WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A. v. Joson Smis/Smis Tom/xu fei
Case No. D2011-0098
1. The Parties
The Complainant is Pierre Balmain S.A. of Paris, France, represented by Gide Loyrette Nouel, the People’s Republic of China.
The Respondent is Joson Smis/Smis Tom/xu fei of GuangZhou, Guangdong Province, China.
2. The Domain Name and Registrar
The disputed domain name <balmainjacketsale.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2011. On January 18, 2011, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the disputed domain name. On January 24, 2011, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. Although the Complaint was filed in both Chinese and English, the Complainant submitted a request that English be the language of the proceeding in the Complaint. On January 24, 2011, the Center transmitted an email communication to the Respondent in both Chinese and English, and inviting the Respondent to comment on the language of the proceeding. The Respondent did not submit any response by the specified due date. In response to a notification by the Center regarding the Registrar information, the Complainant filed an amended Complaint on January 25, 2011.
The Center has verified that the Complaint together with the amended Complaint satisfy 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 January 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 16, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on February 17, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 28, 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 is a company incorporated in France and the owner of an international registration and several national registrations for the trade mark BALMAIN (the “Trade Mark”). The Complainant’s international trade mark registration covers China, where the Respondent is based. In addition, the Complainant is the owner of the domain name <balmain.com>.
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on June 11, 2010.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant is a French company dedicated to fashion and garments. It was created by Mr. Pierre Balmain in 1945, and it focuses today on ready to wear collections. The Complainant first registered the trade mark PIERRE BALMAIN in 1955. The Complainant’s international registration for the Trade Mark dates back to 1980. Through continuous use since 1946, the Trade Mark as well as the products on which the Trade Mark is used have enjoyed a high reputation worldwide in the fashion industry. It is known that the Trade Mark was the favorite fashion brand of the deceased artist Michael Jackson.
The disputed domain name consists of three words - “balmain”, “jacket” and “sale”. The word “balmain” is identical to the Trade Mark. “Jacket” means a short coat, while “sale” is a non distinctive term commonly used in commercial circumstances referring the general activity of selling. The disputed domain name will most likely mislead a reasonable Internet user to believe that the disputed domain name is linked to the Trade Mark and/or the Complainant. The disputed domain name is therefore confusingly similar to the Trade Mark.
The Complainant has never licensed or authorized the Respondent to use the Trade Mark in any way, including as part of a domain name. The Complainant believes that the Respondent has never been commonly known by the name “balmain”, and has no rights or legitimate interests in respect of the disputed domain name. According to WIPO precedent, the burden of proof in respect of establishing rights or legitimate interests in respect of the disputed domain name is borne by the Respondent.
The Respondent registered the disputed domain name containing the keywords “balmain”, “jacket” and “sale”, which is obviously confusing to Internet users, and will in all likelihood mislead them to associate the disputed domain name with the Complainant or its Trade Mark; or confuse Internet users as to the source, sponsorship, affiliation, or endorsement of any website or location or of a product (if any) offered by any website. This indicates the obvious bad faith of the Respondent.
The Respondent’s unauthorized registration of the disputed domain name has prevented the Complainant from reflecting the Trade Mark in a corresponding domain name. Through registration and use of the disputed domain name, the Respondent has misdirected, distracted and delayed Internet users from their pursuit of the goods being offered by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co.ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant filed the Complaint in English and in Chinese. The Complainant however made the following request in the Complaint that English be the language of the proceeding:
“As the Complainant is a company registered and located in France where Chinese is not the mother language, for communication and cost efficiency as well as for fairness, the Complainant requests English be the language of proceeding in this case if the Respondent does not raise objection to the Complainant’s request regarding the proceeding language.”
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
The Center determined that it would:
1) Accept the Complaint as filed in Chinese and English;
2) Accept a Response in either English or Chinese; and
3) Appoint a Panel familiar with both languages mentioned above, if available.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Although no evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra), the Panel notes the disputed domain name is in the English language.
The Panel is of the opinion that it is likely the Respondent will not be prejudiced, should English be adopted as the language of the proceeding. Had the Respondent made cogent submissions requesting Chinese as the language of the proceeding, the Panel might have determined otherwise. However, in making its determination regarding the language of the proceeding, the Panel has taken into account the fact the Complainant is a French company and the Complainant’s submissions as regards costs efficiency and fairness.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 60 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
In the present case, the disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the addition of the generic words “jacket” and “sale”, the former describing a common article of clothing and the latter being a word commonly used in respect of the retail sale of fashion products, does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
C. 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 you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 60 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark 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. Indeed, it appears there has been no use of the disputed domain name at all.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
It appears the Respondent has never made any active use of the disputed domain name. Accordingly, there are no grounds for a determination of bad faith under paragraph 4(b)(iv) of the Policy (registered and used in order to intentionally attract user to the Respondent’s website). Similarly, the Complainant has not adduced any evidence of a pattern of past conduct on the part of the Respondent of registering domain names in order to prevent the owner of the relevant trade mark from reflecting the mark in a corresponding domain name, so paragraph 4(b)(ii) cannot apply in the present case. No evidence has been adduced to suggest, under paragraph 4(b)(iii), the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. Neither has any evidence been adduced to suggest the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or to a competitor of the Complainant under paragraph 4(b)(i).
The circumstances indicated under paragraph 4(b) of the Policy indicating bad faith are not however exclusive and exhaustive and there are grounds under the Policy for a determination of bad faith based upon other general considerations not specifically enumerated in the Policy.
It has been held that, in certain circumstances, passive use may amount to bad faith under the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In all the circumstances of this case, the Panel finds there are sufficient grounds for an inference of bad faith, given the notoriety of the Complainant and the Trade Mark, the registration and use by the Complainant of the Trade Mark for 10 years in China, where the Respondent is based, and, in particular, because the Respondent has to date made no use of the disputed domain name, and the Respondent has failed to file a Response (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <balmainjacketsale.com > be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 3, 2011