Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
Respondents are Starout Soft, AAS SSS, Wang Xiaoming of Heilongjiang, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Jiangsu Bangning Science & technology Co. Ltd. The disputed domain names and are registered with B, Inc. The disputed domain name is registered with Shanghai Yovole Networks, Inc. 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., B, Inc., and Shanghai Yovole Networks, Inc. a request for registrar verification in connection with the disputed domain names. On June 8, June 9, and June 11, 2012, Shanghai Yovole Networks, Inc., Jiangsu Bangning Science & technology Co. Ltd., and B, Inc. respectively transmitted by email to the Center its verification response confirming that Respondents are 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 proceedings. On June 13, 2012, Complainant confirmed its request that English be the language of proceeding. Respondents did not comment on the language of proceedings by the specified due date.
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 Respondents of the Complaint, and the proceedings commenced on June 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2012. Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 24, 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
Complainant is a French company offering luxury goods, including luggage, all over the world under the trademark GOYARD, and has done so for many years. Complainant is the registered owner of trademarks consisting of the word “goyard” in a number of jurisdictions, including Hong Kong, China (since 2005) and Taiwan Province of China (since 2008), and Complainant has owned an international trademark in GOYARD enforceable in China since 1994. Complainant also operates a number of websites linked to domain names having the word “goyard” as the entirety of the second level domain, the earliest of which was registered in 1994 ().
Respondent Starout Soft, Wang Xiaoming (“Starout Soft”) is based in China. The disputed domain name registrations attributed to Starout Soft, Wang Xiaoming (“Starout Soft”) were created on May 20, 2012 and April 9, 2012.
Respondent AAS SSS, Wang Xiaoming (“AAS SSS”) is also based in China. The disputed domain name registrations attributed to AAS SSS, Wang Xiaoming (“AAS SSS”) were created on September 20, 2011 and February 28, 2012. 5. Parties’ Contentions A. Complainant
Complainant claims Respondents are closely associated or related because (1) contact information used to register the disputed domain names is identical except for the name of the registering organization (Starout Soft and AAS SSS) and the postal address of the registrant, (2) of the two websites linked to the disputed domain names, one website links to (registered by Starout Soft) and (registered by AAS SSS), and another website links to (registered by AAS SSS), (registered by Starout Soft) and (registered by AAS SSS), (3) the linked websites are used in an identical manner to attract consumers and sell fake Goyard marked goods, and (4) the present claims involve identical questions of law and fact and therefore consolidation would minimize cost and time.
Complainant requests the proceedings be in English because (1) Respondents have used English terms in the disputed domain names, (2) websites linked to disputed domain names and only operate in English, (3) Respondents have a demonstrated familiarity with English, and (4) it would be unduly burdensome and unfair for Complainant to be forced to translate the Complaint and the supporting annexes to Chinese.
Complainant claims the disputed domain names are confusingly similar to Complainant’s GOYARD trademark because the disputed domain names contain the trademark in its entirety and because the insertion of the generic term “bag” does not distinguish the disputed domain names from the GOYARD trademark and instead increases the likelihood of confusion because the term relates directly to Complainant’s business associated with its GOYARD trademark.
Complainant claims Respondents have no rights or legitimate interests in the disputed domain names because (1) Respondents have not been known under any of the disputed domain names or under the term “Goyard” and “Goyard” has no meaning in English or Chinese, (2) Respondents have no prior right in the disputed domain names, (3) Complainant’s GOYARD trademark is very well-known throughout the world and particularly in Respondents’ country, (4) Respondents have no relationship with Complainant and are not authorized by Complainant in any way to use the mark GOYARD, (5) Respondents do not use the disputed domain names in connection with the bona fide offering of goods or services because the items offered for sale appear counterfeit and/or fake, and (6) Respondents’ use of the disputed domain names is not a legitimate noncommercial or fair use.
Complainant claims Respondents have registered and are using the disputed domain names in bad faith because (1) Complainant’s GOYARD trademark is very well-known, particularly in China, and the only distinctive word in the disputed domain names is ”Goyard”, (2) Respondents have voluntarily and knowingly created confusion with the GOYARD trademark by choosing to register the disputed domain names featuring the GOYARD trademark, (3) the websites linked to the disputed domain names are all designed to deceive consumers by including and infringing Complainant’s well-known GOYARD device trademark (worldwide registered) and well-known logo (worldwide registered), (4) the linked websites appear to sell fake and/or counterfeit goods and thereby tarnish Complainant’s reputation and the GOYARD trademark, and (5) the disputed domain names and the linked websites deceptively divert customers from Complainant thus unfairly disrupting Complainant’s business, particularly since Complainant has decided never to sell its goods over the Internet. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Complainant has requested that English be recognized as the language of the proceeding. Respondents have not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondents to answer the Complaint in either language.
The content featured on websites linked to two of the disputed domain names is displayed in English, and this demonstrates to the Panel that Respondents have a working knowledge of the English language. Furthermore, all the disputed domain names incorporate English language words, including generic terms added to Complainant’s GOYARD trademark. Taking the foregoing points into account along with Respondents’ default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary cost and delay. B. Consolidation of the Parties
The consolidation of multiple registrants as respondents in a single UDRP proceeding may be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
Common control or ownership has been found (1) in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names, (2) based on instances of commonality in registration information, (3) where the content of multiple respondents’ websites were substantially identical and referred Internet visitors to a common “homepage”, and (4) where domain names of multiple respondents were registered with the same registrar and resolved to essentially identical websites. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, supra.
Here, the record shows that contact information used to register the disputed domain names is identical but for the name of the registering organization and the postal address of the registrant. The record also shows that each of the five disputed domain names resolve to one of two websites, and both websites are linked to a disputed domain name registered to Starout Soft and a disputed domain name registered to AAS SSS.
In addition, each of the disputed domain names incorporates Complainant’s GOYARD trademark in its entirety, and each of the disputed domain names have been used in an identical manner to divert consumers from Complainant’s website. The record shows that Complainant has been the target of common conduct based on the registration and use of the disputed domain names and that such conduct interferes in Complainant’s rights in the GOYARD mark. Furthermore, Complainant’s claims against the disputed domain names involve common questions of law and fact.
In light of this, the Panel finds that consolidation would be procedurally efficient. Consolidation here promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy. Id. Furthermore, there is no evidence suggesting that consolidation under the present circumstances would unfairly favor or prejudice any party.
Accordingly, the Panel finds that Complainant has established more likely than not that the disputed domain names are subject to common ownership or control sufficient to justify consolidation of Complainant’s claims against Respondents. The Panel further finds in the circumstances of this case that consolidation is equitable and procedurally efficient. The Panel concludes that consolidation is consistent with the Policy, the Rules, and with prior relevant UDRP decisions, and allows consolidation as requested by Complainant. C. Identical or Confusingly Similar
The record shows Complainant owns trademark rights in GOYARD recognized, inter alia, in Hong Kong, China, Taiwan Province of China, and China prior to the creation of the disputed domain name registrations in 2011 and 2012. The record also shows that Respondents are purporting to use the disputed domain names in connection with the sale of goods.
The disputed domain names combine the literal element consisting of Complainant’s GOYARD trademark with the generic term “bag”. The Panel views the “goyard” portion of the disputed domain names as identical to Complainant’s GOYARD trademark, and so the disputed domain names feature Complainant’s trademark in its entirety.
“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence.” See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668. The Panel finds that Complainant has established its rights in the GOYARD trademark.
The mere addition of a generic term to Complainant’s GOYARD trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227.
Here, each of the disputed domain names incorporates the entirety of Complainant’s trademark, and the additional generic term does not to this Panel reduce the prominence of Complainant’s trademark therein. Rather, the additional generic term “bag” increases the likelihood of confusion because it relates directly to Complainant’s business and goods associated with the GOYARD trademark. Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809. Furthermore, the Panel does not believe that the addition of the generic term to Complainant’s GOYARD trademark creates a new or different mark or literal element which is materially different to Complainant’s trademark. It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain names.
The Panel concludes that the disputed domain names are confusingly similar to Complainant’s GOYARD trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. D. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that Respondents are associated or affiliated with Complainant or that Respondents have any other rights or legitimate interests in the term “goyard”. As such, Complainant has successfully presented a prima facie case that Respondents lack rights or legitimate interests in the disputed domain names, which Respondents have not rebutted. Discussed more fully below, the Panel also finds that Respondents are not engaged in a bona fide offering of goods and services. Furthermore, there is no evidence in the record to indicate that Respondents’ use of the disputed domain names is a legitimate noncommercial or fair use, or that Respondents are commonly known by the disputed domain names.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. E. Registered and Used in Bad Faith
The record shows Complainant owns trademark rights in GOYARD that precede creation of the disputed domain names. The disputed domain names are predominantly composed of the trademark and incorporate the trademark in its entirety. A simple Internet search for “goyard” and “bag” results in links predominantly related to Complainant and Complainant’s websites. The Panel finds that Respondents were likely aware of Complainant or should have known of Complainant when registering the disputed domain names.
The record also shows that the content of the websites linked to the disputed domain names feature the GOYARD trademark and advertise similar-looking goods as those offered by Complainant under the GOYARD trademark. The Panel finds that Respondents’ advertisement of goods constitutes commercial competition with Complainant and Complainant’s goods that trades on the goodwill invested in Complainant’s GOYARD trademark.
The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. The Panel finds by registering the disputed domain names using Complainant’s GOYARD trademark and advertising goods in competition with Complainant using Complainant’s well-known and registered device trademark and logo, Respondents are intentionally diverting traffic from Complainant’s business and websites.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use of the domain name.
The record shows that Respondents have used the disputed domain names to advertise goods in commercial competition with Complainant and Complainant’s goods. Moreover, the incorporation of Complainant’s trademark in the disputed domain names combined with the content featured on the websites linked to the disputed domain names, without an accurate disclosure of Respondents’ relationship with Complainant, illustrates an intent to deceive consumers into believing that the disputed domain names are associated with, affiliated with, and/or endorsed by Complainant and cannot constitute a bona fide use. The record offers no evidence to refute this finding.
The Panel concludes that Respondents’ conduct falls within the scope of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been 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 disputed domain names , , , , and be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: August 8, 2012
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