WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Kim Yong
Case No. D2012-1168
1. The Parties
Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
Respondent is Kim Yong of Beimei, Haiwai, China. .
2. The Domain Names and Registrars
The disputed domain name <goyard-wallet.com> is registered with Hangzhou AiMing Network Co., LTD.
The disputed domain name <replica-goyard.com> is registered with Hangzhou E-Business Services Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 7, 2012, the Center transmitted by email to Hangzhou AiMing Network Co., LTD and Hangzhou E-Business Services Co., Ltd. a request for registrar verification in connection with the disputed domain names. On June 8, 2012, Hangzhou AiMing Network Co., LTD and Hangzhou E-Business Services Co., Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 11, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the June 13, 2012, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint (including to its listed address in WhoIs, as well as a listed contact address in Beaverton, Oregon, United States of America)1, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 24, 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
Complainant is a French company offering luxury goods, including luggage, all over the world under the trademark GOYARD, and has done so for many years. Complainant is the registered owner of trademarks consisting of the word “goyard” in a number of jurisdictions, including the United States of America (since 1990), Hong Kong, China (since 2005) and Taiwan Province of China (since 2008), and Complainant has owned an international trademark in GOYARD enforceable in China since 1994. Complainant also operates a number of websites linked to domain names having the word “goyard” as the entirety of the second level domain, the earliest of which was registered in 1994 (<goyard.asia>).
Respondent is based in China and United States. The disputed domain name registrations were created on September 10, 2011 and April 24, 2012.
5. Parties’ Contentions
Complainant requests the proceedings be in English because (1) Respondent has used English terms in the disputed domain names, (2) websites linked to the disputed domain names only operate in English, (3) Respondent has a demonstrated familiarity with English, and (4) it would be unduly burdensome and unfair for Complainant to be forced to translate the Complaint and the supporting annexes to Chinese.
Complainant claims the disputed domain names are confusingly similar to Complainant’s GOYARD trademark because the disputed domain names contain the trademark in its entirety and because the insertion of the generic terms “wallet” or “replica” do not distinguish the disputed domain names from the GOYARD trademark and instead, in the case of “wallet”, increases the likelihood of confusion because the term relates directly to Complainant’s business associated with its GOYARD trademark.
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because (1) Respondent has not been known under any of the disputed domain names or under the term “Goyard” and “Goyard” has no meaning in English or Chinese, (2) Respondent has no prior right in the disputed domain names, (3) Complainant’s GOYARD trademark is very well-known throughout the world and particularly in Respondent’s country, (4) Respondent has no relationship with Complainant and is not authorized by Complainant in any way to use the mark GOYARD, (5) Respondent does not use the disputed domain names in connection with the bona fide offering of goods or services because the items offered for sale appear counterfeit and/or fake, and (6) Respondent’s use of the disputed domain names is not a legitimate noncommercial or fair use.
Complainant claims Respondent has registered and is using the disputed domain names in bad faith because (1) Complainant’s GOYARD trademark is very well-known, particularly in China, and the only distinctive word in the disputed domain names is “Goyard”, (2) Respondent has voluntarily and knowingly created confusion with the GOYARD trademark by choosing to register the disputed domain names featuring the GOYARD trademark, (3) the websites linked to the disputed domain names are all designed to deceive consumers by including and infringing Complainant’s well-known GOYARD device trademark (worldwide registered), (4) the linked websites appear to sell fake and/or counterfeit goods and thereby tarnish Complainant’s reputation and the GOYARD trademark, (5) the disputed domain names and the linked websites deceptively divert customers from Complainant thus unfairly disrupting Complainant’s business, particularly since Complainant has decided never to sell its goods over the Internet, and (6) the additional term “replica” in one of the disputed domain names, coupled with the sale of counterfeit goods bearing Complainant’s GOYARD trademark, illustrates Respondent’s bad faith intentions.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Complainant has requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The content featured on websites linked to the disputed domain names is displayed in English, and this demonstrates to the Panel that Respondent has a working knowledge of the English language. Furthermore, the disputed domain names incorporate English language words, including generic terms added to Complainant’s GOYARD trademark. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary cost and delay.
B. Identical or Confusingly Similar
The record shows Complainant owns trademark rights in GOYARD recognized, inter alia, in United States, Hong Kong, China, Taiwan Province of China, and mainland China prior to the creation of the disputed domain name registrations in 2011 and 2012. The record also shows that Respondent is purporting to use the disputed domain names in connection with the sale of goods.
The disputed domain names combine the literal element consisting of Complainant’s GOYARD trademark with various generic terms, such as “wallet” or “replica”. The Panel views the “goyard” portion of the disputed domain names as identical to Complainant’s GOYARD trademark, and so the disputed domain names feature Complainant’s trademark in its entirety.
“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence.” See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668. The Panel finds that Complainant has established its rights in the GOYARD trademark.
The mere addition of a generic term to Complainant’s GOYARD trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.
Here, each of the disputed domain names incorporates the entirety of Complainant’s trademark, and the additional generic terms do not reduce to this Panel the prominence of Complainant’s trademark therein. Rather, the additional generic term “wallet” increases the likelihood of confusion because it relates directly to Complainant’s business and goods associated with the GOYARD trademark. Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. Although the additional generic term “replica” hints that goods sold by the website linked to <replica-goyard.com> are similar to but not original goods manufactured and sold by Complainant, “it does not dissipate the confusion arising from use of the Complainant’s trademark as the key element of the domain name.” Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580. Furthermore, the Panel does not believe that the addition of either of the generic terms to Complainant’s GOYARD trademark creates a new or different mark or literal element which is materially different to Complainant’s trademark. It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain names.
The Panel concludes that the disputed domain names are confusingly similar to Complainant’s GOYARD trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the term “goyard”. As such, Complainant has successfully presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, which Respondent has not rebutted. Discussed more fully below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods and services. Furthermore, there is no evidence in the record to indicate that Respondent’s use of the disputed domain names is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain names.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
The record shows Complainant owns trademark rights in GOYARD that precede creation of the disputed domain names. The disputed domain names are predominantly composed of the trademark and incorporate the trademark in its entirety. A simple Internet search for “goyard” results in links predominantly related to Complainant and Complainant’s websites. The Panel finds that Respondent was likely aware of Complainant or should have known of Complainant when registering the disputed domain names.
The record also shows that the content of the websites linked to the disputed domain names feature the GOYARD trademark and advertise similar-looking goods as those offered by Complainant under the GOYARD trademark. The Panel finds that Respondent’s advertisement of goods constitutes commercial competition with Complainant and Complainant’s goods that trades on the goodwill invested in Complainant’s GOYARD trademark.
The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. The Panel finds by registering the disputed domain names using Complainant’s GOYARD trademark and advertising goods in competition with Complainant using Complainant’s well-known and registered device trademark, Respondent is intentionally diverting traffic from Complainant’s business and websites.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. In particular with respect to the addition of the generic term “replica” or “clone,” registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain has been found to constitute a form of bad faith. illy ICOS LLC v. Sachin Tailor, supra.
The record shows that Respondent has used the disputed domain names to advertise goods, likely counterfeit or fake goods, in commercial competition with Complainant and Complainant’s goods. Moreover, the incorporation of Complainant’s trademark in the disputed domain names combined with the content featured on the websites linked to the disputed domain names, without an accurate disclosure of Respondents’ relationship with Complainant, illustrates an intent to deceive consumers into believing that the disputed domain names and goods sold are associated with, affiliated with, and/or endorsed by Complainant and cannot constitute a bona fide use. The record offers no evidence to the contrary.
The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <goyard-wallet.com> and <replica-goyard.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: August 8, 2012
1 The Panel notes that while this Oregon address was listed in the WhoIs and it is the registrant’s responsibility to maintain accurate contact details, the Panel has its doubts as the address appears to correspond with the corporate address of Nike, Inc. In any event, the Panel is satisfied that the Center has complied with its notification obligations in accordance with the Rules and Policy.