The Complainant is Goyard St-Honore of Paris, France, represented by Cabinet Granger, France.
The Respondent is gao ming of Putian, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with Foshan YiDong Network Co., LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2013. On March 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 15, 2013, 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. On March 15, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 15, 2013, 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 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 March 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 16, 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
The Complainant is a French luxury luggage and trunk maker who designs, manufactures and markets luxury goods, including hand bags, wallets, purses, luggage, trunks, etc. The Complainant is the owner of numerous registered trademarks for GOYARD, inter alia, Taiwan Trade Mark Registration No. 1305141 GOYARD in classes 18 and 25 and Hong Kong Trade Mark Registration No. 300402515 GOYARD in class 3, 14, 16, 18, 24, 25, 34.
According to WhoIs data, the Respondent is gao ming. The Disputed Domain Names were both registered on August 20, 2012.
The Registrar confirmed, in its email of March 15, 2013, that the Registration Agreements for the Disputed Domain Names are in Chinese.
The Disputed Domain Name, , now resolves to a parking site indicating that the web site is under maintenance. The Disputed Domain Name, , is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Names incorporate the Complainant’s GOYARD trademark in its entirety. The additional features to the Disputed Domain Names are only descriptive words such as “sale”, “buy” and “online” and the generic Top Level Domain, “.net”. These cannot be considered sufficient to avoid confusion between the Disputed Domain Names and the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Respondent has no relationship with the Complainant nor has it been authorized to use the GOYARD trademark in any fashion. There is no indication in the WhoIs data that the Respondent is known under the Disputed Domain Names or GOYARD trademark. The Complainant states that the Respondent sells counterfeit goods bearing GOYARD trademark on the web sites to which the Disputed Domain Names resolve and thus is not using the Disputed Domain Names with a bona fide offering of goods or a fair use of the domain names without the intent for the commercial gain. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Respondent chose to incorporate the GOYARD trademark as the only distinctive element of the Disputed Domain Names. According to the web sites to which the Disputed Domain Names resolve, the goods offered for sale therein all bear the GOYARD device trademark and are counterfeit. The Respondent registered the Disputed Domain Names with the knowledge of the Complainant and its GOYARD trademark.
The Complainant manufactures its goods in France in its own factories, controls the entire marketing process of such goods and has no licensees. The Complainant does not sell its products on the Internet. The Respondent intentionally attempted to attract for commercial gain, Internet users to its web sites to which the Disputed Domain Names resolve, by creating confusion with the Complainant’s mark as to the source and/or affiliation of the Respondent’s web sites and goods. The Respondent sells counterfeit goods bearing the Complainant’s GOYARD trademark at those web sites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues A. Language of Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Rules allow 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. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview 2.0 further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant requested that the language of the proceeding be English. Despite the fact that the language of the Registration Agreements for the Disputed Domain Names is Chinese, the Panel notes the following facts:
(i) The content shown on the web sites under the Disputed Domain Names is in English.
(ii) The Respondent’s business at the web sites is conducted in English.
(iii) The Center has sent an email communication to the Parties, in both Chinese and English, regarding the language of the proceeding of the Disputed Domain Names. The Respondent did not respond to the foregoing bilingual email communication or object to the language request of the Complainant.
Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. It will not be prejudicial to the Respondent in its abilities to articulate its arguments in English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. In order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. B. Consolidation of Multiple Domain Names
Paragraph 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
According to the WhoIs database, the Disputed Domain Names are registered by the same domain name holder, gao ming. The Complaint is properly filed against the Disputed Domain Names held by the Respondent. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the owner of GOYARD trademark.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
The Disputed Domain Names incorporate the GOYARD trademark in its entirety. The additional elements of the Disputed Domain Names are all descriptive or generic words such as “buy”, “online” and “sale”. The GOYARD element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of other descriptive and generic terms does not mitigate the likelihood of confusion between the Disputed Domain Names and the Complainant’s GOYARD trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
As for the applicable top-level suffix such as “.net” in the Disputed Domain Names, it is a consensus view that it may usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has established that it is the owner of the GOYARD trademark and claims that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the GOYARD trademark to register the Disputed Domain Names or any other variations. The Complainant further contends that it controls all the manufacturing and marketing process and has no licensees.
Furthermore, “Goyard” is a French family name and has no specific meaning in English or Chinese. According to the WhoIs database, there is no evidence indicating that the Respondent is commonly known by the Disputed Domain Names or the name GOYARD. The Complaint also provides screenshots from the web sites under the Disputed Domain Names, which establish that the Respondent sells bags and wallets on the web sites therein. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
The Complainant also establishes that it is the owner of the GOYARD device trademark. The Panel further notes that the web sites under the Disputed Domain Names show images of bags and wallets with the GOYARD device trademark. The Complainant contends that these goods are counterfeit.
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby:
“[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The web sites under the Disputed Domain Names sell bags and wallets with the GOYARD trademark and/or device trademark but do not actually and prominently disclose the Respondent’s relationship with the Complainant. The Panel need not decide whether the goods sold on the web sites are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Names when it fails to accurately and prominently disclose the relationship between the parties thereby confusing Internet users. (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Names and there is therefore no evidence in the case file to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Names under any conditions of paragraph 4(c) of the Policy.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s GOYARD trademark has been registered in many countries around the world. The Respondent chose the GOYARD trademark as the only distinctive part of the Disputed Domain Names. According to the screenshots of the web sites under the Disputed Domain Names in Annex 44 to the Complaint, the Respondent uses the GOYARD trademark and device trademark to sell bags and wallets. It is obvious that the Respondent registered the Disputed Domain Names with knowledge of the Complainant’s GOYARD trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected GOYARD string with other generic and descriptive words for any reason other than the reputation of the Complainant’s trademark. The Panel finds that the Disputed Domain Names have been registered in bad faith.
The Respondent uses the GOYARD trademark on the front page of the web sites to which the Disputed Domain Names resolve. The web sites sell bags and wallets under the GOYARD trademark and the GOYARD device trademark. There is no indication that accurately and prominently discloses the Respondent’s relationship with the Complainant. The Respondent has intentionally designed the web sites under the Disputed Domain Names to create an impression to Internet users that they are affiliated, endorsed or sponsored by the Complainant for selling its own products. The Panel finds that the Respondent uses the Disputed Domain Names in bad faith and the fact that the web sites under the Disputed Domain Names currently either redirects to a parking site or is inactive does not change this fact.
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: April 26, 2013
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