The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondent is Jore Hioe of Fullerton, California, United States of America. 2. The Domain Name and Registrar
The disputed domain names and are registered with GoD, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2013. On May 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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.
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 June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2013.
The Center appointed David H. Tatham as the sole panelist in this matter on June 27, 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 an old and very well-established French company that has, since 1853, been in the business of making and selling luxury goods, including bags and luggage. It supplied copies of registrations of its trademark GOYARD in twenty seven countries, the earliest being a French registration No.1633324 dated January 20, 1981. They include the trademark registration for GOYARD dated on February 15, 1994 in the United States of America where the Respondent is apparently located. It also owns a number of domain names that include the name “Goyard”, including .
The disputed domain name was registered on December 31, 2012 and was registered on December 30, 2012.
Since the Respondent has not filed any response, there is almost no information concerning Respondent. 5. Parties’ Contentions A. Complainant
As noted above, the Complainant is an old established company selling an extensive range of luxury and expensive leather goods under the name and trademark GOYARD. This name is the subject of registrations in numerous countries. As noted above, the oldest is in France, but the list includes an International Registration No. 619536 dating from 1994 which is extended to thirteen countries, as well as European Community trademark No. 4497641 which dates from 2005 and which is valid in all the countries of the European Union.
The Complainant also has a registration of GOYARD trademark in the Respondent’s location, the United States of America (“USA”) which was registered in 1994, claiming first use from January1, 1984.
The Complainant referred to nine earlier decisions under the Policy all involving domain names which included the trademark GOYARD and all of which it had succeeded in winning.
The Complainant contends that both of the disputed domain names are confusingly similar to its trademark GOYARD as they simply add to it common words such as “bag” or “shop”. Furthermore these words refer to a category of product made by the Complainant. Also, the additional letter “u” in one of the disputed domain names does not detract from the likelihood of confusion with the GOYARD trademark but in fact strengthens this as it would be pronounced phonetically as “you-goyard-bag”.
In addition, the Complainant contends that the Respondent cannot have any rights or legitimate interests in names which incorporate the Complainant’s well-known name and trademark GOYARD because
- There is no indication that the Respondent is known by either of the disputed domain names;
- The word “Goyard” has no meaning in any language or dictionary other than as the name of the Complainant;
- The Complainant has no relationship with the Respondent;
- The Respondent has never used the name “Goyard” – apart from in the disputed domain names –neither before or after the founding of the Complainant, which occurred some 150 years ago;
- The trademark GOYARD is very well-known and it has been widely used throughout the world, and exclusively by the Complainant;
In addition, the Complainant contends that although the Respondent has made no use of the disputed domain name , the disputed domain name points to a website on which, the Complainant alleges, counterfeit GOYARD goods can be purchased. The Complainant alleges that these goods must be counterfeit because the prices are far too low to be genuine luxury goods, and also because some of them do not even feature in the Complainant’s own range of products. Thus, the Respondent is not making a fair use of either of the disputed domain names, and any use thereof is intended to mislead potential customers as to the true origin of the goods purely in order to trade on the Complainant’s goodwill.
With regard to the question of bad faith, the Complainant alleges that this has already been proved in at least nine earlier UDRP cases all involving variations on the GOYARD mark. Furthermore, the disputed domain name directs Internet users to webpages that relate to the Complainant’s business and which make use of its trademarks, including a chevron device that is exclusive to the Complainant and which is actually registered as a trademark in many countries, including the Respondent’s country, USA. The Complainant contends that the Respondent is thereby attempting to divert customers from itself, to mislead them, and to disrupt its business. The Complainant makes all of its goods itself and has no relationship with the Respondent. Furthermore, its goods are luxury goods and so not sold via the Internet. The Respondent must have been fully aware of the Complainant and its products when selecting and registering the disputed domain names and the Complainant contends that it is intentionally attempting to attract Internet users to its websites for commercial gain
The Complainant concludes by requesting that the disputed domain names be transferred to itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Preliminary Remarks
Paragraph 5(b)(i) of the Rules specifies that a respondent is expected to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present its case, but has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “[…] the Panel shall draw such inferences there from as it considers appropriate.” It was said in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443 that “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.”
In this present proceeding, since the Respondent has chosen not to submit a Response, its default entitles the Panel to conclude that it has no arguments or evidence to rebut the Complainant’s assertions, and the Panel will therefore take its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable. B. Identical or Confusingly Similar
The Complainant claims to have a number of registrations of the trademark GOYARD and it supplied copies of twenty seven of them which, as noted above, include an International and an EU registration that extend to numerous other countries.
It is by now well established that, when comparing a domain name with a trademark, a generic Top-Level Domain (“gTLD”) such as, in this case, “.com” may be disregarded. See, for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, in which it was found that gTLD extension such as “.net” or “.com” do not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark GOYARD and the phrases “goyardbagshop” and “ugoyardbag”.
The Complainant’s name and trademark GOYARD is well-known throughout the world and, not surprisingly, it has attracted several attempts by cybersquatters to incorporate it into various domain names, and the Complainant refers to nine such cases, all of which were decided in its favour.
In the present case, one of the disputed domain names has the letter “u” as a prefix and the word “bag” as a suffix to the trademark GOYARD, whilst in the other domain name the Respondent has added the words “bag” and “shop” as suffixes to the trademark GOYARD. There is little doubt that the average consumer would regard both of the disputed domain names as referring to the Complainant, particularly as bags are the products which the Complainant makes and sells and for which it is famous.
In Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033, it was held that “it is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins,WIPO Case No. D2004-0943, that “the Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes ‘buy’ and ‘generic’ are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the term ALLEGRA.” This Panel has also decided a number of similar cases in favour of complainants. See, for example, Wacoal Corp., Wacoal America Inc. v. Uri Shevchenko,WIPO Case No. D2010-1587; F. Hoffmann-La Roche AG v. C / Mike Kazaros,WIPO Case No. D2010-2212; F. Hoffmann-La Roche AG v. Hristo Ibouchev, WIPO Case No. D2010-2259; Johnson & Johnson v. Ryan Rupke,WIPO Case No. D2011-1196; Barclays Bank PLC v. Bar,WIPO Case No. D2011-1240;, E. Remy Martin & Co v. Giammario Villa,WIPO Case No. D2012-0735; and The Royal Bank of Scotland Group plc v. James Milner, WIPO Case No. D2012-1724.
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved. C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain names. It is well established that once a complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in a domain name, then 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. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828, in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name.
In the present case, the Respondent has chosen not to file anything in its defense despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using either of the disputed domain names, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in its favour.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain names which, as found above, are confusingly similar to the Complainant’s well-known trademark GOYARD. The websites at the disputed domain names makes no mention of the Respondent although it does give every appearance of being a genuine website belonging to the Complainant, with the GOYARD trademark and crest prominently displayed at the top, and containing a list of a number of different types of “Goyard” bags and luggage, plus illustrations of some of them.
The Respondent makes no claims for having rights or legitimate interests in respect of either of the disputed domain names, and provides no explanation whatsoever for its registration and use of them.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names so that paragraph 4(a)(ii) of the Policy is also proved in respect of it. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances which are evidence that the respondent has registered and uses the domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of two of them.
The Panel finds that the registration of the disputed domain names does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business, but it is also an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. In the Panel’s view, these fall squarely within paragraph 4(b)(iii) and (iv) of the Policy.
Additionally, the Respondent must have been aware of the Complainants’ name and trademark at the time of the registration of the disputed domain names because the trademark GOYARD is well-known and recognised the world over. In addition, and as noted above, the website associated with the disputed domain name contains illustrations of, and invitations to buy, products which, in this Panel’s view” may be counterfeit examples of the Complainant’s genuine goods.
This suggests opportunistic bad faith on the part of the Respondent. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trademark in the domain name, and because of the similarity of products implied by addition of telecommunications services suffix. All of which suggested a knowledge of the complainant’s rights in the trademarks.
Also, the passive holding of the disputed domain name does not prevent this Panel’s finding on bad faith with respect to both of the disputed domain names. Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut any of the Complainant’s arguments on this point.
The Panel concludes that paragraph 4(a)(iii) of the Policy has been proved. 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.
David H. Tatham
Sole Panelist
Date: July 8, 2013
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