The Complainant is Goyard St-Honoré of Paris, France, represented by Lexington, France. The Respondent is Alice Chan of GuangDong, China. 2. The Domain Names 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 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 names. On April 3, 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. 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 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2014. The Center appointed Christian Schalk as the sole panelist in this matter on May 8, 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. The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The language of the proceedings is English. 4. Factual Background
The Complainant is a French manufacturer of luxury goods, whose range of products mainly consists of hand-bags, wallets, purses, luggage and trunks. It has operated since 1853 under the trade name and trademark GOYARD and markets its products worldwide. The Complainant itself and its products have received a considerable press coverage in renowned International fashion magazines and newspapers.
The Complainant owns trademark registrations in the word mark GOYARD in Europe, the Americas, the Middle East and Asia including:
- French Trademark Registration No. 1633324, filing date January 20, 1981, covering goods and services in Int. Classes 03, 14, 16, 18, 24, 25 and 34;
- U.S. Trademark Registration No. 1821224, filing date November 10, 1990, covering goods and services in Int. Classes 16 and 18;
- U.S. Trademark Registration No. 1821224, filing date November 10, 1990, covering goods and services in Int. Classes 16 and 18;
- Community Trademark Registration No. 4497641, filing date June 20, 2005, covering goods and services in Int. Classes 03, 14, 16, 18, 24, 25 and 34;
- International Trademark No. 619536, filing date June 21, 1994, covering goods and services in the Int. Classes 3, 18 and 25 which protection covers also China.
One main characteristic detail of the Complainant's product is a woven pattern image. It has been created by the Complainant and is subject of trademark registrations in many countries of the world.
The Complainant owns trademark registrations in this design in Europe, the Americas, the Middle East and Asia, including:
- French Trademark Registration No. 1633325, filing date December 14, 1990, covering goods and services in Int. Classes 03, 14, 16, 18, 24, 25 and 34;
- International Trademark No. 874699, filing date November 28, 2005, covering goods and services in the Int. Classes 3, 18 and 25 which protection covers also China;
- Hong Kong Trademark No. 300539307, priority date June 16, 2005, covering goods and services in Int. Class 18 and 25;
- South Korean Trademark No. 40-0700376, filing date December 12, 2005, covering goods and services in Int. Class 18 and 25;
- U.S. Trademark Registration No. 4418288, priority date June 16, 2005, covering goods and services in Int. Class 18;
- Community Trademark Registration No. 4748279, filing date November 28, 2005, covering goods and services in Int. Classes 03 and 18.
The Complainant uses further a design consisting of unusual combination of stylized letters ("G", "O", "Y", "A", R", "D"), which, according to the Complainant, features the personal signature of the founder of the Complainant company, Mr. Goyard.
The Complainant owns trademark registrations in this design mark in Europe, the Americas, the Middle East and Asia, including:
- Hong Kong Trademark No. 300404135, registration date April 16, 2005, covering goods and services in Int. Classes 3, 14, 16, 18, 24 and 25;
- Japanese Trademark registration No. 2512964, application date October 18, 1990, covering goods and services in Int. Classes 6, 8, 14, 18, 25 and 26;
- Chinese Trademark registration No. 8064474, filing date November 14, 2011, covering goods in Int. Class 18;
- U.S. Trademark Registration No. 1709953, priority date October 17, 1995, covering goods and services in Int. Class 16, 18 and 25;
- Community Trademark Registration No. 3664125, filing date February 13, 2004, covering goods and services in Int. Classes 03,18 and 25.
The Complainant owns among others the following domain names: , , , , , and which all resolve to the official website of the Complainant.
The Respondent registered the disputed domain name on October 7, 2013 and the disputed domain name on August 23, 2013. Both disputed domain names are directed to websites with a similar appearance. On the upper left of each website, the company name is displayed in a prominent way. Below there are horizontal and vertical lists of links to different groups or categories of products such as "Goyard Bag" or "Goyard Wallet". The upper center of the website features pictures of persons bearing the Complainant's products. The remainder of the websites displays numerous pictures of bags, wallets, purses etc., purporting to be the Complainant's products. For each of them, a 23% discount is offered.
On the bottom of the website to which the domain name resolves, it is written among others:
"Welcome to our Goyard Outlet! […] Our Online Shop offers the low price best top High Quality Goayrd Replica Handbags, Goyard Replica Luggage, Goyard Replica Wallets for all customers. […] We will try our best to offer you best quality Goyard items, excellent services and quick delivery. We wouldn't keep you waiting long! What's more, we offer Free Shipping Worldwide and pay by Western Union, you will get an extra 15% off. Come to enjoy! - If you have query, please contact us: alicebag@"
The bottom of the website to which the domain name resolves, shows the following text:
"Goyard, founded in 1853, more than 150 years of history, its founder is Francois Goyard, as family box, founded in 1853 , France, the ancestors of Goyard bag replica to loyal to the original history, never compromise creating time here in craftsmanship and creative design, make the maverick bags aesthetics in Paris. [...] Replica Goyard handbag the Y pattern on the canvas as early as in 1892 the first, the first appeared in the adornment design of luggage, appeared earlier than Louis vuitton Monogram service pattern. [...]. Our company has years of experience in world trade, customers all over the world. The quality of the product to get everyone's approval. The products of our company is a 1: 1 AAAAA specifications according to the original product, with goyard patent leather, pure handmade. You are welcome to our company to choose and buy." 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant's registered trademark GOYARD. The Complainant states, in this regard, that the disputed domain names incorporate the term "Goyard" in its entirety. Furthermore, the Complainant believes that the addition of the words "replica", "sale" and "uk" do not negate the confusing similarity created by the Respondent. The Complainant argues that the only purpose of these descriptive words is to inform, particularly in respect of British Internet users, that the websites to which the disputed domain names resolve are selling counterfeited products of the Complainant.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant states that the term "Goyard" has no meaning in any language and that the Respondent is not known under this term. The Complainant further maintains that there is no relation between the parties. The Respondent has neither been authorized by the Complainant to use its GOYARD word marks in any way, nor is the Respondent a manufacturer, a licensee or a distributor of the Complainant.
The Complainant further argues that the Respondent has registered and used the disputed domain names long after the Complainant registered the term "Goyard" as a trademark. The Complainant asserts finally that the Respondent has never used the disputed domain names in connection with a bona fide offer of goods, nor has it made a legitimate noncommercial use of them. The Complainant explains, in this regard, that the disputed domain names resolve to websites where counterfeited goods of the Complainant are offered for sale. The Complainant emphasizes that some of the goods displayed there do not exist in the Complainant's product range and that also their prices are much lower than the prices for the genuine goods. The Complainant concludes that the Respondent is not making fair use of the disputed domain names since they mislead consumers as to the identity of the holder of the website and the origin of the goods that can be purchased there. The Complainant believes therefore, that the only purpose of the Respondent's behavior is to trade on the goodwill of the Complainant's trademarks in order to generate revenue.
The Complainant alleges further that the disputed domain names have been registered and are used in bad faith. The Complainant maintains that the Respondent must have been aware of the Complainant's trademark rights in the term GOYARD, in the GOYARD design as well as in the distinctive woven pattern image. The Complainant explains in this context that all these trademarks are well known given its frequent use throughout the world, and that the Respondent featured them in the disputed domain names and displayed them on the websites. The Complainant further asserts that the disputed domain names direct Internet users to websites bearing the aforementioned word and design marks where the same type of goods as those sold by the Complainant are offered for sale. The Complainant is convinced that Internet users are likely to be misled into believing that they have found, at the concerned website, online shops legitimately connected to the Complainant. The Complainant believes, however, that the goods, bearing the Complainant's word and design trademarks are in fact counterfeit products whose quality does not reach the quality a consumer can normally expect from the Complainant's luxury goods. Furthermore, the Complainant explains in this regard that some of these products do not exist in the Complainant's product range and on the other hand, the prices are too low to be genuine luxury goods. The Complainant further emphasizes that it has never and will never sell its goods on the Internet in order to preserve their luxurious character. In summary, the Complainant asserts that the Respondent intentionally attempted to attract Internet users to its websites by creating confusion with the Complainant's trademarks, the origin of the goods offered for sale, and its relationship with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel shall decide a 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain names can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term"Goyard".
The Panel finds further that the disputed domain names are confusingly similar to the Complainant's trademarks. In accordance with many decisions rendered under the Policy, the addition of descriptive, generic or geographic terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004 0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000 0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004 0565 and Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002 0002).
The terms "sale" and "replica" are generic terms without any distinctive character. The first term simply means that certain products are offered to the public to be purchased by them. The term "replica" is used to describe (mostly illegal) copies of original products. Therefore, Internet users who find websites linked to domain names incorporating these terms usually believe that it is not the Complainant's original products, but somehow (most likely illegal) copies of such products that are offered for sale. The letters "uk" are a common abbreviation for "United Kingdom" and will only be perceived by consumers as an information that the content of the website is directed to persons living in the United Kingdom. As it has been stated in various UDRP decisions, also the addition of a geographic description such as "uk" as part of the domain names does not remove the strong possibility of confusion (see Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited,WIPO Case No. D2010-2204; Montage Hotel&Resorts, LLC v. Daniel Kirchhof/Unister GmbH,WIPO Case No. D2011-1042 and Carlsberg A/S v. Personal/decohouse, decohouse,WIPO Case No. D2011-0972).
Therefore, the terms "sale", "replica" and "uk" do not differentiate the disputed domain names enough to avoid finding of confusing similarity to the Complainant's trademark.
Similarly, the ".com"- and the ".net" suffixes in the disputed domain names do not affect the determination that the disputed domain names are confusingly similar with the term "Goyard" in which the Complainant has trademark rights (see Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and the other cases cited therein).
Therefore, the disputed domain names can be considered as confusingly similar to the Complainant's trademark rights in the term "Goyard".
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
According to the material the Complainant has brought before the Panel, constituting a prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. In particular, there is no evidence that the Respondent is commonly known by the disputed domain names. The Respondent is neither affiliated with the Complainant, nor has the Complainant granted the Respondent a license to use its trademark.
Furthermore, the Respondent has not rebutted the Complainant's allegations on the Respondent's lack of rights and legitimate interests, and has not provided the Panel with any explanations as to whether this is the case or not, or whether there are indeed legitimate reasons for the choice of the disputed domain names. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554). The Respondent has linked the disputed domain names to websites, where unauthorized and most likely counterfeit goods are sold under the Complainant's trademark. Such behaviour cannot amount to a bona fide offering of goods under the Complainant's trademarks (see Goyard St-Honoré v. suying chen,WIPO Case No. D2012-1171).
The Panel believes that the only reason why the Respondent registered and is using the disputed domain names is to redirect Internet traffic intended for the Complainant away from it to the Respondent's websites with the intention to create income for the Respondent. Such behaviour cannot constitute a fair use or a legitimate non-commercial use of the Complainant's trademarks.
The Panel finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non exclusive circumstances, which are evidence of bad faith registration and use of domain names:
(i) circumstances indicating that the respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out of pocket costs directly related to the domain names; or
(ii) the respondent has registered the domain names 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) the respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain names have been registered and are being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, for the following reasons:
It is a principle considered under prior UDRP decisions (see Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain names will not infringe the rights of any third party.
Given the fact that the Complainant's name and company logo is prominently displayed on the websites to which the disputed domain names resolve, the Respondent must have been aware of the Complainant, its products and its trademark rights when the disputed domain names were registered. Therefore, the Panel believes that the Respondent registered the disputed domain names in bad faith.
The Panel also finds that the Respondent is using the disputed domain names in bad faith. The Respondent has directed the disputed domain names to a website where apparently counterfeit products of the Complainant are offered for sale. These products look very similar to the Complainant's products. Especially, they are all designed with the Complainant's woven pattern image in which the Complainant has also trademark rights. According to the Respondent's statements on the websites to which the disputed domain names resolve, the products offered there are "best quality Goyard items" or "are "1:1 AAAAA specifications according to the original product, with goyard patent leather". On the other hand, the Complainant's name and company logo are prominently displayed on the Respondent websites. Therefore, Internet users could believe that there is somehow a link to the Complainant which in fact does not exist, and that the products offered by the Respondent have nearly the same quality as the genuine products of the Complainant or contain at least parts manufactured by the Complainant.
Furthermore, the Respondent enters into commercial competition with the Complainant and the Complainant's goods by advertising what are prima facie counterfeit or fake goods on the websites to which the disputed domain names resolve,. Registering and using the disputed domain names for this purpose, which feature the Complainant's trademarks cannot constitute a bona fide use (see also Goyard St-Honoré v. Ye Shi,WIPO Case No. D2012-1178).
The Panel believes that the only purpose of doing so was to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Given all facts and circumstances of this case, the Panel finds that it is impossible to conceive of any plausibly-legitimate, actual or contemplated active-use of the disputed domain names by the Respondent. The Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Christian Schalk
Sole Panelist
Date: May 22, 2014
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