Complainant has filed a copy of the Complaint in Chinese, the Respondent has not responded and that the Complainant has requested the language of proceedings be in English, the Panel determines that the language of proceedings will be English and Chinese but given the Complainant’s request it will issue its decision in English. If filed in time, the Panel would have accepted a response from the Respondent in Chinese. 4. Factual Background
The Complainant is a French company which activity is dedicated to fashion and garments. It was created by Mr. Pierre Balmain in 1945, and it focuses today on ready-to-wear collections. The Complainant states the brand “Pierre Balmain” represents a certain idea of elegance and a clientele of queens, princesses and starlets, but as a label it is also very firmly established in the everyday world.
The Complainant registered the domain name on 17 March 1997, and has established a website “www.” from which an online boutique is available.
The Complainant firstly registered on 2 April 1955 the trademark PIERRE BALMAIN (International Registration No. 183835) in 12 countries in the world for International Class 25 and mainly covering “garments” and “shoes”. The Complainant has subsequently registered a serial of trademarks consisting of the word “balmain” and other elements in various countries and classes. All such trademarks have been duly renewed and currently remain valid. The Complaint is based on the trademark BALMAIN (International Registration No. 451759) registered on 25 April 1980. The Complainant also registered and has exclusive right to a trademark BALMAIN (International Registration No.758712) which was registered on 10 April 2001 in 16 classes including Class 25 for specific goods covering “clothing, footwear, headgear”. In particular, trademark No. 758712 covers China where the Respondent is located.
The Disputed Domain Name was registered, without the Complainant’s authorization, on 23 August 2010. The Complainant notes this is over 65 years later than the creation (in 1945) of the brand “Pierre Balmain”, 55 years followed the registration of the Complainant’s trademark PIERRE BALMAIN (No. 183835), 30 years after the registration of BALMAIN (the “Mark”) (No. 451759, registered in 1980), 13 years subsequent to the registration (in 1997) of the domain name by the Complainant, and 9 years after the registration date of BALMAIN (No. 758712) in China. 5. Parties’ Contentions A. Complainant
The Complainant made the following arguments: Identical or Confusingly Similar
The keyword of the Disputed Domain Name consists of two words - “balmain” and “outlet”. The word “balmain” is identical to the Mark; while “outlet” is a non-distinctive term commonly used in commercial circumstances referring a place of business for retailing goods.
Given that the word “balmain” has been previously registered worldwide including China, and used by the Complainant for a long period since 1946 as trademark and keyword for its domain name and enjoyed publicity, the Disputed Domain Name will much likely mislead a reasonable internet user to believe that the Disputed Domain Name is linked to the Mark and/or the Complainant, or mistake that the website (the “Disputed Website”) pointed by the Disputed Domain Name is owned or managed by the Complainant and/or the products offered at the online boutique available on the Disputed Website is genuine BALMAIN-branded products. No Right or Legitimate Interests
The Complainant has never licensed or authorized the Respondent in any manner to use the Complainant’s Mark in any way, shape or form, much less as part of a domain name. The Complainant believes that the Respondent has never been commonly known by the name “balmain”, and therefore should have no right or legitimate interests in respect of the Disputed Domain Name.
According to various precedents available at WIPO, as it is difficult for the Complainant to prove an adverse fact, the burden to indicate the right or legitimate interests in respect of the Disputed Domain Name shall be shifted to the Respondent. Registered and Used in Bad Faith
The Complainant has many trademarks incorporating BALMAIN as set out above.
The Respondent registered the Disputed Domain Name without authorization from the Complainant, which has prevented the Complainant - the owner of the Mark BALMAIN from reflecting the Mark in a corresponding domain name. Furthermore, at “www.”, the Respondent is trading clothing and footwear competing with the Complainant. Through registration and use of the Disputed Domain Name, and by misdirecting the Internet users, the Respondent distracts and delays the Internet users from their pursuit of the goods being offered by the Complainant, which brings negative impact to the Complainant’s Mark and disrupts its business.
In addition, the Complainant alleges the Respondent is copying the Complainant’s designs and displaying them on the Disputed Website without the Complainant’s license or authorization. The Complainant alleges that some pictures displayed on the Disputed Website reproduce those designed and created by the Complainant, which have also infringed the Complainant’s copyright to such fashion designs. The Complainant there alleges it is of no doubt that the Disputed Domain Name was registered and being used in bad faith, which has infringed the trademark right and copyright of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the BALMAIN worldwide including China. The Respondent has registered the disputed domain name , which merely adds the generic word “outlet” to the Complainant’s mark.
The Panel is satisfied from the evidence filed that the BALMAIN mark is distinctive of the Complainant’s business. The addition of the word “outlet” does not in anyway detract from the similarity to the BALMAIN mark. Rather in the Panel’s view the word clearly indicates that the website under the disputed domain name is designed to be a place to buy Balmain products.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark BALMAIN.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent registered the disputed domain name in 2010, approximately 55 years after the Complainant obtained its first registration of the PIERRE BALMAIN trademark in 12 different countries, and 9 years after the Complainant obtain its first BALMAIN trademark registration in China. The Respondent is not known by the disputed domain name and has never been authorized by the Complainant to use the registered marks.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the disputed domain name.
The Panel is satisfied from the evidence filed that the use made by the Respondent of the domain name is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondent under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The evidence filed by the Complainant clearly demonstrates that at the time of the Respondent’s registration of the disputed domain name in 2010, the Complainant had already established a global reputation in the BALMAIN marks including in China. The subsequent use made by the Respondent of the disputed domain name to sell Balmain branded clothes on the Disputed Website is also clear evidence of use in bad faith.
(The Panel, however, expressly declines to make any finding that there as been any copyright infringement by the Respondent in copying the Complainant’s website. No evidence of subsistence and ownership of copyright was filed by the Complainant, making it inappropriate to make such a finding).
The Panel accordingly has no hesitation in finding that the disputed domain name was registered in and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) 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 domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: January 23, 2011
Full & Egal Universal Law Academy