The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jose Taveras, Inner Concept Media of New York, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 April 21, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 23, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2016.
The Center appointed Hub J. Harmeling as the sole panelist in this matter on May 27, 2016. 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
Information about the Complainant is drawn from the Complaint.
The Complainant, Pierre Balmain S.A., is a haute couture fashion house that was founded by Pierre Balmain with store locations in over 40 countries worldwide.
The Complainant also maintains a strong Internet and retail presence through its primary website "" as well as its various social media platforms. is the Complainant's primary domain name.
The Complainant is the owner of trademark registrations across various jurisdictions. The Complainant has provided evidence of the following registered trademarks:
(1) BALMAIN, United States Patent and Trademark Office, registration date August 2, 1960, registration number 0702312, class 25.
(2) BALMAIN, United States Patent and Trademark Office, registration date October 7, 2008, registration number 3510331, class 14.
(3) BALMAIN, United States Patent and Trademark Office, registration date June 2, 2009, registration number 3631786, class 25.
(4) BALMAIN, United States Patent and Trademark Office, registration date August 11, 2009, registration number 3665743, class 18.
(5) BALMAIN, United States Patent and Trademark Office, registration date June 23, 2009, registration number 3644366, class 26.
(6) BALMAIN, Canadian Intellectual Property Office, registration date November 18, 1994, registration number TMA436012.
(7) BALMAIN, European Community Trademark (CTM), registration date October 8, 2014, registration number 011745023, class 35.
(8) BALMAIN, International Registration, registration date October 4, 2001, registration number 758712, classes 9, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 30, 33, 34.
(9) PIERRE BALMAIN, International Registration, registration date February, 4, 1955, registration number 183835, class 25.
On January 10, 2016 and February 18, 2016, the Complainant's representative wrote to the Respondent drawing the Respondent's attention to the Complainant's rights and requesting the Respondent to cease the operation of the website located at the Disputed Domain Name , to transfer to the Complainant the rights in the Disputed Domain Name and to refrain from using the Complainant's trademarks without authorization.
The Respondent registered the Disputed Domain Name on January 18, 2016. 5. Parties' Contentions A. Complainant
The Complainant's contentions include the following.
The Complainant claims rights in the trademarks listed in section 4 above and has produced extracts of the United States Patent and Trademark Office, the Canadian Intellectual Property Office, the CTM database and the Romarin database respectively.
The Complainant contends that the Disputed Domain Name is confusingly similar to the trademarks and registered domain name of the Complainant. The Respondent has, according to the Complainant, no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant further contends that the Disputed Domain Name is registered and is being used in bad faith.
The Complainant has cited a number of previous decisions under the Policy that it considers to be supportive of its case.
The Complainant requests the transfer to itself of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that a respondent is required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable provider, in compliance with the Rules, that:
(i) the respondent's 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 domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
In the exercise of its power to undertake limited factual enquiries into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.5), the Panel has visited the website to which the Disputed Domain Name provides access. A. Identical or Confusingly Similar
The Disputed Domain Name is . The Complainant seeks to prove that the Disputed Domain Name is confusingly similar to trademarks registered in the Complainant's name, such as, BALMAIN and PIERRE BALMAIN.
The generic Top-Level Domain ("gTLD") designation of the disputed domain names may generally be disregarded in the consideration of confusing similarity under the Policy, and what remains of the Disputed Domain Name is "balmain".
The Panel finds that the Disputed Domain Name is confusingly similar to the registered trademark BALMAIN for the purposes of paragraph 4(a)(i) of the Policy (Pierre Balmain S.A. v. Yuan Hao,WIPO Case No. D2015-0353). B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.
As evidenced by previous decisions under the Policy, the Complainant has to demonstrate prima facie that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name. Once the Panel is satisfied that this is indeed the case, paragraph 4(c) of the Policy provides for the Respondent to counter the Complainant's assertion (WIPO Overview 2.0, paragraph 2.1).
The Complainant contends that the Respondent has never been authorized to use the BALMAIN trademark in any matter, including in domain dames. The Complainant's rights in its trademarks precede the Respondent's registration of the Disputed Domain Name.
Respondent is not commonly known by the Disputed Domain Name. As the Complainant contends, the WhoIs information identifies the Registrant as "Jose Taveras / Inner Concept Media" which does not resemble the Disputed Domain Name in any manner.
The Complainant contends that the Disputed Domain Name is being used by the Respondent for use with a "pay-per-click" service or at least some other form of third party advertising which sole purpose is to collect click-through revenues from advertising links. The Respondent did not present evidence of fair use or noncommercial use of the Disputed Domain Name. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. (Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708).
In the absence of a response to the Complaint after the Respondent had been properly notified, and in view of its findings when visiting the relevant website, the Panel is of the view that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Panel understands that any, or at least a selection of, clicks by visitors to the relevant website generates income for the Respondent. Considering that such clicks are by their nature triggered by the Disputed Domain Name, and, logically, notably the "Balmain" component thereof, the Panel accepts that the Disputed Domain Name is used for the Respondent for its financial benefit.
In view also of the above findings by the Panel, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) of the Policy states that if the Panel finds that the Respondent has used the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website, it should be taken as evidence of the registration and use of the Disputed Domain Name in bad faith.
The Panel finds that the evidence submitted by the Complainant supports a finding of bad faith under paragraph 4(b)(iv) of the Policy. The Respondent's use of the Disputed Domain Name attracting Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the Disputed Domain Name is confusingly similar to the BALMAIN trademark and the Complainant's own domain name. The fact that the website at the Disputed Domain Name includes links to sites offering competing products as the Complainant aggravates the likelihood of confusion.
Furthermore, as the Complainant contends, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of other well-known fashion houses such as , and . This constitutes a pattern of conduct. (Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968).
Finally, the Respondent did not respond to the Complainant's cease-and-desist letter, which provides "strong support for a determination of 'bad faith' registration and use" (Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330).
Thus, the Panel concludes that Complainant has established the third element 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.
Hub J. Harmeling
Sole Panelist
Date: June 28, 2016
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