WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei
Case No. D2011-1541
1. The Parties
The Complainant is Balenciaga of Paris, France, represented by IP Twins S.A.S., France.
The Respondents are Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei of Anhui, China.
2. The Domain Names and Registrar
The disputed domain names <balenciagaboutique.com>, <balenciagabutikk.com>, <balenciagaloja.com>, <balenciaganegozio.com>, <balenciagaoutlet.com>, <balenciagasklep.com>, <balenciagaspeichern.com>, <balenciagatienda.com>, <balenciagauk.com>, <balenciagawinkel.com>, <billigabalenciaga.com>, <billigebalenciaga.com>, and <halpabalenciaga.com> (the “Domain Names”) are registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2011. On September 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 15, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 20, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On September 22, 2011, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date.
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 September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on November 4, 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 based in France. It is an old and very famous fashion house founded in 1918 by the couturier, Cristobel Balenciaga. The Complainant and its predecessors in title have used the mark BALENCIAGA for many years in relation to luxury fashion goods. Today, the Complainant creates women’s and men’s ready-to-wear, shoes, handbags and accessories and sells the items worldwide. The Balenciaga brand is very popular with celebrities all over the world and is frequently featured in the global media. The Panel accepts that BALENCIAGA is a well known trade mark and the name has in fact been added to the French dictionary – Dictionary Larousse. The Complainant owns numerous registrations for the BALENCIAGA trade mark around the world including France, United States of America and China. The Complainant also owns numerous domain names including <balenciaga.com>, <balenciagaparfums.com> and <parfums-balenciaga.fr> to name a few. The Complainant has also recovered a number of domain names through UDRP complaints including <balenciaga-bags.com>, <balenciagahome.com>, <balenciaga-handbags.org>, <balenciaga-shop.com> and <balenciagaonsale.com>.
The Domain Names were registered between March 5, 2011 to March 9, 2011 and all of them were connected to active websites at the time of the filing of the Complaint (the “Websites”). The following 12 domain names all resolved to websites with the exact same template: <balenciagaboutique.com>, <balenciagaspeichern.com>, <balenciagasklep.com>, <halpabalenciaga.com>, <billigebalenciaga.com>, <balenciagaloja.com>, <billigabalenciaga.com>, <balenciagawinkel.com>, <balenciagatienda.com>, <balenciaganegozio.com>, <balenciagabutikk.com> and <balenciagaoutlet.com>. The only difference between these 12 websites is the language. Each website makes use of the language corresponding to the descriptive terms added to the mark BALENCIAGA: “boutique” - English, “speichern” - German, “sklep” - Polish, “halpa” -Finnish, “billige”-Danish/German, “loja” -Portuguese, “billiga” - Swedish, “winkel”-Dutch, “tienda” - Spanish, “negozio” - Italian, “butikk” – Norwegain and “outlet”- English. These 12 terms mean either “shop” or “cheap” in their respective languages. The domain name <balenciagauk.com> resolves to a slight differently website from the other 12 and is in English. The Websites offer exclusively Balenciaga products like handbags and wallets. The Websites bear the BALENCIAGA trade mark and also display images and photographs which belong to the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the BALENCIAGA trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names which belong to five registrants, all of which it believes have a common link and are registered by the same entity.
The basis of its belief that there is a common link between the registrants and that all the Domain Names have been registered by the same entity/registrant are as follows:
1. The Domain Names have all been registered with the Registrar within a span of four days (between March 5, 2011 to March 9, 2011).
2. All the registrants have Chinese names and are all located in Anhui, China, with zip code 230000 (except the registrant, Yan Wei whose zip code is 234000). The addresses of the five registrants are very similar:
3. The email addresses of the five registrants all consist of the full name of the registrants with one of two domain names, <126.com> and <163.com>. Both these domain names are owned by Netease.com,Inc ([…], Guangzhou, Guangdong 510665, CN).
4. The DNS servers for the 13 Domain Names are the same:
5. All the Domain Names except for <balenciagauk.com> resolve to websites that are highly similar, the only difference being the language of the websites which corresponds with the language of the descriptive terms added to “Balenciaga” in the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Procedural Issues
(i). Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative service provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s well-known BALENCIAGA mark in its entirety together with a descriptive or geographical term in various languages. The Panel accepts the Complainant’s reasons set out in paragraph 5.A above as being indicative that the Domain Names are subject to common control by the same person or company.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control of the same person or company. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
(ii). Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement in relation to the Domain Names is Chinese.
The Complainant submits in Section IV of the Complaint that the language of the proceeding should be English as the Domain Names are in Latin letters rather than Chinese. Further, the domain name <balenciagaoutlet.com> includes an English word, “outlet”. The websites connected to this disputed domain name as well as the disputed domain name <balenciagauk.com> are in English. This indicates that the Respondent who is in control of the Domain Names is able to communicate in English.
The English language is not the native language of the Complainant.
In response to the Center’s email of September 20, 2011, regarding the language of the proceeding of the Domain Names, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions in the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark BALENCIAGA.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark BALENCIAGA is the dominant portion of the Domain Names. The addition of the descriptive/generic terms – “boutique”, “speichern”, “sklep”, “halpa”, “billige”, “loja”, “billiga”, “winkel”, “tienda”, “negozio”, “butikk” and “outlet” and the geographical term -“UK” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic top-level domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed or otherwise authorized the Respondent to use its BALENCIAGA trade mark in the Domain Names or any other manner, the Respondent has never sought or obtained the consent of the Complainant to register the Domain Names. Further the Respondent is not commonly known by the Domain Names as it does not use the Domain Names as part of its legal name or corporate name. The Respondent makes use of the Domain Names to sell Balenciaga products without authorization.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s BALENCIAGA mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. The Websites offer Balenciaga products for sale. The Websites reproduce the Complainant’s BALENCIAGA trade mark using the same font as that on the Complainant’s official website at “www.balenciaga.com”. The look and feel, layout, wording and pictures used in the Websites closely resemble the Complainant’s previous official website. Further, the Websites contain copyright notices in the different languages. The English version is: “© 2011-2013 Balenciaga, Inc. All Rights Reserved”. Such notices give the impression that this Website is an “official” website. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are authorised or endorsed by the Complainant. In fact, the Websites have caused confusion as the Complainant has received emails from Internet users inquiring about the Websites and the authenticity of the products. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <balenciagaboutique.com>, <balenciagabutikk.com>, <balenciagaloja.com>, <balenciaganegozio.com>, <balenciagaoutlet.com>, <balenciagasklep.com>, <balenciagaspeichern.com>, <balenciagatienda.com>, <balenciagauk.com>, <balenciagawinkel.com>, <billigabalenciaga.com>, <billigebalenciaga.com>, and <halpabalenciaga.com> be transferred to the Complainant.
Dated: November 18, 2011