The Complainant is Pierre Balmain S.A. of Paris, France, represented by Gide Loyrette Nouel, China.
The Respondent is Huang Lin of Tongan, Fujian, 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 August 15, 2011. On August 15, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On August 16, 2011, 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. On August 17, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 19, 2011, the Complainant submitted the translated Complaint into Chinese. However, in the same email, the Complainant also requested English be the language of the proceeding if the Respondent did not raise objection to its request. The Respondent did not comment on the language of the proceeding by the specified due date. On August 19, 2011, the Complainant submitted the revised Complaint in English regarding the email address of the Respondent.
The Center verified that the Complaint together with the revised Complaint in English and the translated Complaint in Chinese 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 August 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2011.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 23, 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 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.
On April 2, 1955, the Complainant first registered the trademark PIERRE BALMAIN (International Registration No. 183835) in 12 countries in the world for International Class 25 mainly covering “garments” and “shoes”. Subsequently, the Complainant has registered a series 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. On April 10, 2011, the Complainant also registered the trademark BALMAIN (International Registration No. 758712) in 16 classes including International Class 25 for specific goods covering “clothing, footwear, headgear”, which are the products sold on the website to which the disputed domain name points. In particular, this No. 758712 trademark covers the designation of China where the Respondent is located.
On March 17, 1997, the Complainant registered the domain name and established a website “www.” from which an online boutique is available.
The disputed domain name was registered on March 31, 2011. The disputed domain name points to a website “www.” which sells clothing, footwear and headgear, products that compete with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights on the following grounds:
1. The Complainant is the registered owner of the PIERRE BALMAIN and BALMAIN trademarks in many countries all over the world, from as early as 1955. Through continuous use since 1946, the trademarks BALMAIN and PIERRE BALMAIN as well as the products on which such trademarks are used have enjoyed high reputation worldwide among relevant users in fashion industry. Thus, the Complainant contends that it has rights to the PIERRE BALMAIN and BALMAIN trademarks. Specifically, the Complainant is relying on its rights in the BALMAIN mark which is also registered in China.
2. The keyword of the disputed domain name consists of the word - “balmain”, which is identical to the BALMAIN mark. Given that the word “balmain” has been previously registered worldwide including China, and used by the Complainant for a long period as trademark and keyword for its domain name , the Complainant contends that the disputed domain name is likely to mislead a reasonable Internet user to believe that the disputed domain name is linked to the BALMAIN mark and/or the Complainant, or mistake that the website “www.” pointed by the disputed domain name (the “Website”) is owned or managed by the Complainant and/or the products offered at the online boutique available on the Website are genuine Balmain-branded products.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
1. The Complainant has never licensed or authorized the Respondent in any manner to use the Complainant’s BALMAIN mark in any way, shape or form, much less as part of a domain name.
2. The Complainant believes that the Respondent has never been commonly known by the name “balmain”, and has no rights or legitimate interests in respect of the disputed domain name.
3. According to various previous UDRP decisions, as it is difficult for the Complainant to prove an adverse fact, the burden to indicate the rights or legitimate interests in respect of the disputed domain name shall be shifted to the Respondent, but the Respondent has failed to discharge the burden of production that it has rights or legitimate interests.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
1. The disputed domain name was registered many years following the creation of the Complainant’s brand name “Pierre Balmain”, the registration of the Complainant’s famous BALMAIN mark and also the registration of the Complainant’s domain name . Furthermore, the Complainant’s BALMAIN mark was also registered in China in respect of garments, footwear and headgear products. Therefore it is a reasonable assumption on the part of the Complainant that the Respondent is fully aware of the BALMAIN mark and has a good understanding of the fashion business which the Complainant’s core business is in. Despite such knowledge, the Respondent still registered and uses the disputed domain name containing the keyword “balmain” and is using the Website for selling clothing. Such actions indicate bad faith on the part of the Respondent.
2. According to the screen capture of the Website, the Respondent is trading clothing - the same business competitive with the Complainant, through the Website and on the fame of the BALMAIN mark in which the Complainant has rights. Through registration and use of the disputed domain name, and by misdirecting Internet users to its website, the Complainant contends that the Respondent has registered and is using the disputed domain name primarily for the purpose of disrupting the business of the Complainant. This indicates bad faith on the part of the Respondent pursuant to Policy, paragraphs 4(b)(ii) and (iii).
3. The disputed domain name points to a website website selling fashion products including clothing. The Complainant contends that the disputed domain name which includes the Complainant’s famous BALMAIN mark is obviously confusing to Internet users, which will in all likelihood mislead them to associate the disputed domain name and/or the Website with the Complainant or its BALMAIN mark; or confuse the Internet users as to the source, sponsorship, affiliation, or endorsement of the Website or location or of a product on the Website. Thus, the acts of the Respondent are indicative of bad faith pursuant to the Policy, paragraph 4(b)(iv). Furthermore, the Respondent was copying the Complainant’s designs and displaying them on the Website without the Complainant’s license or authorization. Some pictures displayed on the Website reproduce those designed and created by the Complainant, which have also infringed the Complainant’s copyright to such fashion designs.
Based on all these reasons, the Complainant contends that it is without a doubt that the disputed domain name was registered and is being used in bad faith, and the Respondent 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 6.1 Language of the Proceeding
According to the information received by the Centre from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Centre, the Complainant has submitted a Chinese translation of the Complaint. Furthermore, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The Complainant is a company registered and located in France where Chinese is not the native language;
2. The Respondent is using English as the language for all the contents displayed on the Website. This indicates that the Respondent has a very good understanding of English.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Complainant has submitted a Chinese translation of the Complaint; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the PIERRE BALMAIN and BALMAIN marks in relation to clothing, footwear and headgear in many countries in the world. In particular, the Panel finds that the Complainant has rights in the BALMAIN mark registered in China, the country in which the Respondent appears to reside.
The Panel finds that the Complainant has rights and continues to have such rights in the relevant BALMAIN mark.
In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s BALMAIN mark; and (b) the top level domain suffix “.org”. The most prominent and distinctive part of the disputed domain name is the word “balmain” which is identical to the Complainant’s registered trademark. It is an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the considerable reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s BALMAIN mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the BALMAIN mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “balmain” in its business operations;
2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the BALMAIN mark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. the Complainant and its BALMAIN mark enjoy a considerable reputation with regard to clothing, footwear and other fashion accessories in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the BALMAIN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or 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 the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product.
The Panel concludes based on the case file that the circumstances referred to in paragraph 4(b)(iv) of the Policy is applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Firstly, the Panel finds that the Complainant and its BALMAIN mark enjoy a considerable reputation with regard to clothing, footwear and other fashion accessories in many countries all over the world. The Complainant has also established that it has considerable exposure and presence in the Internet through its official website “www.”. The BALMAIN mark is also a registered trade mark in China where the Respondent is located. A simple search with the trade mark registry or in the Internet would reveal the presence of the Complainant’s trade mark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. The Complainant has shown that a screen capture of the Respondent’s website reveals that the Respondent is selling clothing, footwear and other fashion accessories on the website to which the disputed domain names points. There is also evidence that the Respondent has copied the Complainant’s designs in clothing and fashion accessories and displayed them on the Website without the Complainant’s license or authorization. Thus, the Panel finds that the Respondent has through the use of confusingly a similar domain name created a likelihood of confusion with the Complainant’s trademark and this constitutes a misrepresentation to the public that the Respondent’s website is associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith. 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.
Susanna H.S. Leong
Sole Panelist
Dated: October 7, 2011
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