The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Lexington Avocats, France.
The Respondent is Li Ning of “Guangdongsheng”, Alabama, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names (the “First Domain Name”) and (the “Second Domain Name”) (together the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2014. On May 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 22, 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 May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 24, 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 corporation domiciled in France. It is a supplier of luxury goods specializing in handbags, wallets, luggage and related products.
The Complainant is the owner of registrations for the trademark GOYARD in numerous territories throughout the world. Its registrations include:
- French trademark number 1633324 for GOYARD filed on January 20, 1981 in classes 03, 14, 16, 18, 24, 25 and 34.
- United States trademark number 1821224 for GOYARD filed on November 10, 1990 in classes 16 and 18.
- United Kingdom trademark number 1576425 for GOYARD filed on June 23, 1994 in class 18.
The First Domain Name was registered on May 1, 2014.
The Second Domain Name was registered on May 6, 2014.
At the date of the Center’s formal compliance review, May 28, 2014, both Domain Names resolved to similar websites. Each was headed “GOYARD Malletier Depuis 1853” and offered a range of “Goyard” branded handbags, wallets and other items for sale online. The websites included numerous photographs of such products with descriptions including “Imitation Fake Goyard”, “Replica Classic Goyard” and “Famous Fake Goyard”. 5. Parties’ Contentions A. Complainant
The Complainant states that it has operated as a French luxury goods house under the “Goyard” brand since 1853 and is an internationally renowned supplier of goods including handbags, wallets, luggage and related products. It produces press reports including articles from Vogue and the International Herald Tribune concerning its history and profile. It states that it is particularly well known for its handbags which bear a famous and distinctive design or “canvas” known as the “Goyardine”. The Complainant produces evidence that this design is also registered as a figurative trademark in several jurisdictions.
The Complainant submits that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on, and produces evidence of 27 trademark registrations dating from 1981 for the mark GOYARD in territories throughout the world, including the registrations referred to above. All of these registrations include handbags, trunks, purses, suitcases and related goods in class 18.
The Complainant also relies on its ownership of numerous domain name registrations including , and , all of which resolve to its official website at “www.”.
The Complainant states that the First Domain Name incorporates its GOYARD mark together with the terms “replicas” and “UK” and that the Second Domain Name incorporates its GOYARD mark together with the terms “replica” and “sales”. The Complainant submits that none of these additional, descriptive, terms is sufficient to distinguish the Domain Names from the Complainant’s trademark. The Complainant contends that the terms “replica” and “replicas” would be understood to mean fake or counterfeit items. It submits that the term “sales” merely suggests sales of the Complainant’s goods and the term “UK” is merely indicative of an English-language website. The Complainant adds that the generic Top-Level Domain “.com” must also be disregarded for this purpose.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii) of the Policy).
The Complainant submits that the Respondent has never been known by the name “Goyard”, which has no meaning in commerce other than to refer to the Complainant and its products. Nor does the Respondent have any other prior rights in respect of the Domain Names that predate the registration of the Complainant’s GOYARD trademarks.
The Complainant states that it has no relationship whatsoever with the Respondent and has never authorised it to use its GOYARD mark in any manner. The Complainant states that it manufactures its goods in France in its own factories, controls the marketing process and has no licensees.
The Complainant also submits that the Respondent is not using the Domain Names in connection with any
bona fide offer of goods, nor has it made a legitimate noncommercial use of the Domain Names. On the contrary, the Respondent is using the Domain Names for the sale of counterfeit reproductions of the Complainant’s goods. The Complainant produces print-outs of the Respondent’s websites to which the Domain Names resolve. The Complainant asserts that (apart from the reference to “replicas” in the Domain Names themselves) it believes the goods are counterfeit because of their pricing and because the Respondent’s range includes items that do not exist in the Complainant’s range.
The Complainant submits that the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant contends that the Respondent was obviously aware of its GOYARD trademark when it registered the Domain Names. This is evident from the fact that it has used the Domain Names to sell counterfeit copies of the Complainant’s own products.
The Complainant submits that the use of its GOYARD mark for the purpose of the Domain Names will confuse Internet users and divert customers who may be looking for the Complainant’s authorized website. The potential for confusion is increased by the fact that the Respondent’s websites, which reproduce the Complainant’s word and figurative trademarks, may look to Internet users as though they are authorized GOYARD websites.
The Complainant states that the Respondent’s sale of inferior copies of its products is inevitably damaging to its business and that, in order to maintain the quality of its goods, the Complainant itself does not even sell over the Internet.
The Complainant submits in summary that the Respondent is using the goodwill that attaches to the Complainant’s trademark in order to generate revenues for itself and has intentionally attempted to attract Internet users to its websites by creating confusion with the Complainant’s trademark. The Respondent has also tried 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.
The Complainant requests the remedy of transfer in respect of both of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations for the word mark GOYARD in numerous territories throughout the world. The Panel accepts that in the case of each of the Domain Names the term “goyard” is the dominant and distinctive part of the Domain Name and that the descriptive terms “replicas”, “UK”, “replica” and “sales” do not serve to distinguish the Domain Names from the Complainant’s trademark. Therefore, the Complainant has established that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights and the first element of the test set out under paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not previously been known by the Domain Names and has no interest in the Domain Names that predates the Complainant’s GOYARD mark. It also states that it has no connection with the Respondent and did not authorize it to use its mark for the purpose of the Domain Names. The Complainant further submits that the Respondent is not using the Domain Names in connection with any bona fide offer of goods, nor has it made a legitimate non-commercial use of the Domain Names. On the contrary, it has used the Domain Names to take unfair advantage of the Complainant’s goodwill and to offer for sale counterfeit copies of its goods.
While the Complainant’s contentions give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Names, it was open to the Respondent to respond to this administrative proceeding, to dispute the Complainant’s contentions if appropriate and to provide evidence of any rights or legitimate interests on its part. However, the Respondent has failed to respond and there is no other evidence available to the Panel that suggests that the Respondent has any relevant rights or legitimate interests in the Domain Names.
In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Names and the second limb of the test under paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions that the Respondent has used the Domain Names for the purposes of websites selling counterfeit reproductions of the Complainant’s well-known products.
In the circumstances, the Panel infers that the Respondent both registered and has used the Domain Names in the knowledge of the Complainant’s GOYARD trademark and with the obvious intention of unfairly benefiting from the Complainant’s goodwill in that mark. The Panel finds both that the use of the Complainant’s trademark to sell counterfeit reproductions is inherently unfair and also that, by using the Domain Names, the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or of products on those websites (paragraph 4(b)(iv) of the Policy).
The Panel also notes that the Center’s communications with the Respondent both by email and courier delivery have been returned as undeliverable and that (based on even a cursory Internet search) the postal address provided by the Respondent upon registration of the Domain Names, i.e., “Guangdongsheng, Guangzhoushi, Alabama 54152, United States” is plainly false.
The Panel concludes in the circumstances that the Domain Names have been registered and are being used in bad faith. The third limb of the test under paragraph 4(a) of the policy is therefore satisfied. 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.
Steven A. Maier
Sole Panelist
Date: June 27, 2014
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