The Complainant is Goyard St. Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondent is Cai Jin Yong of Putian shi, Fujian Sheng, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 5, 2012, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain name. On April 11, 2012, 1API GmbH 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 April 13, 2012. On April 20, 2012, the Center received a supplemental filing in which the Complainant sought to add the domain name to the Complaint. On April 23, 2012, the Center sent a communication to the parties informing them that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion. On April 25, 2012, the Center received a supplemental filing in which the Complainant submitted additional evidence to the proceeding. On the same date, the Center sent a communication to the parties informing them that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.
On May 23, 2012, the Center sent a communication to the parties informing the Complainant that the additional domain name is governed by the “.me” Policy, which differs from the Policy that governs the disputed domain name and therefore, if it wished to request the transfer of the domain name , a separate Complaint would have to be filed.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 25, 2012. 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 well-known luggage and fashion handbag designer established in 1853. The company takes its name from its founder, Mr. François Goyard.
The Complainant has registered the GOYARD trademark in more than 27 jurisdictions around the world including the United States of America, Argentina, Brazil, United Kingdom of Great Britain and Northern Ireland, Canada, European Union, France, Hong Kong, China, India and China. In addition, the Complainant claims unregistered rights in the term GOYARD.
Further, the Complainant has obtained device-mark registrations for the woven pattern image used on its goods.
The disputed domain name was registered on July 14, 2011.
Currently, the disputed domain name forwards the Internet user to the domain name , which is being used to display a website which reproduces the GOYARD trademark and purports to offer different Goyard-branded merchandise for sale. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant asserts that the disputed domain name is confusingly similar to its GOYARD trademark because the disputed domain name fully contains the entirety of the Complainant’s well-known mark.
The Complainant notes that the Respondent has no rights or legitimate interests in the disputed domain name. There is no indication on the WhoIs that the Respondent is known by the disputed domain name or by Goyard. The Respondent’s use of the disputed domain name is neither a bona fide offering, nor a noncommercial or fair use. Further, the Complainant states that the term “Goyard” has no dictionary meaning in Chinese or English apart from its trademark sense. Furthermore, Goyard does not describe or designate the goods offered for sale on the disputed domain name (such as handbags, luggage, purses, etc.). The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the GOYARD word mark in any fashion. The Complainant states that it has no licensees.
The Complainant notes its longstanding use of the GOYARD mark and indicates that the Respondent must have been aware of the Complainant at the time it registered the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name with the intent to mislead consumers for commercial gain. The disputed domain name directs Internet users to a web page related to the Complainant’s business. The website and the goods offered for sale are all bearing the GOYARD device trademark, which was registered in China (Respondent’s country). Thus, the website appears to be a fake GOYARD website misleading consumers into thinking it was somehow affiliated with, endorsed by or otherwise connected to the Complainant and tarnishing Complainant’s reputation and GOYARD trademark. As a result, the Respondent is attempting to disrupt the Complainants business.
In addition, the disputed domain name was registered in bad faith because it redirects Internet users to a website bearing the GOYARD trademark and offering for sale the type of goods sold by the Complainant (e.g. hand bags, luggage, purses, etc.). These circumstances demonstrate that Internet users are likely to be misled into believing that they have found in the disputed domain name, a website legitimately connected to Complainant.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Matters 6.1.1 Supplemental Filing
As indicated in the Procedural History, the Complainant has submitted a supplemental filing, without having been required to do so by the Panel, in connection with certain electronic mail received from the Respondent after the filing of the Complaint.
On April 25, 2012, the Center received a supplemental filing in which the Complainant submitted additional evidence to the proceeding. The supplemental filing contained an email sent from the Respondent to the Complainant and a statement from the Complainant about that email. The Center acknowledged receipt of the Supplemental Filing. No express provision is made for Supplemental Filings in the Rules. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party.
According to the criteria set out in previous decisions adopted under the Policy (see, for example, decisions in Delikomat Betriebsverpflegung Gesellshcaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Autonation Holding Corp. v. Rabea Alawneh,WIPO Case No. D2002-0058), unsolicited supplemental filings should be accepted by the Panel if the following two circumstances are met: (i) the eventual acceptance of such filings should not breach the guarantee to both parties to be treated equally, so each one has a fair opportunity for presenting its case; and (ii) the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents, and that could affect the outcome of the decision.
In light of what is decided below in section 6.2., the Panel considers that the Supplemental Filing will not be necessary and shall not be considered. 6.1.2. Addition of Domain Name
As stated above, the Complainant applied to amend its Complaint to add the domain name after the commencement of proceeding and that the Complaint had been notified to the Respondent. Given that the domain anme is governed by the .ME Uniform Domain Name Dispute Resolution Policy as approved by doMEn on April 30, 2001 (“.me Policy”), this Panel fins that the Complainant’s application to amend its complaint should be declined. 6.2. Substantive Matters
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in GOYARD. The Panel also finds that the domain name is confusingly similar to the Complainant’s trademark. The suffix “.co” does not change this conclusion (see Imperial Tobacco Canada Limited v. Nicholas Bulgin,WIPO Case No. DCO2010-0020 and Irotama S.A. v. Mr. Richard Bonn III,WIPO Case No. DCO2010-0036).
For this reason, the Panel concludes that the Complainant has proven that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use 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 an individual, business, or other organization) has been commonly known by the disputed domain name, even if you 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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the domain name or to use the trademark. The Complainant has prior rights in the trademark, which precede the Respondent's registration of the disputed domain name by more than a century. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and has thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainant has provided substantial evidence demonstrating that its GOYARD mark is widely known in connection with luxury handbags and luggage. See Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee,WIPO Case No. D2011-1837.
The GOYARD trademark has been in use since 1853 and is registered in numerous countries around the world, including in the Respondent’s jurisdiction, China.
Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its GOYARD trademark when it selected the disputed domain name.
The disputed domain name selected by the Respondent contains the Complainant’s trademark in its entirety.
Its content seems to be an online store for buying handbags. The disputed domain name forwards the Internet user to the domain name . This is being used to display a website which reproduces the GOYARD trademark and purports to offer different Goyard-branded merchandise for sale.
In the view of the Panel, the Respondent is clearly attempting to divert Internet traffic intended for the Complainant’s website to its own website for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site and products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name was registered in bad faith and is being used in bad faith. 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.
Pablo A. Palazzi
Sole Panelist
Dated: June 8, 2012
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