The Complainant is Balenciaga of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is Texas International Property Associates of Dallas, Texas, United States of America, represented by Rothstein Rosenfeldt Adler, United States.
The disputed domain names <balensiaga.com>, <balanciaga.com> and <benciaga.com> are registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2009. On April 17, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On April 20, 2009, Compana LLC 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 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2009. The Response was filed with the Center on May 7, 2009.
The proceedings were suspended for a period of thirty (30) days on May 11, 2009 to allow the parties to explore a settlement. On June 9, 2009, the Complainant requested that the proceedings be re-instituted and the Center notified the parties accordingly on June 10, 2009.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 22, 2009. 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.
The Complainant is a well-known French couture house.
The Complainant's trademark BALENCIAGA is registered in many countries, since at least 1972. Those registrations cover an extensive range of goods, including items such as shoes, handbags and accessories, which are sold worldwide.
The Complainant also owns dozens of domain name registrations containing the mark BALENCIAGA, having a strong presence on Internet.
The Respondent registered the domain names <balensiaga.com>, <balanciaga.com> and <benciaga.com>, respectively, on April 22, 2005, on November 27, 2004 and on June 08, 2006.
The Respondent uses the disputed domain names in connection with pay-per-click parking pages. When the Panel accessed the websites at the disputed domain names after receipt of the case file, it showed a list of links for handbags, women shoes, Gucci handbags, and others.
The Complainant makes the following contentions.
(i) The domain names are almost identical to the Complainant's trademark rights. The differences do not prevent the contested domain names from being confusingly similar, from a visual as well as phonetic point of view, to the Complainant's trademark BALENCIAGA.
(ii) The Respondent has no rights or legitimate interests in respect of the domain names. The Complainant is the sole owner of BALENCIAGA trademark registrations. The Respondent has not put forth any legitimate reason why it has registered the domain names.
(iii) The domain names were registered and are being used in bad faith. The Complainant is a worldwide famous couture house. The domain names are registered and used in full knowledge of the Complainant's rights on the trademark BALENCIAGA. The use of the domain names is a non-legitimate use. The Respondent was already involved in UDRP Decisions because of cybersquatting.
The Respondent agrees to the relief requested by the Complainant and offers to transfer the contested domain names.
The Respondent adverts this is not an admission of the three elements of paragraph 4(a) of the Policy but rather an offer of a “unilateral consent to transfer”, as prior panels have deemed it. Should the Panel proceed to the merits, the Respondent requests the opportunity to prepare a more formal response.
This request is denied, considering the Respondent was properly notified and had the chance to contest the merits of the Complaint as provided under paragraph 5 of the Rules.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) the 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 domain name has been registered and is being used in bad faith.
Regardless of the fact the Respondent has not submitted a reply on the merits of the present case, the Panel shall consider whether the requirements of the Policy have been met.
The Complainant's Annex 3 shows worldwide registrations of the BALENCIAGA trademark. The Panel has no doubt that the BALENCIAGA trademark is connected with the Complainant is widely known status around the world.
The contested domain names consist of minor misspellings of the Complainant's mark. The registration of this kind of domain names is usually done to take bad faith advantage of spelling errors made by Internet users while attempting to access a well-known product or service.
Therefore, the domain name <balenciaga.com> becomes <balensiaga.com>, <balanciaga.com> or even <benciaga.com>. The deleted or changed letters do not significantly affect the visual and phonetic similarity of the domain names.
This conduct is commonly referred to as “typosquatting” and creates domain names confusingly similar to trademarks (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069).
The Panel is satisfied that the Complainant has proven the first element of the Policy.
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default to reply the merits of the case and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed the BALENCIAGA trademark to the Respondent.
The Respondent is not commonly known by the domain names, which include different variations of a widely known trademark.
The use of the domain names for typosquatting activities and as pay-per-click parking pages cannot be understood to be non-commercial or fair.
Consequently, the Panel is satisfied that Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel has had little difficulty in concluding that the circumstances referred on paragraph 4(b)(iv) have occurred in the present case.
The disputed domain names consist of misspellings of the Complainant's trademark BALENCIAGA and are being used as pay-per-click landing pages, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant's trademark;
(ii) obtains click-trough revenue from this practice; and
(iii) deprives the Complainant from selling its products to someone who is clearly looking for it and, at the same time, promotes products offered by competitors.
For reference on the subject see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain names in bad faith, satisfying the third element of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <balensiaga.com>, <balanciaga.com> and <benciaga.com> be transferred to the Complainant.
Dated: July 6, 2009