The Complainant is Goyard St-Honoré of Paris, France represented by Lexington Law, France.
The Respondent is qian, zhang of Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2013.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 13, 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 paragraph 7 of the Rules. 4. Factual Background
This case concerns the disputed domain name which was registered on January 13, 2013.
The Complainant is the registered owner of trademarks in various jurisdictions for GOYARD. The earliest of its registered marks date from 1981 in France. These include trademark rights recognized in the United States of America, France, Hong Kong (China), Taiwan (Province of China), and China prior to the creation of the disputed domain name in 2013.
The Complainant operates websites at various domain names, including (registered in 1998), (registered in 1994), and (registered in 1999).
The Complainant is a long-standing French luxury goods house operating since 1853. The Complainant is a designer, manufacturer, and marketer of goods including hand bags, wallets, purses, luggage, and trunks. The Complainant’s mark derives from the name of its founder, Maison Goyard.
The Complainant has been a complainant in past cases under the Policy relating to its GOYARD mark. Recently, in Goyard St-Honoré v. Li Mei Huang,WIPO Case No. D2012-1173 which involved domain name ), the panel in that case found that the Complainant has rights in its GOYARD trademark acquired through use and registration.
Past UDRP decisions involving the Complainant have also involved a number of cases with respondents with an address in China. These include Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming,WIPO Case No. D2012-1161 (which involved the domain name ); Goyard St-Honoré v. Kim Yong,WIPO Case No. D2012-1168 (which involved the domain name ); Goyard St.Honoré v. Cai Jin Yong,WIPO Case No. DCO2012-0007 (involving the domain name ); and Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono,WIPO Case No. D2012-1158 (which involved the domain name ).
In the absence of a Response, there is little direct evidence of the Respondent. The Complainant provides evidence that the disputed domain name directs Internet users to a web page related to the Complainant's business. The website and goods offered for sale are all bearing the GOYARD device trademark registered worldwide, including in the alleged country of the Respondent. The Complainant claims counterfeit GOYARD goods can be purchased. The Complainant provided a screenshot of that website as it was on October 22, 2013. The text of the website is largely in Japanese and features the Complainant’s mark and, apparently, various of its products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or confusingly similar to its GOYARD mark. This is because the domain name incorporates the Complainant’s mark in its entirety and adds a descriptive term that is generic and not sufficient to avoid confusion. Rather, the descriptive term is directly linked to the Complainant’s use of its mark and, as such, increases the likelihood of confusion.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or GOYARD. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use its GOYARD word mark in any fashion. Indeed, the Complainant says that it manufactures its goods in France in its own factories, controls all marketing processes, and has no licensee.
The Complainant also alleges that the disputed domain name was registered and has been used in bad faith. The Complainant’s mark is very well-known. The disputed domain name directs Internet users to web pages related to the Complainant’s business. The Complainant says that this circumstance obviously reveals the Respondent’s knowledge of the Complainant’s trademark and business at the time of registration, and therefore, the Respondent’s bad faith registration of the disputed domain name. Indeed, the Complainant states that it has never and will never sell its goods on the Internet because they are luxury products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which must be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the Respondent’s 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 domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith. These elements are discussed in turn below.
The Panel must decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. 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
In the present case, the Complainant has provided evidence that it has registered trademark rights in its GOYARD mark. For the purpose of paragraph 4(a)(i) of the Policy, the disputed domain name is not identical to that mark. The issue, then, is whether the disputed domain name is confusingly similar. In deciding this question, it is well-established that the “.com” extension is to be disregarded.
The disputed domain name wholly incorporates the Complainant’s registered mark as the first-appearing element. In prior UDRP decisions, it has been widely held that a domain name which wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See e.g. BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson,WIPO Case No. D2008-1338.
The disputed domain name adds a generic term with an obvious association with the Complainant’s business (e.g. “charming”). It is well-established that the addition of such non-distinctive text to a domain name which wholly incorporates the Complainant’s mark does little to avoid a finding of confusing similarity. See e.g. Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434. Thus, the Panel finds that the addition of that term, which is descriptive of the Complainant’s business, serves to increase the likelihood of confusion. See e.g. Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman,WIPO Case No. D2004-0627.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GOYARD mark B. Rights or Legitimate Interests
There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain name.
The general consensus of panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). On this approach, 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 the 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.
In this case, the Complainant has established a strong prima facie case against the Respondent. The Respondent has failed to come forward with any allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, and, further, there is no evidence in the case file that would demonstrate that the Respondent had such rights or legitimate interests.
For example, there is no evidence that the Respondent is known under the disputed domain name or GOYARD. The disputed domain name has no known meaning in English or Chinese, which is the purported language of the Respondent and in Japanese, which is the language of the website. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the GOYARD word mark. Significantly, the Respondent has not disputed the Complainant’s contention that all of the goods offered on the Registrant’s website are counterfeit.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the cirucmstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
Bad faith can be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the domain name without having knowledge of the Complainant.
The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319).
Moreover, on the evidence in the Complaint, the disputed domain name reverts to a website which creates the impression of being associated with the Complainant. That website was apparently established for the purpose of the offer for sale of the Complainant’s products (allegedly counterfeit products). It is, as such, a site that was apparently established for commercial gain. That site contained the Complainant’s mark and products. Combined with the registration of the disputed domain names that wholly incorporate the Complainant’s mark, as well as many terms descriptive of the Complainant’s business, it is highly unlikely that the Respondent was not aware of the Complainant and registered the disputed domain name to benefit from the confusion it would create.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that the disputed domain name “has been registered and is being used in bad faith” by the Respondent. 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.
Andrew J. Park
Sole Panelist
Date: December 27, 2013
Full & Egal Universal Law Academy