The Complainant is GOYARD ST-HONORE of Paris, France, represented by Lexington, France.
The Respondent is Chou Yuan of Kowloon, Hongkong, China. 2. The Domain Name and Registrar
The disputed domain name is 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 October 11, 2013. On October 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12 and 17, 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 October 17, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 17, 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 October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 22, 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, GOYARD ST-HONORE, is a well-known French luxury goods house established in 1853 by Francois Goyard. The Complainant manufactures and sells luggage and leather goods, mainly wallets, hand bags, purses, etc. under the trademark GOYARD.
The Complainant is the owner of numerous trademark registrations for GOYARD around the world. For example: United States trademark registration No. 1821224, with registration date of February 15, 1994; France trademark registration No. 1633324, with registration date of December 14, 1990; Hong Kong trademark registration No. 300402515, with registration date of April 13, 2005; International trademark registration No. 619536, with registration date of June 21, 1994 and many more.
The Complainant also owns various domain names incorporating the GOYARD trademark and pointing to the Complainant’s official website: , , , and more.
The disputed domain name was registered on December 5, 2012. According to the statements and evidence submitted in the Complaint by the Complainant, the disputed domain name is being used to display a website offering for sale GOYARD branded products at prices (in US dollars) that are considerably lower than those of original GOYARD products and are counterfeited GOYARD goods. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar with its registered trademark GOYARD since it incorporates the Complainant’s well-known mark in its entirety.
The Complainant further argues that the addition of the generic term “womens” does not eliminate the confusing similarity but on the contrary strengthens the confusion between the disputed domain name and the Complainant’s trademark GOYARD because of the direct relation with the Complainant’s products and the Complainant’s business;
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the GOYARD mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods neither is it making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official website of the Complainant.
The Complainant further argues that the disputed domain name directs Internet users to a webpage related to the Complainant’s business and offer for sale counterfeited GOYARD products. The Respondent is using the disputed domain name with the intent to mislead consumers for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant further argues that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.
The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s well-known trademark when registering the disputed domain name.
The Complainant further argues that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the Complainant’s trademarks in the website to which the disputed domain name resolves.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless 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.”
According to the Registrar’s verification response, the language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name is primarily in English with the term “womens” in the English language.
b) The content of the website associated with the disputed domain name is entirely in English, which suggests that the Respondent commands the English language.
c) The Respondent did not object to the language of the proceeding being English.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for the Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding is English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the GOYARD mark around the world: United States trademark registration No. 1821224, with registration date of February 15, 1994; France trademark registration No. 1633324, with registration date of December 14, 1990; Hong Kong trademark registration No. 300402515, with registration date of April 13, 2005; International trademark registration No. 619536, with registration date of June 21, 1994 and many more.
The Complainant is also the owner of several domain names which contain the GOYARD mark: , , , and more.
The disputed domain name differs from the registered GOYARD trademark by the additional word “womens” and the additional generic Top-Level Domain (“gTLD”) “.com”.
The disputed domain name integrates the Complainant’s GOYARD trademark in its entirety, as a dominant element.
The additional word “womens” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a common term in the Complainant’s field of business. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the above words can likely be associated with the Complainant’s business, therefore the combination with “GOYARD” clearly is confusing” (Goyard St-Honoré v. Stefano Rugoletti,WIPO Case No. D2012-1170).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the GOYARD trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent has registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the GOYARD trademark at least since the year 1990. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant has provided substantial evidence that its GOYARD mark is widely known in connection with luxury handbags and luggage. The reputation of the GOYARD mark has also been acknowledged in other UDRP decisions. See, e.g., the Goyard St-Honoré v. Whois Guard Protected, Brucef Lee,WIPO Case No. D2011-1837.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use of a domain name by a respondent, if by using the domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name resolved, 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 to which the disputed domain name resolved.
Given the international reputation of the GOYARD mark and of the GOYARD branded products and the fact that the disputed domain name direct Internet users to a website related to the Complainant’s business, the Panel finds that the Respondent was fully aware of the Complainant’s trademark at the time the Respondent registered the disputed domain name. Such fact shows that the disputed domain name was registered in bad faith (see Goyard St-Honoré v. Stefano Rugoletti, WIPO Case No. D2012-1170).
The Respondent’s use of the highly distinctive trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the complainant (see Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit thereof.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc./T, Mr. Singh,WIPO Case No. D2009-0671).
The evidence shows that the website at the disputed domain name was used by the Respondent to offer for sale GOYARD branded products at prices that are lower than the original GOYARD products. The Complainant asserted that the products offered on the Respondent’s website are counterfeited GOYARD branded products and this assertion has not been rebutted by the Respondent. The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith (see Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019; Hermes International SCA v. Cui Zhenhua,WIPO Case No. D2010-1743.
Further, the Panel finds that the Respondent has incorporated the GOYARD marks on its website in order to attract consumers for commercial gain by purporting to sell official GOYARD products: “Respondent’s bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as ‘necklaces’, ‘bracelets’ and ‘earrings’ using an identical name to the Complainant’s trademark. That past practice confirms not only the Respondent’s awareness that the advertised products were ‘Swarovski’ products, but also the Respondent’s actual use of the Complainant’s name in bad faith” (see Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170). The Panel also notes that the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant.
The Panel finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Date: December 1, 2013
Full & Egal Universal Law Academy