Complainant is Goyard St-Honore of Paris, France, represented by Cabinet Granger, France.
Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and are registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on March 7, 2013.
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 Respondent of the Complaint with the amendment to the Complaint, and the proceedings commenced on March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2013.
The Center appointed Eduardo Machado as the sole panelist in this matter on April 15, 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
Complainant is a French company offering luxury goods, including handbags, trunks, suitcases, wallets and purses, 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. 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.
“Goyard” is the family name of the founder of the “Maison Goyard” and is the main part of Complainant’s business name.
The disputed domain names were registered as follows: on October 22, 2012, on October 20, 2012, on October 26, 2012, on August 1, 2012, on July 11, 2012, on July 24, 2012, on June 26, 2012 and on August 8, 2012. 5. Parties’ Contentions A. Complainant
Complainant claims that 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 descriptive words “handbags”, “outlet”, “shop” or “store” with the addition of random numbers such as “1”, “03”, or “10” do not distinguish the disputed domain names from the GOYARD trademark and instead, in the case of “handbags”, increases the likelihood of confusion because the term relates directly to Complainant’s business associated with its GOYARD trademark.
Complainant alleges Respondent has no rights or legitimate interests in the disputed domain names because: (1) Respondent has not been known under any of the disputed domain names or under the term “Goyard” and “Goyard” has no meaning in English or Spanish, (2) Respondent has no prior right in the disputed domain names, (3) Complainant’s GOYARD trademark is very well-known throughout the world and particularly in Respondent’s country, (4) Respondent has no relationship with Complainant and is not authorized by Complainant in any way to use the mark GOYARD, (5) Respondent does not use the disputed domain names in connection with the bona fide offering of goods or services because the items offered for sale at the disputed domain names appear counterfeit and/or fake, and (6) Respondent’s use of the disputed domain names is not a legitimate noncommercial or fair use.
Complainant argues Respondent has registered and is using the disputed domain names in bad faith because: (1) Complainant’s GOYARD trademark is very well-known, and the only distinctive word in the disputed domain names is “Goyard”, (2) Respondent has 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 (registered worldwide), (4) the linked websites appear to sell fake and/or counterfeit goods and thereby tarnish Complainant’s reputation and the GOYARD trademark, (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, and (6) the additional sale of the described goods bearing Complainant’s GOYARD trademark, illustrates Respondent’s bad faith intentions. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
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 Complainant has rights in the GOYARD trademark acquired through use and registration which predate the date of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, 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 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); therefore, 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).
Furthermore, the Panel finds that the mere adjunction of the generic top level domain “.com” extension is irrelevant as it is well established that the generic top level domain is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of Complainant’s trademark and the disputed domain names.
In the present case, the disputed domain names contain the GOYARD trademark in its entirety. The Panel concludes that the use of the generic and descriptive words “handbags”, “store”, “shop” and “outlet” with the addition of numbers such as “1”, “03”, or “10” does not serve to distinguish the disputed domain names from the trademark in any way.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the term “goyard”. As such, Complainant has successfully presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, which Respondent has not rebutted.
The Panel also finds that Respondent is not engaged in a bona fide offering of goods and services.
Furthermore, there is no evidence in the record as detailed in Section 6.C below to indicate that Respondent’s use of the disputed domain names is a legitimate noncommercial or fair use, or that Respondent is 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. 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 Respondent:
By using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites or location.
Complainant asserts that the disputed domain names are being used to offer for sale counterfeit goods under the GOYARD trademark. The Panel finds that 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 websites at the disputed domain names are not counterfeit, the Panel finds that Respondent’s conduct in registering the disputed domain names and offering for sale on the associated websites luxurious goods under the GOYARD trademark (without disclaimer) , all without the authorization, approval or license of 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 Respondent to file a response is a further indication 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 Complainant.
Eduardo Machado
Sole Panelist
Date: April 30, 2013
Full & Egal Universal Law Academy