WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honore v. StarOut Soft, kouhi yamazaki
Case No. D2013-0308
1. The Parties
The Complainant is Goyard St-Honore of Paris, France, represented by Cabinet Granger, France.
The Respondent is StarOut Soft of Ha'er bin, Heilongjiang Province, China; kouhi yamazaki of Guangzhou, Guangdong Province, China.
2. The Domain Names and Registrars
The disputed domain names <goyard-shop.com>, <goyard-shop.net>, <goyardtotebags.net> and <goyard-tote.net> are registered with Bizcn.com, Inc. The disputed domain names <go-yard.info> and <goyard-shop.org> (together the “Domain Names”) are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2013. On February 14, 2013, the Center transmitted by email to Bizcn.com, Inc. and GoDaddy.com, LLC (the “Registrars”) a request for registrar verification in connection with the Domain Names. On February 15 and 16, 2013, the Registrars transmitted by email respectively to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On February 18, 2013, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding for the Domain Names <goyard-shop.com>, <goyard-shop.net>, <goyardtotebags.net> and <goyard-tote.net>. On the same day, 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 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 February 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on March 27, 2013. 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 established and famous French luxury goods house operating since 1853 under the brand name GOYARD. It is famous for its handbags, wallets, purses, luggage and trunks. The GOYARD trade mark is registered in many parts of the world including Europe and China. The date of the earliest trade mark registration which has been filed in evidence is 1981.
The Complainant operates various domain names that reflect the GOYARD trade mark. They include <goyard.com>, <goyard.org>, <goyard.net>, <goyard.asia>, <goyard.us>, <goyard.eu> and <goyard.fr>.
The Domain Names were registered between June and December 2012. The Complainant submits that the Domain Names <goyard-shop.com>, <goyard-shop.net> and <goyard-shop.org> were all redirecting to the website connected to <go-yard.info> whilst the Domain Name <goyard-tote.net> was redirecting to the website connected to <goyardtotebags.net> (together, the“Websites”). The Websites were offering for sale and selling counterfeit Goyard products. The Complainant does not sell its goods online. Some of the designs appearing on the Websites do not exist in the Complainant’s range of goods and the prices are also much too low for the goods to be genuine. The Websites bear the GOYARD trade mark. On the Panel’s review, the Websites are no longer active.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the GOYARD 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, all of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant are as follows:
1. The registrant of four of the Domain Names <goyardtotebags.net>, <goyard-shop.com>, <goyard-shop.net> and <goyard-tote.net> is StarOut Soft with the same address in “Haebin Helionjiang, China”. The registrant details also include the name of an individual Xiomin Wang, Xiomi Wang or Xioming Wang. This is more likely a misspelling rather than three different individuals.
2. The registrant of the other two Domain Names <go-yard.info> and <goyard-shop.org> is a different individual but with the same email address contact as that of <goyard-shop.com> and <goyard-tote.net>.
3. All the Domain Names incorporate the Complainant’s well-known GOYARD trade mark which resolve to websites selling counterfeit Goyard products.
4. The Domain Names <goyard-shop.com>, <goyard-shop.net> and <goyard-shop.org> were all redirecting to the website connected to <go-yard.info> whilst the Domain Name <goyard-tote.net> was redirecting to the website connected to <goyardtotebags.net>.
5. Starout Soft and Wang Xioming were the two of three named respondents in Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming, WIPO Case No. D2012-1161 against the Complainant involving domain names incorporating the GOYARD trade marks that were found to be subject to common control by the panel in that case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 being used in bad faith.
B. 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 BV 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 respondent’s 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 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 GOYARD mark in its entirety, and each of the Domain Names has been used in an identical manner to divert consumers from the Complainant’s website. The evidence shows that each of the six Domain Names resolve to one of the two Websites. Four of the Domain Names are registered to the same entity with the same address. This entity has been found to have acted in bad faith in a previous UDRP case, Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming, supra involving the Complainant’s GOYARD trade mark. The other two Domain Names have the same email address as two of the four Domain Names mentioned above. All of this point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Complainant’s rights in the GOYARD mark. Furthermore, Complainant’s claims against the Domain Names involve common questions of law and fact.
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 common ownership or control. 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 Bizcn.com, Inc, the language of the registration agreement in relation to the Domain Names <goyard-shop.com>, <goyard-shop.net>, <goyardtotebags.net> and <goyard-tote.net> is Chinese. There is no issue with the other Domain Names registered with GoDaddy.com, Inc. as the language of the registration agreement is English.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceeding should be English as the four Domain Names are in English and incorporate the English words “shop”, “tote” and “bags”. The two Websites, one of which each of Domain Names resolve to are either in English or includes English. The other two Domain Names belonging to the Respondent are registered with GoDaddy.com, Inc. which has English as the language of the registration agreement. These factors indicate that the Respondent has a working knowledge of English. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions in paragraph 11 of 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.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark GOYARD.
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 GOYARD is the dominant portion of each of the Domain Names. The addition of the words “tote bags”, “shop”, “tote” and “yard” to the mark GOYARD 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 domain suffixes “.com”, “.net”, “.info” and “.org”. 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’s Goyard products are never sold online. The Complainant manufactures its goods in France in its own factories and controls its marketing process. It has no licensees. The Complainant has no relationship with the Respondent and has never authorized it to use its GOYARD trade mark. Some of the goods on the Websites are not the designs of the Complainant and they are sold at prices significantly lower than the Complainant’s products. The above is sufficient evidence to show that the goods offered for sale and sold by the Respondent are counterfeit. There can be no legitimate interest in the sale of counterfeits. The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Names. (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s GOYARD mark when it registered the Domain Names. The Domain Names incorporate the Complainant’s well-known trade mark in its entirety. Further in August 2012, the Respondent received an adverse WIPO decision (Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming, supra) against it also in connection with the domain names incorporating the GOYARD mark. The complaint in that case was filed on June 7, 2012, one day before the earliest Domain Name in this case was registered. Four of the Domain Names were registered after the date of that decision. In the Panel’s view this is clear evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The products offered for sale on the Websites are counterfeit Goyard products for reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are those of or authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith.
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 <goyard-shop.com>, <goyard-shop.net>, <goyardtotebags.net>, <goyard-tote.net>, <go-yard.info> and <goyard-shop.org> be transferred to the Complainant.
Date: April 12, 2013