The Complainant is Goyard St-Honoré, of Paris, France represented by Cabinet Granger, France.
The Respondent is Domain Whois Protection Service / Lin Honghai of Jiangsu, China and Fujian, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, LLC.
The disputed domain names and are registered with Jiangsu Bangning Science & Technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 7, 2012, the Center transmitted by email to Jiangsu Bangning Science & Technology Co. Ltd. a request for registrar verification in connection with the disputed domain names and . On June 11, 2012, Jiangsu Bangning Science & Technology Co. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2012 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 June 13, 2012.
On June 14, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain names and . On June 15, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 11, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 13, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint and the Amended Complaint satisfy 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 proceeding commenced on June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 10, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 25, 2012. 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 A. Complainant
The Complainant is a company incorporated in France and the owner of numerous national and international registrations for the trade mark GOYARD (the “Trade Mark”), the earliest dating from 1981, including an international registration designating China, where the Respondent is based. The Trade Mark is a well-known trade mark in respect of luxury handbags and related goods. B. Respondent
The Respondent is an individual apparently with an address in China. C. The Disputed Domain Name
The disputed domain names were registered on June 5, 2012, June 5, 2012, August 7, 2011 and December 14, 2011, respectively. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was founded in 1853. It manufactures in France and sells worldwide luxury handbags, wallets, purses and luggage under the Trade Mark.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety, together with the non-distinctive words “totes” and “officials”, the acronym “fr”, meaning “France”, or the letter “s”, simply denoting the plural.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorized by the Complainant in any way and is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names have been registered and used in bad faith.
The disputed domain names have been resolved or linked to websites offering for sale unauthorized counterfeit handbags, wallets, purses and luggage under the Trade Mark (the “Websites”). The Complainant asserts that the goods offered for sale on the Websites are counterfeit as:
(1) some of the goods offered for sale on the Websites under the Trade Mark do not exist in the Complainant’s range of products; and
(2) the prices are much too low for them to be genuine luxury goods 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
The language of the Registration Agreements for the disputed domain names and is English. The language of the Registration Agreements for the disputed domain names and is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding for the disputed domain names and should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the Websites to which the disputed domain names and have been resolved or linked are English language websites;
(2) the disputed domain names and comprise the Trade Mark together with the English language words “tote” and the letter “s” simply denoting the plural;
(3) the language of the Registration Agreements for the disputed domain names and is English;
(4) as the Complainant is a French company, it would cause significant expense and delay if the Complainant were required to translate the Complaint and Annexes into Chinese.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judiciously in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, for the reasons specified by the Complainant, that the Respondent appears to be proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English. 6.2. Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration, which predate the date of registration of the disputed domain names by over 150 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the disputed domain names contain the Trade Mark in its entirety. The Panel concludes that the addition of the generic and descriptive words “tote” and “officials”, the addition of the acronym “fr”, meaning “France”, and the addition of the letter “s”, simply denoting the plural, do not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by over 150 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names are being used in respect of the Websites offering for sale unauthorized, and most likely counterfeit, goods under the Trade Mark. Such use does not amount to a bona fide offering of goods or services under the Policy (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
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 or service on the Respondent’s website or location.
The Complainant asserts that the disputed domain names are being used to offer for sale counterfeit goods under the Trade Mark. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
Even if the goods on the Website are not counterfeit, the Panel finds the Respondent’s conduct in registering the disputed domain names and offering for sale on the Websites handbags, wallets, purses and luggage under the Trade Mark, all without the authorization, approval or license of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Websites are counterfeit.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
In all the circumstances of this case, the Panel finds the failure of the Respondent to file a Response is a further indication of bad faith.
At some stage following the filing of the Complaint, the disputed domain names and have become inactive so that they are no longer resolved or linked to the Websites. According to UDRP jurisprudence, it is trite that passive use of a disputed domain name can amount to bad faith use of a disputed domain name, depending on the circumstances of the particular case. In all the circumstances of this case, the Panel finds the Respondent’s conduct in respect of the disputed domain names and following the filing of the Complaint amounts to further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 names , , and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: August 8, 2012
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