The Complainant is Goyard St-Honore, Paris, France, represented by Cabinet Granger, France.
The Respondent is Levi Antoine, lianliang, Lian Liang, Suzhou, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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. In response to a communication from the Center, the Complainant amended the Complaint to reflect the correct spelling of the Respondents name on April 9, 2013.
The Center verified that the amended 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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 24, 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 goods house operating since 1853 under the tradename and trademark GOYARD which is the family name of its founder. The Complainant is a luxury and trunk maker who designs, manufactures and markets its goods (mainly hand bags, wallets, purses, luggage, trunks etc.) all over the world (Annexes 38-40 to the Complaint).
The Complainant registered the trademark GOYARD in various countries throughout the world (Annexes 3-29 to the Complaint), being it relevant to mention the International Registration No. 619536 of June 21, 1994 in classes 3, 18 and 25 (Annex 16 to the Complaint) which covers China, the country where Respondent is located.
The disputed domain name was registered on August 20, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name incorporates its very well known mark in its entirety and that the addition of the descriptive words “replica” and “tote” cannot be considered sufficient to avoid confusion between the disputed domain name and Complainant’s trademark.
Additionally, the words “replica” and “tote” only refer to a model manufactured by the Complainant and to the fact that the website relating to the disputed domain name offers counterfeit goods for lower prices in violation of Complainant’s rights over the GOYARD trademark (also registered in class 18 to protect handbags).
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has no relationship with the Complainant nor has it been authorized to use the GOYARD trademark in any fashion.
Moreover, there is no indication in the WhoIs data that the Respondent is known under the disputed domain name or GOYARD trademark. In addition, GOYARD has no meaning whatsoever in Chinese or English, which are the languages of the Respondent and the website, according to online dictionaries (Annexes 41 and 42 to the Complaint), nor GOYARD describes or designates the goods offered for sale on the website (such as, hand bags, luggage, purses etc., Annexes 44, 41-42 to the Complaint).
The Complainant states that the Respondent sells counterfeit goods bearing GOYARD trademark on the website to which the disputed domain name resolves and thus is not using the disputed domain name with a bona fide offering of goods or a fair use of the domain name without the intent for commercial gain. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Lastly, according to the Complainant, the disputed domain name has been registered and is being used in bad faith since it incorporates the GOYARD trademark as its only distinctive element. According to the web site to which the disputed domain names resolves, the goods offered for sale therein all bear the GOYARD device trademark and are counterfeit. The Respondent registered the disputed domain name with the knowledge of the Complainant and its GOYARD trademark.
Given that the Complainant manufactures its goods in France in its own factories, controlling the entire marketing process of such goods and has no licensees, as well as it does not sell its products on the Internet, the Complainant assures that the products being sold on the website relating to the disputed domain name are counterfeit. Therefore, the Respondent intentionally attempted to attract for commercial gain, Internet users to its web site by creating confusion with the Complainant’s mark as to the source and/or affiliation of the Respondent’s web site and goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark GOYARD according to the various registrations throughout the world attached to the Complaint (Annexes 3 – 29 to the Complaint) and, specifically in China, where the Respondent is located, Complainant owns the International Registration No. 619536 of June 21, 1994 in classes 3,18 and 25 (Annex 16 to the Complaint) which covers China.
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the terms “replica” and “tote”, in this Panel’s point of view, does not sufficiently distinguish the disputed domain name from the Trademark.
Several - if not all - of the panels in previous cases1 where the disputed domain names incorporated a famous mark and the generic term “replica” have concluded that the addition of this word to the domain names “does not dissipate the confusion arising from use of the Complainant’s trademark as the key element of the domain name” and also that “the Panel does not believe that the mere addition of either of the generic terms 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.” (Goyard St-Honoré v. Laoda Corp, Wang Shan,WIPO Case No. D2013-0487).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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 organization) has been commonly known by the domain name, in spite of not having acquired trademark 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 trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108, ). Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of GOYARD in the disputed domain name.
Also, the absence of any indication that registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the indication of the absence of a legitimate interest.
According to the print-outs of the website that resolved to the disputed domain name (Annexes 44 – 44c to the Complaint) the Respondent used the website to sell counterfeit goods bearing the GOYARD trademark. This is clearly a case of bad faith and unfair use of the domain name with the intent for commercial gain. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with the sale of counterfeit goods (Annexes 44 to 44c to the Complaint) characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from an undue association with the Complainant’s trademark.
For the same reasons than those stated above, the Respondent's conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 12, 2013
1 TAG HEUER S.A. v. JBlumers Inc./Jerald Blume,WIPO Case No. D2004-0871; Chopard International S.A. v. Vladimit Kozlov, WIPO Case No. D2007-1544; J. Choo Limited v. Lishang Wang,WIPO Case No. D2010-1819; Hermes International v. VISA WEN,WIPO Case No. D2010-2265; Hermes International v. tangyi,WIPO Case No. D2010-2266; J. Choo Limited v. Lai Ruipao,WIPO Case No. D2011-1074; J. Choo Limited v. Xiong Lianshe,WIPO Case No. D2011-1341; Hermès International v. Yuan Waihuang,WIPO Case No. D2011-1850; Estee Lauder Cosmetics Ltd. and Makeup Art Cosmetics Inc. v. Yanling Xue,WIPO Case No. D2011-2179; Hermès International v. Private Whois Service,WIPO Case No. D2012-0264; Guccio Gucci S.p.A. v. Huangwensheng, Shirley, wangliang, xiaomeng xiexun, jiangxiuchun,WIPO Case No. D2012-0342; Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou , Fujian Anfu,WIPO Case No. D2012-0888; Goyard St-Honoré v. Kim Yong,WIPO Case No. D2012-1168; Oakley, Inc. v. Victoriaclassic.Inc,WIPO Case No. D2012-1968; Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo,WIPO Case No. D2012-2212; Richemont International SA v. brandon gill,WIPO Case No. D2013-0037; Richemont International SA v. zhangshilun,WIPO Case No. D2013-0039; Richemont International SA v. jin pan Kleiser,WIPO Case No. D2013-0041; Richemont International SA v. trim sheomen,WIPO Case No. D2013-0043; Goyard St-Honoré v. Lee Bin / maoyi, leo, Lee Bingo, New Yourk, Ben Di,WIPO Case No. D2013-0337, and Goyard St-Honoré v. Laoda Corp, Wang Shan,WIPO Case No. D2013-0487.
Full & Egal Universal Law Academy