The Complainant is Goyard St-Honore of Paris, France, represented by Cabinet Granger, France.
The Respondent is WhoisGuard, WhoisGuard Protected of Los Angeles, California, United States of America (“United States”) and Brucef Lee of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) (collectively, “the Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2011. On October 25, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 26, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 6, 2011.
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 November 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on December 12, 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 well-known luggage and fashion handbag designer originally established in 1853. The company takes its name from that of its founder, François Goyard, and maintains trademark registrations for the GOYARD mark in more than 27 jurisdictions. Additionally, the Complainant has obtained device-mark registrations for the woven pattern image used on its goods.
The disputed domain name was registered on September 27, 2011. It is being used to display a website which reproduces the GOYARD trademark and purports to offer Goyard-branded merchandise for sale. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain name is confusingly similar to its GOYARD mark because the disputed domain name fully contains the entirety of the Complainant’s well-known mark. The addition of the dictionary terms “bags” and “shop” do nothing to detract from the appearance of the trademark in the disputed domain name and have, of themselves, no distinguishing character. The fact that the terms correspond to the industry of the Complainant, and to the Complainant’s products, further increases the likelihood of confusion among Internet users.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name as it is not an authorized reseller of the Complainant’s goods, and has not been licensed to use the Complainant’s marks in any way. The Complainant states that “[t]he [Respondent’s] website offers to sell counterfeiting GOYARD goods all bearing the GOYARD device trademark”, indicating that the products displayed on the website appear to bear the woven pattern image for which the Complainant has secured trademark registrations. The Respondent’s use of the disputed domain name is not a bona fide offering, nor a noncommercial or fair use. Further, the Complainant states that the term “Goyard” has no dictionary meaning apart from its trademark sense.
Concerning the third requirement of the Policy, the Complainant notes its longstanding use of the GOYARD mark and indicates that the Respondent must have been aware of the Complainant at the time it registered the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name with the intent to mislead consumers for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
The addition of a dictionary word or term which is descriptive of a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. In this case, the descriptive terms “bags” and “shop” have been appended to the Complainant’s registered GOYARD mark, which may serve to heighten Internet user confusion.
Finally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant's GOYARD mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its GOYARD mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the domain name. Additionally, as the website is used to host a web-shop offering products similar to those of the Complainant, from which the Respondent presumably generates revenue, the Respondent clearly is not making any noncommercial or fair use of the disputed domain name.
A broader question raised by the Complainant is its assertion that the goods offered on the Respondent’s site are counterfeit versions of the Complainant’s products. The Complainant notes that it has obtained trademark registrations for the characteristic woven pattern image it uses on its products, and states that it maintains careful control of the supply chain of its goods, but does not provide any other evidence to support the allegation of counterfeiting.
The Panel notes that the Respondent has been provided with notice of these proceedings and been given a fair opportunity to reply to these allegations of the Complainant. The Respondent has elected not to reply, thereby providing no rebuttal to this charge. If the Respondent were able to refute this claim, or perhaps believed it had established reseller or other rights to use the disputed domain name, one would expect the Respondent to come forward with such evidence. In the absence of a Response, however, a Panelist “shall decide the dispute based upon the [C]omplaint”, pursuant to the Rules, paragraph 5(e), and the Panelist may accept as true the reasonable allegations set forth in the Complaint. See Carey International, Inc. v. Texas International Property Associates -NA NA,WIPO Case No. D2010-1232 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.6.
Accordingly, the Panel finds that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services as it is trading on the goodwill of the Complainant’s trademark in order to generate revenue.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has provided substantial evidence that its GOYARD mark is widely known in connection with luxury handbags and luggage. The mark has been in use since 1853 and is registered in numerous countries around the world, including in both the United Kingdom and United States, where the Respondent appears to be located. The disputed domain name selected by the Respondent contains the Complainant’s trademark in combination with the terms “bags” and “shop”, which combined suggest the commercial sale of the Complainant’s successful products. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its GOYARD mark when it selected the disputed domain name.
Furthermore, by fully incorporating the GOYARD mark in the disputed domain name and using the domain name in connection with a website reproducing the Complainant’s trademarks, in addition to offering for sale either the products of the Complainant or similar-looking goods, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site and products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Chicago Mercantile Exchange Inc. v. Whois Privacy Protection Service Inc./Nguyen Thanh Cong,WIPO Case No. D2010-1766.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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 disputed domain name be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: December 19, 2011
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