World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Goyard St-Honoré v Zheng Yong

Case No. D2013-0309

1. The Parties

The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.

The Respondent is Zheng Yong of Tianjin, China.

2. The Domain Names and Registrar

The disputed domain names <goyard-bag.info>, <goyard-bags.info>, <goyard-discount.info>, <goyard-handbag.info>, <goyard-handbags.info>, <goyard-live.info>, <goyard-lives.info>, <goyard-london.info>, <goyard-products.info>, <goyard-purse.info>, <goyard-purses.info>, <goyard-shop.info>, <goyard-shops.info>, <goyard-store.info>, <goyard-tote.info>, <goyard-totes.info>, <goyard-wallet.info>, <goyard-wallets.info> and <goyard-world.info> are registered with GoDaddy.com, LLC (the “Registrar”).

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 the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2013, 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 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 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2013.

The Center appointed James A. Barker as the sole panelist in this matter on March 20, 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

This case concerns 19 disputed domain names. All of them were registered on July 31, 2012 except for <goyard-live.info> and <goyard-lives.info> which were registered on August 2, 2012.

The Complainant is the registered owner of trademarks in various jurisdictions for GOYARD. The earliest of its registered marks date from 1981 in France. These include trademark rights recognized in Hong Kong, China, Taiwan Province of China, and China prior to the creation of the disputed domain names in 2012.

The Complainant operates websites at various domain names, including <goyard.com> (registered in 1998), <goyard.asia> (registered in 1994), and <goyard.fr> (registered in 1999).

The Complainant is a long-standing French luxury goods house operating since 1853. The Complainant is a designer, manufacturer, and marketer of goods including hand bags, wallets, purses, luggage, and trunks. The Complainant’s mark derives from the name of its founder, Maison Goyard.

The Complainant has been a complainant in past cases under the Policy relating to its GOYARD mark. Most recently, these include Goyard St-Honoré v. Li Mei Huang, WIPO Case No. D2012-1173 which involved a domain name (<goyard-totes.com>) relevantly identical to one of the disputed domain names in this case (<goyard-totes.info>). The panel in that case found that the Complainant has rights in its GOYARD trademark acquired through use and registration.

Past UDRP decisions involving the Complainant have also involved a number of cases with respondents with an address in China. These include Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming, WIPO Case No. D2012-1161 (which involved the domain name <goyard-bag.com>); Goyard St-Honoré v. Kim Yong, WIPO Case No. D2012-1168 (which involved the domain name <goyard-wallet.com>); Goyard St.Honoré v. Cai Jin Yong, WIPO Case No. DCO2012-0007 (involving the domain name <goyard-com.co>); and Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158 (which involved the domain name <goyardwallet.com>).

In the absence of a Response, there is little direct evidence of the Respondent. The Complainant provides evidence that, on January 22, 2013, the disputed domain names resolved to websites where different blog posts link to each other or link to a website where, the Complainant claims, counterfeit GOYARD goods can be purchased. The Complainant claims that this website appears to be a fake official GOYARD website and bears all the other trademarks of the Complainant. The Complainant provided a screenshot of that website as it was on February 7, 2013. The text of the website is largely in Japanese and features the Complainant’s mark and, apparently, various of its products.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain names are identical or confusingly similar to its GOYARD mark. This is because those domain names incorporate the Complainant’s mark in its entirety, and add generic or descriptive terms which are not sufficient to avoid confusion. Rather, those descriptive terms are directly linked to the Complainant’s use of its mark and, as such, increase the likelihood of confusion.

The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent is known by the disputed domain names. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use its GOYARD word mark in any fashion.

The Complainant says that the disputed domain names were registered and have been used in bad faith. The Complainant’s mark is very well-known. The disputed domain names direct Internet users to web pages related to the Complainant’s business and history. The Complainant says that this circumstance obviously reveals the Respondent’s knowledge of the Complainant’s trademark and business at the time of registration, and therefore, the Respondent’s bad faith registration of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions nor make any other communication in connection with this case.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it has registered trademark rights in its GOYARD mark. For the purpose of paragraph 4(a)(i) of the Policy, none of the disputed domain names is identical to that mark. The issue, then, is whether they are confusingly similar. In deciding this question, it is well-established that the “.info” extension is to be disregarded.

All of the disputed domain names wholly incorporate the Complainant’s registered mark as the first-appearing element. In numerous UDRP decisions, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See e.g. BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.

All of the disputed domain names also add a generic term with an obvious association with the Complainant’s business (e.g. “bags”, “handbags”, “shop”, “tote”) or terms which have at best a neutral connotation (“London”, “live”). In the former case the addition of those terms, which are descriptive of the Complainant’s business, serve to increase the likelihood of confusion. See e.g. 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. In addition, a number of the disputed domain names are relevantly identical to domain names for which confusing similarity has previously been found with the Complainant’s GOYARD mark. In this connection, see e.g. Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming, WIPO Case No. D2012-1161 and Goyard St-Honoré v. Kim Yong, WIPO Case No. D2012-1168 supra.

In the latter case, the addition of such non-distinctive text to a domain name which wholly incorporates the Complainant’s mark, was found to do little to avoid a finding of confusing similarity. See e.g. Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. This Panel takes a similar approach in this case.

For these reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s GOYARD mark.

B. Rights or Legitimate Interests

There is little evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain names.

The general consensus of panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

In this case, the Complainant has established a strong prima facie case against the Respondent. The Respondent has failed to come forward with any allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. Neither is there any other evidence in the case file that would demonstrate the Respondent had such rights or legitimate interests.

Accordingly, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

There is little evidence in this case of the circumstances outlined in paragraph 4(b)(i) – (iii) of the Policy. However, the evidence is strongly indicative of the circumstances set out in paragraph 4(b)(iv). On the evidence in the Complaint, the disputed domain names reverted at one point to a website which created the impression of being associated with the Complainant. That website was apparently established for the purpose of the offer for sale of the Complainant’s products. It is, as such, a site that was apparently established for commercial gain. That site contained the Complainant’s mark and products. Combined with the registration of the disputed domain names that wholly incorporate the Complainant’s mark, as well as many terms descriptive of the Complainant’s business, it is inconceivable that the Respondent was not aware of the Complainant and registered the disputed domain names to benefit from the confusion they would create. This is squarely the type of conduct to which paragraph 4(b)(iv) is directed.

This conclusion is supported by the pattern of past cases involving the Complainant. In many of those cases (examples of which are cited above), a respondent which an address in China has registered domain names confusingly similar to the Complainant’s mark. This suggests that the Complainant’s products are reasonably well-known in China and have an attendant commercial attraction to cybersquatters.

For these reasons, the Panel finds that the disputed domain names were registered, and have been used in bad faith.

7. Decision

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-bag.info>, <goyard-bags.info>, <goyard-discount.info>, <goyard-handbag.info>, <goyard-handbags.info>, <goyard-live.info>, <goyard-lives.info>,

<goyard-london.info>, <goyard-products.info>, <goyard-purse.info>, <goyard-purses.info>, <goyard-shop.info>, <goyard-shops.info>, <goyard-store.info>, <goyard-tote.info>, <goyard-totes.info>, <goyard-wallet.info>, <goyard-wallets.info> and <goyard-world.info> be transferred to the Complainant.

James Barker
Sole Panelist
Date: April 3, 2013

 

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