The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Lexington Avocats, France.
The Respondent is Huachao Chen of “Portland, Oregon, China”. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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.
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 July 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2014.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 15, 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 French Company dedicated to design, manufacture and market, among others, luxury hand bags, wallets, purses, luggage and trunks.
The Complainant has offered sufficient evidence to demonstrate that it owns trademark registrations in several countries and regions such as Argentina, Brazil, Canada, China, Colombia, Dominican Republic, the European Union, France, India, Israel, Japan, Kuwait, Mexico, Malaysia, the Philippines, Singapore, South Korea, Turkey, Thailand, the United Arab Emirates, the United Kingdom and the United States of America, among others.
In addition, the Complainant owns the following domain names: Domain Name Registration Date
April 8, 2011
December 8, 2003
December 8, 2003
April 7, 2008
October 28, 2008
The disputed domain name was registered on June 5, 2014. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
(i) Confusing similarity
That the disputed domain name incorporates the well-known trademark GOYARD.
That the other words comprised inside the disputed domain name are the descriptive words “sac” which in French means “bag” and “soldes” which in French means “sales”.
That the addition of these generic words does not affect the confusing similarity that the disputed domain name generates among the Internet users.
That the generic words “sac” and “soldes” increase the likelihood of confusion between the Complainant’s trademarks and the disputed domain name.
That the generic Top Level Domain (gTLD) “.com” is irrelevant for the purposes of analyzing confusing similarity.
(ii) Rights or legitimate interests
That there is no evidence proving that the Respondent is being (or has been) known as “sacgoyardsoldes” or as “goyard”.
That the Complainant has never authorized the Respondent to use the GOYARD trademarks, and that the Respondent is not a manufacturer, licensee or distributor of the Complainant’s goods.
That the Respondent had no previous rights on the “Goyard” term before the GOYARD trademarks were filed by the Complainant and before the Complainant’s company was founded.
That Complainant’s trademarks are well known and widely used.
That the disputed domain name conducts to a website where GOYARD goods can be purchased.
That it appears, from the content of the disputed domain name, that said website is being used as a fake official GOYARD online shop.
That, since the goods offered inside the disputed domain name are being sold at a very low price and in attention to the fact that some of the goods offered inside the disputed domain name do not exist in the Complainant’s range of products, it can be concluded that the disputed domain name markets counterfeited goods.
(iii) Bad faith registration and bad faith use
That GOYARD is the only distinctive word inside the disputed domain name and that it is a well-known trademark, due to the fact that it is an old and widely used trademark.
That the disputed domain name directs Internet users to a web page related to the sale of goods that look like the Complainant’s genuine goods. That all the goods sold at the disputed domain name bear the GOYARD term and/or device.
That by using the well-known GOYARD device on all the fake goods sold inside the disputed domain name it has been demonstrated that the Respondent had knowledge of the Complainant trademarks which proves that Respondent was fully aware of the rights owned by the Complainant.
That the disputed domain name misleads Internet users into believing that they have found an online shop legitimately connected to the Complainant, which is false.
That the Complainant has never sold and will never sell its goods on the Internet.
That the Respondent is using the Complainant’s reputation to generate revenues for itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(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.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487).
Several UDRP panels have decided that the trademark GOYARD is well known (see, e.g., Goyard St-Honoré v. Whoisguard, Whoisguard Protect, Brucef lee, WIPO Case No. D2011-1837; Goyard St-Honoré v.Stefano Rugoletti, WIPO Case No. D2012-1170; Goyard St Honoré v. Li Mei Huang, WIPO Case No. D2012-1173). This Panel agrees. A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for GOYARD.
The disputed domain name is confusingly similar to the Complainant’s trademark GOYARD because it wholly incorporates the Complainant’s GOYARD trademarks.
Other panels have established, that the addition of generic terms has little effects on determining confusing similarity between a domain name and a trademark, and that the mere addition of generic or descriptive terms does not exclude the likelihood of confusion (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). This Panel agrees.
In this case the terms “sac” and “soldes”, which are included in the disputed domain name, do nothing to eliminate the confusing similarity between the disputed domain name and the Complainant’s GOYARD trademarks. Moreover, these terms increase confusion due to the fact that someone entering into the website to which the disputed domain name resolves may think that said site is offering for sale original GOYARD bags, making an immediate association between the disputed domain name and the Complainant.
In attention to the above, it is clear that GOYARD is the dominant term inside the disputed domain name.
The addition of the gTLD “.com” in this case is immaterial for purposes of assessing confusing similarity. To carry into effect the confusing similarity analysis, a UDRP panel will generally not take into account the gTLD “.com”, because it has no legal significance (see Diageo p.l.c. v. John ZuccariniWIPO Case No. D2000-0541).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where Respondents may have rights or legitimate interests in the disputed domain name:
(i) Before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has argued that it has not granted, assigned, licensed, sold, transferred or in any way authorized the Respondent to register or use the GOYARD trademark in any manner. This assertion has not been denied by the Respondent, a situation that further indicates the apparent lack of rights or legitimate interests on the part of the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Respondent has not submitted any evidence showing actual bona fide use, or preparations to use the disputed domain name with a bona fide offering of services, nor has the Respondent demonstrated that it has been commonly known as , or that it is making a legitimate noncommercial or fair use of the disputed domain name. Moreover the Respondent is making a commercial use of the disputed domain name by selling merchandise that resembles the GOYARD marketed goods. The Respondent has not demonstrated that it has any rights over the GOYARD trademarks.
On the other hand, the Complainant has shown that it is the rightful owner of several GOYARD trademarks registered worldwide, including China, which is the place where the Respondent is apparently domiciled.
From the evidence submitted by the Complainant, it can be deducted that the GOYARD trademark was registered in many countries and regions around the world, including China, years before the disputed domain name was registered. Said evidence demonstrates that the GOYARD trademark was registered, marketed and used in several countries and regions around the world years before the Respondent registered the disputed domain name.
The Complainant has offered evidence such as magazines proving the advertisement and presence of the GOYARD trademarks in China.
Thus, it can be inferred that consumers in China and other parts of the world would generally relate the trademark GOYARD to the Complainant and its products.
Based on the Complainant’s trademark certificates and the recognition of the Complainant’s GOYARD trademark worldwide, it is reasonable to infer that the Respondent knew or should have known of the existence of the Complainant’s trademarks, especially considering that the Respondent is apparently selling counterfeit goods.
The evidence comprised on the record shows that the Respondent is causing the disputed domain name to resolve to a web site featuring goods bearing a well-known trademark, attracting and diverting Internet users for commercial gain. Given the circumstances of this case, this cannot be seen as a fair or legitimate use of the disputed domain name (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
Since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, and considering the well known and famous nature of the Complainant’s GOYARD trademarks and the fact that the goods sold at the disputed domain name appear to be counterfeit, the Panel finds no rights or legitimate interests on the side of the Respondent. The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their 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 the Respondent’s website or location or of a product or service on its website or location.
The conduct of the Respondent constitutes a risk of deception and confusion among consumers. Given the use made of the website associated with the disputed domain name, the Panel is satisfied that Respondent knew about the Complainant’s GOYARD trademarks, knowing that by registering the disputed domain name, it would create confusion among Internet users searching for the Complainant’s websites and services.
Since the Respondent is offering for sale goods such as bags, trunks and other products similar to those marketed by the Complainant, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to such website, by creating a likelihood of confusion with the Complainant’s GOYARD famous trademark (see e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143).
Also, the use of the disputed domain name to offer for sale apparently counterfeit goods under the GOYARD trademark is evidence of bad faith (see e.g. Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019; Goyard St-Honoré v. Li Mei Huang, WIPO Case No. D2012-1173).
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. The third element of the Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: August 29, 2014
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