WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Balenciaga v. Zhihu Fan
Case No. D2010-2083
1. The Parties
The Complainant is Balenciaga of Paris, France, represented by IP Twins S.A.S. of France.
The Respondent is Zhihu Fan of Shenzhen, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <balenciagaonsale.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 3, 2010, GoDaddy.com, Inc. 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 December 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 11, 2011. 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, a French company registered since May 9, 1955, owns numerous trademark registrations worldwide for BALENCIAGA. The Complainant also owns the Community Registration BALENCIAGA DENIM (logo) registered on November 20, 2007. The Complainant BALENCIAGA is the owner of a number of domain names reproducing the BALENCIAGA mark, registered before the date of registration of the disputed domain under the present UDRP proceeding. Since March 2009, the company Balenciaga has registered other domain names (Annexes 4A-4AN to the Complaint).
The Complainant is a worldwide famous couture house. The term “balenciaga” is an original term only used for fashion products. BALENCIAGA was marketed worldwide before the registration of the domain name.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the trademark BALENCIAGA which belongs to the Complainant.
The Complainant is the sole owner of BALENCIAGA trademark registrations.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has neither granted any license to use or register the trademark BALENCIAGA, nor allowed to file or use it as a domain name by the Respondent.
The Respondent registered the disputed domain name in full knowledge of the Complainant’s trademark rights.
The Respondent is not making a legitimate noncommercial or fair use of the domain name.
The registration and use of the disputed domain name were in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b) the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
B. Identical or Confusingly Similar
The Complainant registered the BALENCIAGA trademark in various jurisdictions around the world. The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be confusingly similar to the Complainant’s trademark. The addition of the suffix “onsale” to the Complaint’s trademark is insufficient to avoid any confusion.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent has not submitted a Response to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy itself (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name or thereafter, was not aware of the Complainant’s trademark.
Given the fame of the Complainant’s marks, the Panel is of the opinion that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto at the time of the registration of the disputed domain name. Further, any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant’s registrations known to the Respondent.
The Complainant cites paragraph 4(b)(iv) of the Policy, and notes that the Respondent, in using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of the products sold on that website.
The Respondent is, in using the domain name, attracting Internet users to the Respondent’s website. The redirection of a domain name reproducing a prior trademark to this kind of referral website is further evidence of bad faith (see Big Dog Holding, Inc. d/b/a/ Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554, at paragraph 8).
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <balenciagaonsale.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: January 24, 2011