The Complainant is Balenciaga of Paris, France, represented internally.
The Respondent is Rudy Gay of Nanjing, Jiangsu Province, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 2012, the Registrar 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 regarding the expiry of a domain name initially included in the Complaint, the Complainant filed an amendment to the Complaint on November 29, 2012.
On November 29, 2012, the Center sent an email communication to the parties, in both Chinese and English, regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not make any submissions with respect to the language of the proceeding.
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 proceeding commenced on December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 8, 2013. 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 BALENCIAGA (the “Trade Mark”), the earliest dating from 1972, including international registrations covering China, where the Respondent appears to be based. The Trade Mark is a well-known trade mark in the fashion field. 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 November 9, 2011 and September 8, 2011, respectively. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant’s business was founded by the designer Cristobal Balenciaga in 1918 when he opened his first haute couture house in San Sebastian, Spain. In 1937 the flagship store of Balenciaga was established in Paris. Balenciaga has operated continuously since 1918 and is one of the most successful and respected fashion houses. The Complainant creates and sells worldwide men’s and women’s ready-to-wear, shoes, handbags and accessories under the Trade Mark worldwide.
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 “borsa” and “borse”, meaning “bag/purse” and “bags/purses” in Italian.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised 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 a website offering for sale fake handbags and luggage under the Trade Mark (the “Website”). The Website features the Balenciaga logo of the Complainant and offers for sale what appear to be products of the Complainant, under the Trade Mark, but at severely discounted prices. The Website also features the notice “Copyright © 2012 Balenciaga Borse. Powered by Balenciaga.” 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 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 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 name of the Respondent, Rudy Gay, does not appear the name of a Chinese person. It appears to be the name of an English speaking person;
(2) the Website is in the Italian language;
(3) as the Complainant is a French company and is unable to communicate in Chinese, it would cause significant expense and delay if the Complainant were required to translate the Complaint and Annexes into Chinese;
(4) in all the circumstances it would be fair to both parties if the proceeding were conducted in English.
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 judicially 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).
There is insufficient evidence to enable to Panel to conclude conclusively that the Respondent is proficient in the English language, although the Respondent’s name appears to be an English name, and the Website, although predominantly in Italian, contains some English wording and a dormant English language link (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; Finter Bank Zurich v. Shumin Peng, supra).
Nonetheless, in all the circumstances of this case, the Panel considers it is reasonable for the proceeding to be conducted in the neutral language of English. 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 almost 100 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 use of the generic and descriptive words “borse” and “borsa” does not serve to distinguish the disputed domain names from the Trade Mark in any way, particularly as the content of the Website is predominantly in the Italian language.
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 organisation) 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 noncommercial 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 almost 100 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 he/she 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.
This Panel finds that the Respondent is using the disputed domain names to offer for sale on the Website handbags and luggage under the Trade Mark. The Panel concludes the unauthorised use of the disputed domain names comprising the well-known Trade Mark of the Complainant to attract Internet users to a Website offering for sale the goods which are similar to the Complainant’s products does not give rise to any rights or legitimate interests in the disputed domain names.
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.
According to the Complainant’s submission, the Website features images of what appear to be Balenciaga handbags and luggage, and offer for sale such goods under the Trade Mark. The Complainant is claiming that the Website also contains the copyright notice “Copyright © 2012 Balenciaga Borse. Powered by Balenciaga”. There is no evidence as to whether the bags and luggage offered for sale on the Website are genuine goods.
The Panel finds that at some stage following filing of the Complaint, the Respondent has changed the Website so that all references to BALENCIAGA have been replaced with CELINE, the brand name of a competitor of the Complainant. The images on the Website have otherwise remained the same. The Panel finds this constitutes further evidence of bad faith.
In all the circumstances, however, the Panel concludes the Respondent has registered and is using the disputed domain names in order to attract Internet users to the Website, which is offering for sale what appear to be goods of the Complainant’s and of a competitor of the Complainant, thereby creating a likelihood of confusion for the purposes of paragraph 4(b)(iv) of the Policy.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
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: January 22, 2013
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