WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono
Case No. D2012-1158
1. The Parties
The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondents are Domain ID Shield Service of Kowloon, Honk Kong, China and Arif Cahyono of Jawa Tengah, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <goyardwallet.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 11 and 13 2012. On June 7, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On June 14, 2012, OnlineNic, Inc. d/b/a China-Channel.com 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 June 14, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 15, 2012.
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 June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Response was filed with the Center on June 29, 2012.
The Center appointed Anna Carabelli as the sole panelist in this matter on July 10, 2012. 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 well-known French luxury goods house established in 1853 by Francois Goyard. The Complainant manufactures and sells luggage and leather goods, mainly wallets, hand bags, purses, etc. under the trademark GOYARD. The GOYARD mark is protected as a registered trademark in France and in many other countries; annexed to the Complaint are copies of several national and international and community trade mark registrations for GOYARD filed by the Complainant.
The Complainant also owns various domain names incorporating the GOYARD trademark and pointing to the Complainant’s official website.
The disputed domain name was registered on January 15, 2012. According to the evidence submitted by the Complainant, the disputed domain name is being used to display a website containing information about the Complainant and sponsored links to other web site offering for sale competing goods or GOYARD counterfeited goods.
The Panel notes that the disputed domain name presently does not direct to any active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its registered trademark GOYARD since it incorporates the Complainant’s well-known mark in its entirety. The Complainant argues that (i) the addition of the generic term “wallet” does not eliminate the identity or the similarity but on the contrary strengthens the confusion between the disputed domain name and the Complainant’s trademark GOYARD because of the direct relation with the Complainant’s products and the Complainant’s business and (ii) the domain name suffix “.com” does not give any distinctive character to the disputed domain name. In this connection, the Complainant refers to previous UDRP decisions stating the principle that descriptive words do not detract from the confusing similarity between a trademark and a domain name and that gTLD extensions should not be taken into consideration when evaluating the identity or similarity between the disputed domain name and the complainant’s trademark.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the GOYARD mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods neither is making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant states that the disputed domain name was registered and is being used in bad faith. The Respondent cannot have ignored the existence of the Complainant when the disputed domain name was registered given the strong reputation and the distinctive character of the Complainant’s marks GOYARD worldwide and considering that the disputed domain name directs Internet users to a website related to Complainant’s business and history. The Respondent is using the disputed domain name with the intent to mislead consumers 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 website.
The Respondent alleges that it had no knowledge of the trademark GOYARD but it is ready to transfer the disputed domain name to the Complaint. The Respondent also points out that it has ceased any active use of the disputed domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the complainant’s trademark or service mark; 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark GOYARD in several countries.
The domain name is confusingly similar to the Complainant’s trademarks, as it entirely incorporates GOYARD and the suffix “.com” has no legal significance when comparing domain names. On the other hand, the addition of generic terms or numbers does not create a different designation in which the Respondent has rights, and cannot be considered sufficient to avoid confusion between the disputed domain name and the Complainant's trademark (Sanof- Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc, WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).
On this issue, the Panel further notices that the term “wallet” can likely be associated with the Complainant's business and products, therefore the combination with the term “goyard” clearly is confusing (Christian Dior Couture v. Carl Lim WIPO Case No. D2008 1038; Hermes International SCA v. Cui Zhenhua, WIPO Case No. D2010-1743).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark GOYARD.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate non-commercial or fair use of the disputed domain name, particularly because the Respondent is using the disputed domain name to display sponsored links and pay-per-click advertising to other websites offering competing goods or selling GOYARD counterfeited goods.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above apply. As stressed by many UDRP decisions, in such a case the burden of shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Respondent makes no attempt to rebut the Complainant’s allegations and evidence.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided substantial evidence that its GOYARD mark is widely known in connection with luxury handbags and luggage. The reputation of the GOYARD mark has also been established in the Goyard St-Honoré v. Whois Guard Protected, Brucef Lee, WIPO Case No. D2011-1837.
Given the international reputation of the GOYARD mark and of GOYARD branded products and the fact that the disputed domain name directs Internet users to a website related to Complainant’s business and history, the Panel finds that the Respondent was fully aware of the Complainant’s trade mark at the time it registered the disputed domain name. In the Panel’s view, such fact shows that the disputed domain name was registered in bad faith (see Revlon Consumer Product Corp v. Domain Manager, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc. WIPO Case No. D2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info WIPO Case No. D2010-0936; Hermes International SCA v. Cui Zhenhua WIPO Case No. D2010-1743).
At the time of the filing of the Complaint, the website at the disputed domain name featured sponsored links to competitors of the Complainant, presumably on a “pay per click” basis and to other sites offering for sale GOYARD counterfeited goods.
Such a use does not constitute a bona fide offering of goods or services (see L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, Deutsche Telekom AG v. Keyword Traffic, WIPO Case No. D2005-0443; Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062, Micro Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170; Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; Hermes International SCA v. Cui Zhenhua, WIPO Case No. D2010-1743; Hermes International v. BAG12, Nick Kim, WIPO Case No. D2010-2290).
The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark. In this respect, the Panel notes that screenshots annexed to the Complaint show information and links on buying “replica goyard wallets”; this is clearly bad faith use of the disputed domain name.
The fact that the Respondent’s website could not be visited when the decision was drafted, does not affect the above conclusions. Notwithstanding the annexed evidence showing bad faith, it is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith (See WIPO Overview 2.0, para: 3.2). The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith and, in the Panel’s view, the circumstances of the present case (namely: strong reputation and distinctiveness of the Complainant’s trademarks and goods and the impossibility of conceiving a good faith use of the disputed domain name) clearly show the Respondent’s bad faith, even where the disputed domain name presently has been rendered inactive.
Accordingly, the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <goyardwallet.com> be transferred to the Complainant.
Dated: July 24, 2012