Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Lexington Avocats, France.
Respondent is Sheo Houw of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (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 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 15, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On July 15, 2014, the Complainant confirmed its request that English be the language of the proceeding. 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on July 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 11, 2014.
The Center appointed Yijun Tian 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
Complainant, Goyard St-Honoré, is a company incorporated in Paris, France. Complainant is a French luxury goods house, operating since 1853. It is a leading luxury trunk maker which designs, manufactures and markets its goods, such as hand bags, wallets, purses, luggage and trunks, all over the world.
Complainant has exclusive rights in several registered word marks for GOYARD (hereafter "GOYARD Marks") globally (Annexes 3 to 29 to the Complaint), including an international registration covering China (International Trademark Number 619536 GOYARD, registered in 1994; Annex 16 to the Complaint). It also owns several domain names, such as (since January 2, 1998), (since December 8, 2003), (since December 8, 2003), (since April 7, 2008), (since October 28, 2008), (since March 3, 2006) and (since May 14, 1999) to exploit its official website (Annexes 30 to 36 to the Complaint).
Respondent is Sheo Houw of Xiamen, Fujian Province, China. The disputed domain name was registered on June 14, 2014. 5. Parties' Contentions A. Complainant
(a) The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights
Complainant registered the word mark GOYARD in various countries throughout the world (Annexes 3 to 29 to the Complaint), including an international registration covering China.
All these trademarks are registered, at least, in class 18 and all designate handbags, trunks, suitcases, purses and related goods for which the GOYARD Marks are widely used and particularly renowned.
The above-mentioned trademarks are all word marks aimed at protecting the name "Goyard".
Complainant registered several domain names such as, , , , >, , and to exploit its official website (Annexes 30 to 36 to the Compliant).
The disputed domain name incorporates Complainant's well-known trademark GOYARD in its entirety.
The additional feature to the disputed domain name is the descriptive word "store" that cannot be considered sufficient to avoid confusion between the disputed domain name and Complainant's trademark.
This additional descriptive word "store" is used to inform Internet users that this specific website is selling so-called Goyard products. It will not serve to distinguish the disputed domain name from the GOYARD Marks and it obviously increases the likelihood of confusion between the trademarks and the disputed domain name.
The adjunction of the generic ".org" extension is irrelevant as it is well established that the generic Top-Level Domain is not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity of Complainant's trademark and the disputed domain name.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no indication in the WhoIs (Annex 1 to the Complaint) that Respondent is known under the disputed domain name, or under the name "Goyard".
Goyard has no meaning whatsoever in English, which is the language of the website, or in any other language (Annex 41 to the Complaint). It is a purely distinctive term that is only used by Complainant in the course of its activities.
The word Goyard does not describe or designates the goods offered for sale on the litigious website "www." (such as hand bags, luggage, etc., Annexes 44, 41 to 42 to the Complaint).
Complainant has no relationship whatsoever with Respondent and has obviously never authorized Respondent to use its GOYARD Marks in any way. Respondent is not a manufacturer, a licensee or a distributor of Complainant and it does not intervene in any lawful manner in the course of activities of Complainant.
Respondent has no prior right in the disputed domain name. Respondent has never used the term Goyard before the creation of Complainant, the beginning of Complainant's business (150 years ago) or the filing of Complainant's trademarks.
Complainant's trademarks and name GOYARD are very well known since it is an old and widely used mark throughout the world (Annexes 3 to 36, 39 to 40 to the Complaint) which is used in relation with luxury leather goods.
Respondent has never used the disputed domain name in connection with a bona fide offer of goods, nor made a legitimate noncommercial use of the disputed domain name.
The disputed domain name points to a website where counterfeit Goyard goods can be purchased. The website bears all other Complainant's trademarks that enable the consumers to identify the brand and it therefore appears to be a fake official Goyard online shop (Annexes 43 to 44 and 3 to 29 to the Complaint).
Complainant declares that all the goods offered on the litigious website are counterfeit.
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.
Respondent is trading on the goodwill of Complainant's trademarks in order to generate revenues.
(c) The disputed domain name was registered and is being used in bad faith.
(i) the disputed domain name has been registered in bad faith.
"Goyard" is the only distinctive word of the disputed domain name and that the word "store" does not have any distinctive character in relation with the online sale of bags.
Complainant's GOYARD Marks are very well known, because it is an old and widely used mark throughout the world (Annexes 16, 18, 39, 40, 38 to the Complaint and confirmed by previous UDRP cases).
The disputed domain name directs Internet users to a web page related to the sale of leather goods that look like Complainant's genuine goods. The website and the goods offered for sale are all bearing the well-known GOYARD canvas which is registered as a trademark worldwide (Annex 43 to the Complaint).
By using Complainant's well-known GOYARD Marks on all the fake goods offered for sale on the website at the disputed domain name, Respondent reveals its knowledge of Complainant's trademark and goods at the time of registration.
The website at the disputed domain name appears to be a fake Goyard website misleading consumers and tarnishing Complainant's reputation. Respondent is attempting to divert customers from Complainant's genuine goods and thus, disrupts Complainant's business.
It is undeniable that Respondent was fully aware of the rights owned by Complainant when it chose to register the disputed domain name.
(ii) The disputed domain name is being used in bad faith.
The disputed domain name directs Internet users to a website bearing all GOYARD Marks and identification elements, and offering for sale exactly the same type of goods than those sold by Complainant (e.g. leather goods, hand bags, luggage, purses etc., Annexes 3 to 29, 43 and 44 to the Complaint).
Internet users are likely to be misled into believing that they found, with the litigious website, an online shop legitimately connected to Complainant.
The litigious website sells goods bearing Complainant's word and figurative trademarks and it is obvious that all the goods offered 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.
Complainant manufactures its goods in France in its own factories, controls all the marketing process and has no licensee (Annex 39, pages 3 and 4 to the Complaint). Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use its GOYARD Marks in any way.
Complainant states that all the goods offered are counterfeit. Complainant has never and will never sell its goods on the Internet in order to preserve their luxurious character. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
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 on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The website at the disputed domain name is entirely written in English, which means that Respondent is familiar with English.
(b) The registration agreement between Respondent and Registrar is not accessible online. Complainant was unable to know the language of this agreement.
(c) In case the Center believes that Respondent would not be sufficiently familiar with English, Complainant requests that the proceeding shall not be conducted in Chinese as the cost to translate all the documents in Chinese would be so high that it would be contrary to the right to a fair trial and would prevent Complainant from following this procedure.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:
"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement". (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from France, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the website at the disputed domain name (the "Infringing Website) is in English and the disputed domain name includes the Latin characters "Goyard" and the English word "store" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in the English language, rather than Chinese script; (b) the Infringing Website is an English-based website and Respondent is apparently doing business in English through this website (Annex 44 to the Complaint); (c) the Infringing Website appears to have been directed to users around the world (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant's request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by 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 Panel finds that Complainant has rights in the GOYARD Marks acquired through registration. The GOYARD Marks have been registered worldwide including an international registration covering China, and Complainant has a widespread reputation as a world leading luxury trunk maker which designs, manufactures and markets its goods, such as hand bags, wallets, purses, luggage and trunks.
The disputed domain name comprises the GOYARD Marks in their entirety. The disputed domain name only differs from Complainant's trademark by the additions of a hyphen "-" and the term "store" to the GOYARD Marks. This does not eliminate the confusing similarity between Complainant's registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere additions of "-" and the descriptive term "store" as suffixes to Complainant's mark fails to distinguish. By contrast, it may increase the likelihood of confusion. One of common meanings of the term "store" is an establishment where merchandise is sold, usually on a retail basis. Consumers who visit the website "" are likely to be confused and may falsely believe that the disputed domain name is operated by Complainant for selling Goyard-branded products. (See Swarovski Aktiengesellschaft v. Hao Chen,WIPO Case No. D2011-1223; and Groupe Auchan v. Zhenghui,WIPO Case No. D2011-2123).
Thus, the Panel finds that the additional suffixes are not sufficient to negate the confusing similarity between the disputed domain name and the GOYARD Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel 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 respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the GOYARD Marks globally (international registration since 1994), including registrations in China – which long precede Respondent's registration of the disputed domain name (June 14, 2014).
Respondent is not an authorized dealer of Goyard-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word "Goyard" in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the GOYARD Marks or to apply for or use any domain name incorporating the GOYARD Marks and Respondent has, through the use of a confusingly similar disputed domain name and webpage contents, created a likelihood of confusion with the GOYARD Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the Infringing Website, potential partners and end users are led to believe that the Infringing Website "www." is either Complainant's site or a site of an official authorized partner of Complainant, which it is not.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on June 14, 2014. The disputed domain name is confusingly similar to Complainant's GOYARD Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Goyard products at the Infringing Website "www.".
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. 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 disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the GOYARD Marks with regard to its products. Complainant has registered its GOYARD Marks internationally (since 1994), including an international registration covering China. Moreover, according to the information provided by Complainant, Respondent states that "Copyright © 2014 www.. Powered by goyard bags" on the Infringing Website. Furthermore, the Infringing Website offers for sale a variety of Goyard products such as "goyard Fidji bag", "goyard Laptop Handbag", "goyard Luggages", "goyard Marquises bag" and more.
Respondent would not have advertised products purporting to be Goyard products on the Infringing Website if it was unaware of Complainant's reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the GOYARD Marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Swarovski Aktiengesellschaft v. Zhang chao, WIPO Case No. D2013-1964).
Moreover, Respondent has chosen not to formally respond to Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant. b) Use in Bad Faith
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites" offering Complainant's Goyard branded products and services without authorization. Complainant claimed that "Respondent has never used the disputed domain name in connection with a bona fide offer of goods, neither made a legitimate non-commercial use of the domain name".
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the GOYARD Marks (as well as the affiliation statement on the Infringing Website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name and Infringing Website have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Infringing Website. In other words, Respondent has, through the use of a confusingly similar disputed domain name and webpage contents, created a likelihood of confusion with the GOYARD Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the Infringing Website, potential partners and end users are led to believe that the Infringing Website "www." is either Complainant's site or a site of an official authorized partner of Complainant, which it is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Infringing Website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: August 21, 2014
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