The Complainant is Pierre Balmain S.A. of Paris, France, represented by Gide Loyrette Nouel, the People’s Republic of China.
The Respondent is Wang Xin of xi an, shanxi, the People’s Republic of China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2011. On April 29, 2011, the Center transmitted by email to GoD, Inc., a request for registrar verification in connection with the Disputed Domain Name. On May 2, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 May 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2011.
The Center appointed Lana I Habash as the sole panelist in this matter on June 22, 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. 4. Factual Background
The Complainant is a French company in the fashion industry. The company was created by Mr. Pierre Balmain in 1945, and focuses today on ready-to-wear collections. The Complainant registered the domain name on March 17, 1997, and offers an online boutique through the website “www.”.
The Complainant has a number of registrations for the trademark PIERRE BALMAIN, the oldest of which is the International Registration No. 183835 in 12 countries for International Class 25 mainly covering “garments” and “shoes”. The Complainant has subsequently registered a number of trademarks consisting of the word “Balmain” and other elements in various countries and classes including the trademark BALMAIN with International Registration No. 451759, which was registered on April 25, 1980. The Complainant also registered and has exclusive right to a trademark BALMAIN (International Registration No (758712)) which was registered on April 10, 2001 in 16 classes including Class 25 for specific goods covering “clothing, footwear, headgear”. In particular, International Registration No. 758712 covers China where the Respondent is located.
The Disputed Domain Name was registered on January 5, 2011. The Disputed Domain Name points to a website where clothing and footwear items are being offered for sale under the brand Balmain. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- The Disputed Domain Name is confusingly similar to the mark BALMAIN (“the Mark”); the keyword of the Disputed Domain Name consists of three words - “Balmain”, “jackets” and “sale”. The word “Balmain” is identical to the Mark; while “jackets” is the plural form of the word “jacket” meaning a short coat; while “sale” is a non-distinctive term commonly used in commercial circumstances referring the general activity of selling;
- Given that the word mark 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 “www.” (the “Disputed Website”) to which the Disputed Domain Name points is owned or managed by the Complainant and/or the products offered at the online boutique available on the Disputed Website are genuine “Balmain” branded products;
- The Disputed Domain Name was registered without any authorization from the Complainant, over 66 years later than the creation of the of the Complainant’s first trademark PIERRE BALMAIN and over tens of years from the subsequent registrations. The Complainant believes that the Respondents should have never been commonly known by the name “Balmain”, and should have no rights or legitimate interests in respect of the Disputed Domain Name;
- The Respondent must have been fully aware of the Mark BALMAIN and must have had a good understanding of the fashion business which the Complainant has been dealing with, and is using such Disputed Domain Name for selling clothing, which indicated the obvious bad faith of the Respondent;
- The Respondent by registering the Disputed Domain Name without the Complainant’s authorization, has prevented the Complainant from reflecting the Mark BALMAIN in a corresponding domain name;
- The Respondent by using the Disputed Domain Name for trading in clothing, which is the same business of the Complainant, is misdirecting the Internet users and distracting them from their pursuit of the goods being offered by the Complainant, which apparently brings negative impact to the Complainant’s Mark and disrupts its business;
- The Disputed Domain Name is being used for commercial gain, as it leads to the Disputed Website doing e-commerce business on fashion products including clothing and is obviously confusing to Internet users, who will in all likelihood associate the Disputed Domain Name and/or the Disputed Website with the Complainant or its Mark, or confuse them as to the source, sponsorship, affiliation, or endorsement of the Disputed Website or location or of a product on the Disputed Website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the Trademark BALMAIN. The Panel is also satisfied that the Complainant has established that BALMAIN is a widely known trademark worldwide including China.
The Disputed Domain Name contains the Complainant’s Trademark BALMAIN in its entirety, with the addition generic words “jackets” and “sale”. The word “jackets” as the Complainant points out describes a clothing item that is a short coat, and sale is to indicate that the jackets are offered at a discounted price, and as such in the Panel’s view adds to the confusing similarity, as Internet users may mistake the website for that of the Complainant’s (see PIERRE BALMAIN S.A. v. Oscar Lee,WIPO Case No. D2010-2138).
Paragraph 4(a)(i) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
Considering the facts of this case, the Panel is convinced that the Respondent does not enjoy any of the following circumstances; the Respondent registered the Disputed Domain Name in 2011, decades 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. Moreover, the Respondent is not known by the Disputed Domain Name and has never been authorized by the Complainant to use the registered marks. The Panel therefore finds that the Complainant has made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the Disputed Domain Name.
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1) The Respondent has not demonstrated or established any such right or legitimate interest.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademark BALMAIN, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the Trademark and subsequently its interest in the Disputed Domain Name.
For the purposes of paragraph 4(a)(iii) of the Policy, 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 Panel finds that the Respondent’s registration and use of the Disputed Domain Name is in bad faith; the use of the Disputed Domain Name by the Respondent to point to retain website offering clothing and footwear under the name “Balmain” is perceived by the Panel as an attempt to attract Internet users for commercial gain, by creating a likelihood of confusion, and as a result disrupt the legitimate business of the Complainant’s.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith, and as such paragraph 4(a)(iii) of the Policy is therefore satisfied. 7. Decision
For 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.
Lana I Habash
Sole Panelist
Date: July 1, 2011
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