The Complainant is Nicolas Ghesquière, France, represented by Cabinet Bouchara, France.
The Respondent is Boudewijn Crutzen, Netherlands, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2019, 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 the Complainant on December 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Dutch to the Parties regarding the language of the proceeding. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 16, 2020, including a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Center verified that the Complaint together with the amended 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 in English and Dutch of the Complaint, and the proceedings commenced on December 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. On January 5, 2020, the Respondent requested an extension of the Response due date. On January 6, 2020, the Center granted the Respondent an additional four calendar days to respond and confirmed the new Response due date was January 11, 2020. The Response was filed with the Center on January 10, 2020. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 21, 2020. 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, Nicolas Ghesquière, is a French fashion designer who has been creative director of the fashion house Balenciaga from 1997 to 2012. He currently is creative director of the fashion house Louis Vuitton since 2013. The Complainant was named avant-garde designer of the year at the Vogue Fashion Awards in 2000, and Womenswear Designer of the Year by the Council of Fashion Designers of America (CFDA) in 2001. In 2006, Times magazine named the Complainant one of the 100 most influential people in the world. Through his company NG Brand, the Complainant owns trademark registrations consisting of the name NICOLAS GHESQUIèRE in numerous jurisdictions, including the following: - NICOLAS GHESQUIèRE, European Union trademark no. 017969592 registered on March 21, 2019, in classes 3, 4, 9, 14, 16, 18, 21, 24, 25, 26, and 35; - NICOLAS GHESQUIèRE, International trademark No. 1460858 registered on October 17, 2018, in classes 3, 4, 9, 14, 16, 18, 21, 24, 25, 26, and 35. The Respondent, Boudewijn Crutzen, is a Dutch citizen. The Disputed Domain Name was registered on July 20, 2009. The Disputed Domain Name currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith because of the implausibility of any good faith use to which the Disputed Domain Name may be put. B. Respondent The Respondent contests that the Complainant could claim trademark protection at the time of registration of the Disputed Domain Name. The Respondent further claims that he is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. According to the Respondent, the Disputed Domain Name has been registered to informatively display the history of Saint Nicholas by sources and references for social importance. 6. Discussion and Findings 6.1. Preliminary Procedural Issue: Language of proceedings 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, subject to the authority of the Panel to determine otherwise. According to information received from the concerned registrar, the language of the registration agreement for the Disputed Domain Name is Dutch. The Complaint has been submitted in English. UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include: - evidence showing that the respondent can understand the language of the complaint; - potential unfairness or unwarranted delay in ordering the complainant to translate the complaint; - other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the Respondent did not ask for any translation of the Complaint and filed his Response in English. In these circumstances, the Panel finds it fair and efficient to use English as the language of the present proceeding. 6.2 Substantive elements of the Policy Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed he must prove, within the meaning of paragraph 4(a) of the Policy, that: (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. The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which he has rights. The Complainant has established that there is a trademark in which he has rights. The NICOLAS GHESQUIèRE marks, registered through the company NG Brand, have been registered and used, including in connection to his services as a fashion designer. Although the Complainant does not provide proof of the link between the company NG Brand and the Complainant, the Panel was able to verify this information. The Panel notes that the Disputed Domain Name has been registered years before the Complainant’s registered trademarks. However, the date of registration of a complainant’s mark is not considered relevant to the first element test. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element (see sections 1.1.2 and 1.1.3 WIPO Overview 3.0). Moreover, the Complainant also relies on unregistered trademark rights in his personal name. The Complainant claims he has used his name as a trademark in commerce well prior to the date of registration of the Disputed Domain Name. The Respondent contests this claim. According to the Respondent, the evidence provided by the Complainant does not show that the NICOLAS GHESQUIèRE name was used as an indication of origin of a product or service in commercial trade: “It merely shows that certain magazines identify specific clothing from brands as being designed by the Complainant. These products were, however, not commercially traded under the name of the Complainant – let alone being brought into the commercial trade by the Complainant under his name – but traded under trademarks of others, namely Balenciaga.” The Panel cannot accept the Respondent’s arguments. In the Panel’s view, the Complainant has shown that his name has acquired secondary meaning in the fashion world, being the creative director of Balenciaga for more than 10 years at the date of registration of the Disputed Domain Name. The Complainant also provided numerous examples of fashion products being effectively sold under the name “Balenciaga by Nicolas Ghesquière” before 2009. Furthermore, the Panel notes that the Complainant’s name does not necessarily have to identify products in order to show use as a trademark. It can also identify the Complainant’s services as a fashion designer. In the present case, the Panel finds that the Complainant sufficiently shows that his personal name has become a distinctive identifier that consumers associate with the Complainant’s services, especially given the importance of a designer’s name in the fashion industry (see section 1.5, WIPO Overview 3.0 and, e.g., Mustafa Göğün Saygın v. \u0420\u0438\u043c\u043c\u0430\u041a\u0440\u043e\u043f\u0430\u043d\u0438\u043d\u [Римма Кропанин\u],WIPO Case No. D2019-1376, and Mr. Diego Della Valle v. Mr. Stanley Filoramo,WIPO Case No. D2003-0941). The Respondent further argues that the Complainant himself has announced in interviews to start using his name commercially only when launching his brand in late 2018. According to the Panel, it is not relevant to try interpreting statements of the Complainant in that regard. The Complainant’s recent or future use of his name, in collaboration with a fashion house or not, does not change the fact that the Complainant already acquired unregistered rights in his personal name at the time the Disputed Domain Name was registered, as mentioned above. The Disputed Domain Name is identical the Complainant’s NICOLAS GHESQUIèRE name and trademark, except for the absence of the accent on the second letter “e”. It is obvious that the absence of the accent is only a minor difference which has no impact on the confusing similarity between the Complainant’s mark and the Disputed Domain Name. Additionally, it is well established that generic Top-Level Domains (“gTLD”) (in this case “.com”) may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainants have rights (see section 1.11 WIPO Overview 3.0). In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s NICOLAS GHESQUIèRE mark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see WIPO Overview 3.0, section 2.1, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s registration and use of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed. Therefore, the Panel finds that the Complainant had made out a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production on this element thus shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent claims that the Disputed Domain Name has been registered to “informatively display the history of Saint Nicolas by sources and references for social importance”. In summary, the name “Nicolas” would refer to Saint Nicholas (“Sinterklaas” or “Sint-Nicolaas” in Dutch) and the name “Ghesquiere” to a Belgian author and professor Rita Ghesquiere, who has written a book about the origins of the Saint Nicholas tradition. The Panel finds the Respondent’s arguments unconvincing. First, the combination of the first name “Nicolas” and the last name “Ghesquiere” for the purpose of displaying the history of Saint Nicholas is non-obvious to say the least, especially given the different spelling of Saint Nicholas in both English and Dutch, and the Complainant’s reputation at the time of registration of the Disputed Domain Name. The Respondent claims that the Complainant was not well-known in the Netherlands at that time by referring to a local Google search (Annex 2.2 of the Response). However, the Panel notes that the Complainant is mentioned in the third result of that Google search. Also, a regular Google search on the same date would have produced a lot more results mentioning the Complainant. Second, the Respondent’s explanation as to Nicolas being the first name of one of Rita Ghesquiere’s children does not provide rights or legitimate interests to the Respondent, who is not related to the Ghesquiere family. Most importantly, the Respondent’s claims are not supported by any use of, or demonstrable preparations to use, the Disputed Domain Name during the last decade. The Respondent claims that the Disputed Domain Name has been used in the past but does not provide proof of this fact. A mere reference to a web page of the Wayback Machine without any screenshot of the website linked to the Disputed Domain Name is insufficient. In these circumstances, the Panel finds that, on the balance of probabilities, the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 WIPO Overview 3.0 and, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 WIPO Overview 3.0). Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name (see section 3.2.1 WIPO Overview 3.0). In the present case, given the evidence about the Complainant’s reputation at the time of registration of the Disputed Domain Name, the Panel finds it inconceivable that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name. The Disputed Domain Name is virtually identical to the Complainant’s NICOLAS GHESQUIèRE mark. The Panel therefore finds that the Respondent’s awareness of the Complainant’s rights at the time of registration suggests bad faith (see section 3.2.2 WIPO Overview 3.0, and BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). From the inception of the UDRP, panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panelists must look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: - the degree of distinctiveness or reputation of the complainant’s mark; - the failure of the respondent to provide any evidence of actual or contemplated good faith use; - the implausibility of any good faith use to which the domain name may be put (see section 3.3 WIPO Overview 3.0). The Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the Disputed Domain Name is in bad faith. In that regard, the Panel takes into account the distinctiveness and reputation of the Complainant’s name and marks, the lack of actual or contemplated good faith use of the Disputed Domain Name, and implausibility of any future good faith use because of the virtual identity between the Disputed Domain Name and the Complainant’s name and mark. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 Flip Petillion
Sole Panelist
Date: February 4, 2020
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