The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Lexington Avocats, France.
The Respondent is Domain Admin of New York, New York, United States of America / Whois Privacy Protection Service, Inc. of Kirkland, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2014. On April 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2014 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center verified that the Complaint together with 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 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2014.
On May 8, 2014, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 9, 2014 in which it merely replaced the originally named registrant “Whois Privacy Protection Service, Inc.” with the underlying registrant “Domain Admin”, as confirmed by the Registrar. On May 12, 2014, the Center acknowledged receipt of the Complainant’s amended Complaint and noted that the underlying registrant was previously copied on all previous email communications from the Center including the formal commencement of the proceedings on April 16, 2014, which established May 6, 2014 as the formal due date for a response in these proceedings. Nevertheless, in the circumstances, the Center invited the Respondent to provide any comments it may have had on the amended Complaint by May 17, 2014, after which the Center would proceed to appoint a panel. No response was received by the Respondent.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on May 26, 2014. 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 well-known luggage and fashion hand bag designer established in 1853 that takes its name from its founder, Francois Goyard. It holds trademark registrations for the GOYARD in over 25 jurisdictions.
The disputed domain name was registered on October 8, 2013. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a French luxury goods house, operating since 1853 under the trade name and the trademark GOYARD which is the family name of its founder. Furthermore, that it is a luxury trunk maker which designs, manufactures and markets its goods, mainly hand bags, wallets, purses, luggage, trunks, etc., all over the world. Therefore, GOYARD has a high and long-standing reputation, namely for its hand bags which all bear the famous canvas created by GOYARD (which is called “GOYARDINE”) and that has been registered as a trademark in numerous countries.
The Complainant declares that the disputed domain name points to a website where counterfeit GOYARD goods can be purchased. Furthermore, that all the goods offered on the litigious website are counterfeit since, on the one hand, some of them do not exist in the Complainant’s range of products, and on the other hand, the prices are way too low to be those of genuine luxurious goods.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which is confusingly similar to the trademark GOYARD in which the Complainant has rights, and that the Respondent is using the goodwill of the Complainant’s trademark in order to generate revenues for its own benefit.
Consequently, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is satisfied that despite the late filing of the amended Complainant in this case, the Respondent has been adequately notified of the Complaint (and amended Complaint) as all available contact details for the Respondent where used by the Center when it formally notified the Complaint to the Respondent.
For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(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.
In accordance with paragraph 15 (a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules, Supplemental Rules and any principles of law that it deems applicable. A. Identical or Confusingly Similar
The distinctive element in the disputed domain name is the trademark GOYARD in which the Complainant has rights. In the Panel’s view, the descriptive term “outlets” is insufficient to prevent the threshold on Internet user’s likelihood of confusion and confusing similarity as a result. Moreover, the descriptive word “outlets” tends to strengthen the idea that the disputed domain name belongs to the Complainant and identifies the business of the Complainant or a site associated with the Complainant’s business and goods. As to the generic Top-Level Domain (gTLD) “.com” the Panel, in line with many previous UDRP decisions, considers that it may be disregarded under the confusing similarity test.
Hence, the Panel finds that the Complainant has succeeded on this first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a) (ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) sets out various ways in which respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
For these reasons, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has produced evidence to the Panel’s satisfaction to show that the GOYARD trademark has been registered and known around the world and that when Respondent registered the disputed domain name many years after it could not have ignored the fame of Complainant’s GOYARD trademark.
Thus, the Panel deems that the disputed domain name was registered in bad faith to use it to attract for commercial gain, Internet users to Respondent´s website by creating a likelihood of confusion with the Complainant´s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s web site.
The Complainant has proved that the disputed domain name resolves to a website bearing the Complainant’s trademarks and identification elements, and offering for sale the same type of goods than those sold by the Complainant such as leather goods, hand bags, luggage and purses.
In view of the evidence and arguments produced by the Complainant, and in absence of any plausible response from the Respondent, the Panel is prepared to accept that the goods sold through the Respondent’s website are counterfeit, which shows that the disputed domain name was both registered and is being used in bad faith.
Thus, the Complainant has succeeded in making out the third element of the case. 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.
Miguel B. O'Farrell
Sole Panelist
Date: June 5, 2014
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