WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A. v. Petra Vierkoetter / Protected Domain Services Customer ID: NCR-2616126
Case No. D2011-0110
1. The Parties
The Complainant is Pierre Balmain S.A. of Paris, France represented by Gide Loyrette Nouel of the People’s Republic of China.
The Respondent is Petra Vierkoetter of Nordrhein-Westfalen, Germany / Protected Domain Services Customer ID: NCR-2616126 of Denver, United States of America.
2. The Domain Name and Registrar
The disputed domain name <balmainjacket2010.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2011. On January 20, 2011, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On January 20, 2011, Name.com LLC. 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 January 24, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on January 25, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2011.
The Center appointed Jane Lambert as the sole panelist in this matter on February 24, 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 public limited company incorporated in France. It was established by the well known couturier, Pierre Balmain, in 1945. Balmain’s clothes and accessories are of very high quality design and workmanship. They are worn by some of the world’s most famous women including royalty, film stars and entertainers. The Complainant supplies clothes bearing the Balmain label to the ready to wear market through such stores as Harrods, Harvey Nichols and Liberty in the United Kingdom and Galleries Lafayette, Le Bon Marché and Le Printemps in France.
The name BALMAIN and other signs incorporating or including that word have been registered as trade marks by the Complainant in trade mark registries around the world. In particular the sign “balmain” has been registered as an international trade mark in classes 6, 9, 11, 14, 16, 18, 20, 24, 25, 27 and 34 under international registration number 451759 (“the Mark”) with effect from April 25,1980.
Nothing is known of the Respondent beyond the name and contact details that appear above. According to the Complainant, the Respondent had used the disputed domain name as a URL for an e-commerce site offering various fashion items under the banner “Balmain Jacket”. It has annexed to its Complaint screen dumps of the site that have been authenticated by a Chinese notary. The Panel tried to visit that URL in March but the pages that appeared in that annex appear to have been removed.
The disputed domain name was registered on July 5, 2010.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the grounds that
(i) the disputed domain is confusingly similar to a trade mark in which the Complainant has rights,
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the Respondent has registered and used the disputed domain name in bad faith.
As to the first ground, the Complainant submits that the first 7 letters of the disputed domain name are those of the Mark, the next 6 refer to a product supplied by couturiers and clothing manufacturers and the last 4 appears to be last year’s date which could be the date of registration of the disputed domain name.
In respect of the second ground, the Complainant says that it has never licensed or authorized the Respondent in any manner to use the Mark in any way, shape or form, much less as part of a domain name. It adds that upon information and belief the Respondent has never been commonly known by the name Balmain.
As for the third ground, the Complainant contends that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and that it has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of that domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of those three elements must be present.
A. Identical or Confusingly Similar
The disputed domain name breaks down into the following components:
the proper noun Balmain,
the common noun Jacket, and
the numeral 2010.
It follows that the dominant component of the combination is the name BALMAIN and that, of course, is identical to the Mark. Moreover, taken as a whole, the combination suggests a site where Balmain’s 2010 range of jackets are available. It is likely to induce members of the public to visit the site in order to buy or, at least, find information about Balmain clothes. Accordingly, the Panel finds the disputed domain name to be confusingly similar to a trade mark in which the Complainant has rights. The first element is therefore present.
B. Rights or Legitimate Interests
The evidence on this point is that the Complainant says that that it has never licensed or authorized the Respondent to use the Mark in any way, shape or form, much less as part of a domain name, and that to the best of the Complainant’s knowledge and belief the Respondent has never been commonly known by the name BALMAIN. In the absence of anything that could contradict that evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Thus, the second element is present.
C. Registered and Used in Bad Faith
Paragraph 4 (b) lists a number of circumstances which shall be evidence of registration and use in bad faith. They include:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Paragraph 4(b)(iv) fits this case. The Panel has noted in the “Factual Background” section that the Respondent has used the disputed domain name for an electronic commerce site for clothes sold under the Balmain Jacket banner. That betokens an intention to attract for commercial gain Internet users to such site. The Panel has also found the disputed domain name to be confusingly similar to a trade mark in which the Complainant has rights. Moreover, no clarification as to the Respondent’s relationship to the Complainant was made on the website at the disputed domain name, therefore Internet users were led to believe that the website was either that of the Complainant or of an authorized partner of the Complainant, which is not the case. It follows that the Respondent has used the domain name to attract Internet users to the Respondent’s site for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Accordingly, the third element is present.
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 name <balmainjacket2010.com> be transferred to the Complainant.
Dated: March 10, 2011