Complainant is Goyard St-Honore of Paris, France, represented by Cabinet Lexington Avocats, France.
Respondent is luodayou, qiruishiyemaoyi of Yinchuan, Ningxia, China / Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (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 disputed domain name. On May 23, 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 sent an email communication to Complainant on May 28, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 28, 2014.
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 Respondent of the Complaint, and the proceedings commenced on May 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 25, 2014.
The disputed domain name was set to expire on June 1, 2014, the day after the commencement of the Proceedings. Under ICANN's Expired Domain Deletion Policy Paragraphs 3.7.5.7, either a complainant or respondent in a domain name proceeding may renew the registration for the domain name so that the administrative procedure can continue. In this dispute Complainant renewed the registration, which was confirmed by the Registrar on June 5, 2014.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on July 2, 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
Complainant designs, manufactures and sells luxury goods, mainly handbags, wallets, purses, luggage, and trunks, around the world. Since 1853, Complainant has operated under the Goyard trade name, which is also the family name of the founder. Complainant owns GOYARD marks in over two dozen countries. Complainant's goods bear the famous canvas called "Goyardine", which was created by Goyard and has been registered as a trademark in numerous countries. Complainant's design mark bearing its logo is also registered in numerous countries.
Complainant also owns various domain names that incorporate the GOYARD mark.
Respondent registered the disputed domain name on June 1, 2013. Respondent's website contains the GOYARD word and design marks, and shows products that appear to be the same as Complainant's goods. 5. Parties' Contentions A. Complainant
Complainant asserts that it has rights in the GOYARD trademark. It contends that the disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's GOYARD mark in its entirety, and that the only difference between Complainant's mark and the disputed domain name is the addition of the common word "bags," and the year in which the domain name was registered. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As set forth above, Complainant has sold its products under the GOYARD mark since 1853. Complainant owns GOYARD marks in over two dozen countries, as well as international marks. Complainant's goods bear the famous canvas called "Goyardine", which was created by Goyard and has been registered as a trademark in numerous countries. Complainant's logo also has been registered as a trademark in numerous countries. These facts were noted in previous WIPO UDRP decisions. It is clear that Complainant has rights in the GOYARD mark.
The disputed domain name is confusingly similar to Complainant's GOYARD mark, in that it contains Complainant's GOYARD mark in its entirety. The only difference between Complainant's mark and the disputed domain name is the addition of the common word "bags," and the year in which the disputed domain name was registered. Numerous previous WIPO UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from Complainant's mark or preclude a finding of confusing similarity. See, eg, Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the GOYARD mark and that the disputed domain name is confusingly similar to Complainant's mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the GOYARD mark and has not authorized Respondent to register and use the disputed domain name. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the GOYARD mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
"for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 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 web site or location or of a product or service on your web site or location."
It is difficult to conceive that Respondent did not know of Complainant's mark and products when Respondent registered the disputed domain name. As set forth above, since 1853 Complainant has used the GOYARD mark for its handbags, wallets, purses, luggage, and trunks, around the world. All of this occurred before Respondent registered the disputed domain name in 2013. Further, the disputed domain name reverts to web pages containing Complainant's purportedly counterfeit products, including the GOYARD mark, Goyardine fabric, and the Goyard logo. Based on these facts, this Panel infers that Respondent was aware of Complainant's mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
The products sold on Respondent's website appear to be identical to Complainant's products, including the GOYARD mark, Goyardine fabric, and the Goyard logo, but sold at much lower prices. In the Panel's assessment, Respondent's website is used to offer for sale purportedly counterfeit GOYARD products, and disrupt Complainant's business. Other UDRP panels have held that the sale of counterfeit products is a strong indication of bad faith under paragraph 4(b)(iii) of the Policy. See Guccio Gucci SpA v Liuqing Wu, Feiji Lu, WIPO Case No. D2011-1506; Moncler Srl v Linsaihui, WIPO Case No. D2010-1676; Prada S.A. v Domains for Life, WIPO Case No. D2004-1019.
It also is clear that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' website or of a product or service on Respondent's website, thus using Complainant's mark in bad faith. The disputed domain name reverts to web pages showing products which appear to be identical to Complainant's products, and which are sold under Complainant's GOYARD mark. The content appears designed to reinforce the Internet user's impressions that the disputed domain name belongs to Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelry, LLC v ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.
The Panel finds that Respondent has registered and used the domain name in bad faith under paragraph 4(b) of the Policy. 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.
Sandra A. Sellers
Sole Panelist
Date: July 14, 2014
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