The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondent is Sri Lesmanawati, Belidibali of Denpasar, Bali, Indonesia. 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 June 7, 2012. On June 8, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 11, 2012, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on June 13, 2012 and June 14, 2012.
The Center verified that the Complaint together with the amendment to 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 June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2012.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 11, 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.
The Panel shall issue its Decision based on the Complaint, the Amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is a well-known luggage and fashion handbag designer originally established in 1853. GOYARD is the family name of the founder, and the GOYARD trademark is registered in more than 27 jurisdictions, such as:
GOYARD (word), registration no. 1821224; registered February 15, 1994 for goods in classes 16 and 18 – issued by the United States Patent and Trademark Office (“USPTO”);
GOYARD (word), International Registration no. 619536; registered June 21, 1994 for goods in classes 3, 18 and 25; and
GOYARD (word), registration no. IDM000172033; filed on January 5, 2007 in Indonesia, the country where the Respondent resides according to the publicly available WhoIs records.
(Copies of Certificates of Registration provided by the Complainant as Annexes 3 – 29 of the Complaint).
Additionally, the Complainant has obtained device mark registrations for the woven pattern image used on its goods.
The disputed domain name was registered on November 20, 2011. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant describes itself as a well established and famous French luxury luggage and trunk maker who designs, manufactures and markets its luxury goods all over the world, mainly: hand bags, wallets, purses, luggage, trunks, etc. (Annexes 39-40 of the Complaint showing articles from international magazines such as “VOGUE”, “The International Herald Tribune”, “LE GRAND MAG”, “Forbes Life”, “The New York Times”, “Tatler”, and “The Hollywood Reporter”).
The Complainant holds a number of domain names incorporating GOYARD, such as (registered on January 2, 1998), and .
The Complainant argues that the disputed domain name is confusingly similar to the trademark GOYARD, as it incorporates the trademark GOYARD with the only addition of the descriptive word “bags”, which the Complainant claims rather increase the confusing similarity.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known under the disputed domain name, has no relationship with the Complainant, and no prior rights. According to the Complainant, the GOYARD mark is not descriptive and has no meaning in the Indonesian or English languages.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith. The very well known trademark GOYARD is the only distinctive word of , and the Respondent cannot have ignored the international reputation of GOYARD at the time of registration of the disputed domain name. By combining the trademark GOYARD with the descriptive word “bags” also show that the Respondent has voluntarily created confusion with the Complainant’s well-known trademark. The disputed domain name directs Internet users to a website bearing all GOYARD trademarks, with information on the Complainant’s business and history, as well as sponsored links and advertisements to other websites offering for sale competing goods.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the GOYARD trademark, registered and well-known in a number of countries, including Indonesia – the country where the Respondent resides according to the publicly available WhoIs records.
The relevant part of the disputed domain name is “goyardbags”. The Panel concludes that the disputed domain name consists of the Complainant’s trademark GOYARD, with the addition of the generic word “bags”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a disputed domain name from a trademark.
The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term “online”…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee,WIPO Case No. D2011-1837 (“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”).
The Panel therefore concludes that is confusingly similar to the Complainant’s trademark GOYARD. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark GOYARD. As stated by the Complainant, “the Complainant has never and will never sell its goods on the Internet, because they are luxurious ones”. See Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in , nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent’s use of the disputed domain name has been to mislead customers seeking for the Complainant’s goods to buy what may be the Complainant’s goods as well as using sponsored links and advertisements to other websites offering for sale competing goods. Such use does not establish rights or legitimate interests. See Fluor Corporation v. A Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyP / Cyber Domain Services Pvt.Ltd. WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests”).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As the Complainant has described and proved, the trademark GOYARD is well-known and the trademark registrations are covering, among other countries, Indonesia – the country where the Respondent resides according to the publicly available WhoIs records.
As stated above, the disputed domain name consists of the Complainant’s trademark with the addition of a generic word that describes the specific goods covered by the said trademark. Thus, it is clear to this Panel that the Respondent must have had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic word “bags” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products).
Further, registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085.
The disputed domain name is used for a website advertising and selling what may be the Complainant’s goods as well as using sponsored links and advertisements to other websites offering for sale competing goods.
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al.,WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s and domain names”).
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy. 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.
Petter Rindforth
Sole Panelist
Date: July 25, 2012
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