WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Fundacion Private Whois, Domain Administrator
Case No. D2012-1160
1. The Parties
Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama.
2. The Domain Names and Registrars
The disputed domain names are <goyardbags.net>, <goyardbagspree.com>, <goyardtotehandbags.com> and <goyardtotehandbags2012.com> which are registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012 for the domain name <goyardbags.net>. On June 12, 2012, Complainant requested to add to the Complaint three domain names, namely <goyardbagspree.com>, <goyardtotehandbags.com> and <goyardtotehandbags2012.com> as they were registered by the same Respondent, and thus on that same date the Center requested Complainant to provide an amended Complaint. On June 14, 2012, Complainant filed an amended Complaint that included all four disputed domain names. On June 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 14, 2012, 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.
The Center verified that the Complaint, as amended, 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 Respondent of the Complaint, and the proceedings commenced on June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2012.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 16, 2012. This Panel finds that it was properly constituted. This 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
Complainant is a French corporation engaged in the design and production of luxury goods such as hand bags, wallets, purses, luggage and trunks, having its origins in the Maison Goyard founded in 1853.
Complainant has rights over the GOYARD trademark for which it holds several trademark registrations around the world, such as: registration No. 619536 with the World Intellectual Property Organization, registered on June 21, 1994 in classes 3, 18 and 25; registration No. 1821224 with the United States Patent and Trademark Office, registered on February 15, 1994 in classes 16 and 18; registration No. 1576425 with the Intellectual Property Office of the United Kingdom, registered on September 1, 1995 in class 18; registration No. 908979 with the Mexican Institute of Industrial Property, registered on November 22, 2005 in class 18; registration No. 367134 with the Colombian Office of Industry and Commerce, registered on November 25, 2008 in class 18; and registration No. 4497641 with the European Office of Harmonization in the Internal Market, registered on August 29, 2009 in classes 3, 14, 16, 18, 24, 25 and 34.
Complainant also has rights over a device trademark (resembling a seal with stylized letters of the word “Goyard”) for which it holds several trademark registrations in a number of jurisdictions, such as registration No. 3664125 with the European Office of Harmonization in the Internal Market, registered on July 22, 2005 in classes 3, 18 and 25. Further, Complainant also has rights over a device trademark (resembling interlaced chevrons or Ys) for which it holds several trademark registrations in a number of jurisdictions, such as registration No. 874699 with the World Intellectual Property Organization, registered on November 28, 2005 in classes 3, 18 and 25.
Complainant is the registrant of several domain names, such as: <goyard.com> created on January 2, 1998, <goyard.fr> created on May 14, 1999, and <goyard.org> created on December 8, 2003.
The disputed domain names were created: <goyardbags.net> on February 11, 2010, <goyardtotehandbags.com> on March 28, 2012, <goyardbagspree.com> on May 22, 2012 and <goyardtotehandbags2012.com> on June 11, 2012.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant is a well established and famous French luxury goods house, operating since 1853, that designs, manufactures and markets its goods all over the world, mainly hand bags, wallets, purses, luggage, trunks, etc. Goyard is the family name of the founder of the Maison GOYARD and is the main part of Complainant’s business name.
Complainant’s GOYARD trademark is very well-known since it is an old and widely used mark throughout the world.
The disputed domain names are confusingly similar to the registered GOYARD trademark.
The disputed domain names incorporate the GOYARD trademark in its entirety. The additional feature to the disputed domain names is the use of the words “bags”, “tote”, “handbags”, “2012”, “spree” and “bag”. The descriptive words “bags”, “tote”, “handbags”, and “bag” are directly linked to Complainant’s use of its trademarks. The mere addition of the characters “2012” or “spree” devoid of any distinctive character. These additional terms do not serve to distinguish the disputed domain names from the GOYARD trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain names.
There is no indication in the WhoIs that Respondent is known under the disputed domain names, neither under “Goyard”. In addition, “Goyard” has no meaning whatsoever in Spanish or English, which are the languages of Respondent and the websites, according to online dictionaries, neither in any other language.
Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use its GOYARD trademark in any fashion. Complainant manufactures its goods in France in its own factories, controls all the marketing process and has no licensee.
The disputed domain names contain Complainant’s well-known trademark in combination with the terms “bags”, “tote”, “handbags”, “2012”, “spree” and “bag”, which combined suggest the commercial sale of Complainant’s goods.
The <goyardbags.net> disputed domain name points to a website displaying information about Complainant, its well-known GOYARD trademark and its goods, including bags and hand bags, as well as sponsored links and advertisements to other websites offering for sale competing goods. The other disputed domain names point to web sites where counterfeiting GOYARD goods can be purchased. These websites appear to be fake official GOYARD websites and bear all the other Complainant’s trademarks. Complainant states that all the goods offered are counterfeits since, on the one hand, some of them do not exist in Complainant’s range of products and, on the other hand, the prices are too low to be those of genuine luxury goods.
Thus Respondent has never used the disputed domain names in connection with a bona fide offering of goods, neither made a legitimate noncommercial use nor a fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith.
Goyard is the only distinctive word of the disputed domain names and Complainant’s GOYARD trademark is very well-known, because it is an old and widely used mark throughout the world. Respondent cannot have ignored Complainant’s international reputation at the time of registration of the disputed domain names. By picking the word “Goyard” combined to the descriptive words “bags”, “tote”, “handbags”, “2012”, “spree” and “bag” to register the disputed domain names, Respondent created confusion with Complainant. The disputed domain names direct Internet users to websites making reference to Complainant’s business and history. These circumstances show without any doubt that Respondent was perfectly aware of Complainant’s well-known GOYARD trademark at the time of registration of the disputed domain names.
Respondent’s use of the disputed domain names causes consumers to believe that the disputed domain names are affiliated or owned by Complainant.
In addition, Respondent’s websites and the goods offered for sale are all bearing Complainant’s well-known device trademarks, and by using them Respondent reveals its knowledge of Complainant and its trademarks at the time of registration.
The websites appear to be fake GOYARD websites misleading consumers with Complainant and tarnishing Complainant’s reputation and trademarks. As a result, Respondent is attempting to divert customers from Complainant and thus to disrupt Complainant’s business.
Respondent’s <goyardbags.net> website displays sponsored links and advertisements to other websites offering for sale competing goods. Thus, Respondent is trading on the goodwill of Complainant’s trademark and profits by earning pay-per-click revenues from the disputed domain name. The websites associated to the other disputed domain names offer for sale goods bearing Complainant’s trademarks which are counterfeits. Furthermore, Complainant has never and will never sell its goods on the Internet, because they are luxurious ones.
Therefore, Respondent is tarnishing Complainant’s reputation and trademarks, and has intentionally attempted to attract for commercial gain, Internet users to all its websites, by creating confusion with Complainant’s trademarks as to the source and/or affiliation of the disputed domain names.
Complainant requests that the disputed domain names be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the GOYARD trademark.
Each disputed domain name entirely incorporates the GOYARD trademark, adding a suffix: “bags”, “totehandbags”, “totehandbags2012” and “bagspree”, respectively. The addition of such characters is not enough to avoid similarity, nor does it add anything to avoid confusion with Complainant’s trademarks. Prior UDRP panel decisions support this Panel’s view (see GA Modefine SA V. AES Optics, WIPO Case No. D2000-0306; Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627; LEGO Juris A/S v. Chainarong Wongkanya, WIPO Case No. D2012-0737).
Therefore, this Panel finds that the disputed domain names are confusingly similar to Complainant’s GOYARD trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant asserts that there is no relationship between Respondent and Complainant, that Respondent is not a licensee of Complainant, that Respondent is not otherwise authorized to use Complainant’s trademarks and that Complainant’s original products are not sold through the Internet.
The websites associated to the disputed domain names show the GOYARD trademark and Complainant’s device trademarks, and show sponsored links for products competing with those of Complainant and/or feature the sale of purported GOYARD products. Complainant asserts that such products are counterfeits. Further, the websites under the disputed domain names convey the impression that they correspond to or are somewhat associated with Complainant. All that is not a bona fide offering of products or services in this Panel’s view.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name2. From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain names, but rather the opposite may be validly inferred.
Thus, this Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain names is in bad faith.
Taking into consideration that Complainant’s registration and use of its trademarks preceded the creation of the disputed domain names by several years, the widespread use of Complainant’s trademarks, the combination in the disputed domain names of the GOYARD trademark with descriptive terms, and the content of the websites associated to the disputed domain names, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant’s trademarks and the products marketed thereunder at the time it obtained the registration of each disputed domain name.
The display of sponsored links for goods competing with those of Complainant in at least one of the disputed domain names is indicative of bad faith3.
Furthermore, all websites associated to the disputed domain names are used to offer hand bags, tote bags, wallets and/or purses bearing Complainant’s trademarks, which are precisely the products designed and marketed by Complainant under such trademarks. Complainant asserts that such goods offered through those websites are counterfeit. The use of a disputed domain name, through which counterfeit products are offered for sale, constitutes an improper use and is enough for this Panel to establish Respondent’s bad faith for purposes of the Policy4.
Additionally, this Panel considers that in using the disputed domain names Respondent has sought to create a likelihood of confusion with Complainant and Complainant’s trademarks as to the sponsorship or source or affiliation or endorsement of the websites associated to the disputed domain names, when in fact there is no such connection5.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain names <goyardbags.net>, <goyardbagspree.com>, <goyardtotehandbags.com> and <goyardtotehandbags2012.com> be transferred to Complainant.
Date: July 30, 2012
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given[...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See Swarovski Aktiengesellschaft v. fangfei, WIPO Case No. D2012-0747: “the conduct of the Respondent in using the disputed domain name to purportedly sell the Complainant’s goods without authorisation is certainly a relevant factor indicating bad faith registration and use”.
5 See Swarovski Aktiengesellschaft v. Matthew Mitchell, WIPO Case No. D2012-0073: “Respondent’s unauthorized use of the disputed domain name in the corresponding website consists of offering purported Swarovski products for sale at a website, thus creating the impression that this website is operated or endorsed by Complainant. This clearly is evidence of registration and use in bad faith”.