The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Lexington Avocats, France.
The Respondent is Yu Feishan of Wuhan, Hubei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2014. On April 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4 and 7, 2014, 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 April 11, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On April 11, 2014, 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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 16, 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, Goyard St-Honoré, is a French luxury goods house, operating since 1853 under the trade name and trademark GOYARD which is the family name of its founder. It is in the business of designing, manufacturing and marketing its goods ‒ mainly hand bags, wallets, purses, luggage, trunks, etc. ‒ all over the world.
The Complainant is the registered owner of the word mark GOYARD in various countries throughout the world including the United States of America, Argentina, Brazil, the United Kingdom of Great Britain and Northern Ireland, Canada, Columbia, the European Union, Dominican Republic, United Arab Emirates, Philippines, France, India, China, Israel, Japan, Kuwait, Malaysia, Mexico, Oman, Saudi Arabia, Singapore, South Korea, Thailand, Tunisia and Turkey. The mark GOYARD is registered in class 18 and is used widely on handbags, trunks, suitcases, purses and related goods.
The Complainant also has a substantial presence in the Internet and has registered several domain names such as: , , , , , and in the promotion of its goods and services.
The disputed domain name was created on January 4, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. The disputed domain name incorporates the Complainant’s trademark GOYARD in its entirety.
2. The additional features to the disputed domain name are the descriptive words “bags”, “online” and “2014”. It is well established that when the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not negate the confusing similarity between the disputed domain name and the mark. On contrary, since the Complainant offers goods that include bags, the “bags” component of the disputed domain name increases the likelihood of confusion. The addition of the descriptive words “bags”, “online” and “2014” are used to inform Internet users that this specific website is selling online so-called GOYARD bags and pouches. It will not serve to distinguish the disputed domain name from the Complainant’s GOYARD trademark and it obviously increases the likelihood of confusion between the trademarks and the disputed domain name.
3. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant as it is well established that the gTLD is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainant’s trademark and the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. There is no indication in the WhoIs that the Respondent is known under the disputed domain name, neither under the name “Goyard”. In addition, “Goyard” has no meaning whatsoever in English, which is the language of the website at the disputed domain name. It is a distinctive term that is only used by the Complainant in the course of its activities.
2. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use its GOYARD word marks in any way. Moreover, the Respondent is not a manufacturer, a licensee or a distributor of the Complainant and he has no dealings with the Complainant in any lawful manner in the course of business activities of the Complainant.
3. The Respondent has no prior right in the disputed domain name. Indeed, the Respondent had never used the term GOYARD before the establishment of the Complainant’s company GOYARD ST-HONORE 150 years ago.
4. The Complainant’s trademarks and name GOYARD are very well known since it is an old and widely used mark throughout the world which is used in relation with luxury leather goods.
5. The Respondent has never used the disputed domain name in connection with a bona fide offer of goods, neither made a legitimate noncommercial use of the disputed domain name. The disputed domain name points to a website where counterfeiting GOYARD goods can be purchased. The website bears all the other Complainant’s trademarks that enable the consumers to identify the brand and it therefore appears to be a fake official GOYARD online shop.
6. The Complainant asserts that all the goods offered on the litigious website are counterfeit since, some of them do not exist in the Complainant’s range of products, and furthermore the prices are far too low to be those of genuine luxurious goods.
7. The Respondent is not making a fair use of the disputed domain name. The disputed domain name and the website mislead consumers on the identity of the holder of the website and the origin of the goods that can be purchased. The Respondent is trading on the goodwill of the Complainant’s trademarks in order to generate revenues.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Complainant’s GOYARD trademark is very well known, because it is an established and widely used mark throughout the world. The term “Goyard” is the only distinctive word and is incorporated its entirety in the disputed domain name.
2. The disputed domain name directs Internet users to a web page related to the sale of leather goods that look like the Complainant’s genuine goods. The website and the goods offered for sale all bear the well-known GOYARD canvas which is registered as a trademark worldwide since it constituted the signature of the Complainant.
3. By using the Complainant’s well-known GOYARD device on all the fake goods offered for sale on its website, the Respondent shows that he has knowledge of the Complainant’s trademark and goods at the time of registration. The website appears to be a fake GOYARD website misleading consumers and tarnishing the Complainant’s reputation. Therefore, the Respondent is attempting to divert customers from the Complainant‘s genuine goods and thus, to disrupt the Complainant’s business.
4. The disputed domain name directs Internet users to a website bearing all GOYARD trademarks and identification elements, and offering for sale exactly the same type of goods as those sold by the Complainant such as leather goods, hand bags, luggage, purses etc. Therefore, Internet users are likely to be misled into believing that they found, with the Respondent’s website, an online shop legitimately connected to the Complainant.
5. The Respondent’s website sells goods bearing the Complainant’s word and figurative trademarks and it is obvious that all the goods offer for sale on this website are in fact counterfeiting products whose quality does not reach the quality a consumer can normally expect from a luxury good. Indeed, the Complainant manufactures its goods in France in its own factories, controls all the marketing process and has no licensee. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use its GOYARD marks in any way.
6. The Complainant states that all the goods offered are counterfeit since some of them do not exist in the Complainant’s range of products and the prices are far too low to be those of genuine luxurious goods. Furthermore, the Complainant has never and will never sell its goods on the Internet in order to preserve their luxurious character.
7. The registration and the use of a domain name in the sole purpose of selling counterfeit goods is a strong evidence of bad faith. The Respondent is using the goodwill of the Complainant’s trademark in order to generate revenues for himself. Thus, the Respondent intentionally attempted to attract Internet users to its website by creating confusion with the Complainant’s trademark. The Respondent also tries to create confusion as to the origin of the goods offered for sale and regarding its relationship with the Complainant. Such use constitutes bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English.
After considering the circumstances of the present case and the submission from the Complainant, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“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.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) The website upon which the disputed domain name points to is entirely written in English and appears to indicate that the Respondent is familiar with English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the GOYARD mark in connection with handbags and related products. The Panel finds that the Complainant’s GOYARD mark is widely-known for hand bags, wallets, purses, luggage, trunks and other fashion items offered by the Complainant.
In assessing the degree of similarity between the Complainant’s trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademarks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name incorporates in the entirety the Complainant’s registered GOYARD mark, with the addition of the descriptive terms “bags”, “online”, “2014” and gTLD “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “goyard” which is identical to the Complainant’s registered trademark GOYARD. Given the fame and notoriety of the Complainant’s GOYARD mark, the addition of the terms “bags”, “online” and “2014” does not provide sufficient distinction from the Complainant’s trademark. On the contrary, the addition of the words “bag”, “online” and “2014” may serve to heighten consumer confusion as it relates to products usually sold by the Complainant and for which the GOYARD mark is used. Furthermore, it is also an accepted principle that the addition of gTLDs such as “.com” is generally not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s GOYARD mark and (b) the lack of distinguishing factors between the disputed domain name and the Complainant’s mark, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the GOYARD mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) there is no evidence of a legitimate use by the Respondent of the disputed domain name or reasons to justify the choice of the term “goyard” used in conjunction with descriptive terms “bags”, “online” and “2014”;
(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the GOYARD mark;
(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) the Complainant and its GOYARD mark enjoy a widespread reputation and high degree of recognition in connection with bags and other fashion items and the GOYARD mark is registered in many countries all over the world, including China in which the Respondent appears to reside. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the GOYARD mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, 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, even if the respondent has acquired no 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 Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) A respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of the disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the disputed domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its GOYARD trademark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
Furthermore, the Complainant has established a substantial presence on the Internet through the registration of several domain names, including , , , , , and which point to the Complainant’s official website in the respective jurisdictions. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s GOYARD branded products on its website without the consent of the Complainant. The Respondent is not an authorized agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use GOYARD mark in the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s GOYARD trademark and a lack of plausible explanation for the choice of incorporating the Complainant’s well known trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to purportedly sell the goods which appear to originate from the Complainant without authorisation is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Date: June 6, 2014
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