WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Lee Bin / maoyi, leo, Lee Bingo, New Yourk, Ben Di
Case No. D2013-0337
1. The Parties
The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondent is Lee Bin / maoyi, leo, Lee Bingo, New Yourk, Ben Di (“Respondent”) of New York, New York, United States of America and China.
2. The Domain Names and Registrar
The disputed domain names <goyardbagreplica.com>, <goyardbagsfr.com>, <goyardhongkongstore.com>, <goyard-official.com> and <goyardreplica2012.com> (together the “Domain Names”) 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 20, 2013. On February 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the respective registrant and providing the contact details for the Domain Names.
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 March 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on April 10, 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 well-known French luxury goods house operating since 1853 under the brand name GOYARD. It is well known for its handbags, wallets, purses, luggage and trunks. The GOYARD trade mark is registered in many parts of the world including the US, 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 July and November 2012. The Complainant submits that the five Domain Names redirect to the websites connected to the Domain Names <goyardbagreplica.com>, <goyardreplica2012.com> and <goyardhongkongstore.com> (together, the “Websites”). The Websites were offering for sale and selling purportedly 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 the 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. All five Domain Names are registered with the same Registrar.
2. Four of the Domain Names contain the words “New Yourk”, which is a misspelling of New York as the registrant name and/or the address.
3. All four registrants purported to be located in the US have the same address.
4. All five registrants have the same email address.
5. All five Domain Names incorporate the Complainant’s well-known GOYARD trade mark which resolves to websites selling purportedly counterfeit Goyard products.
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 Issue - 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 respondents’ cases and extracted the following general principles:
1. Consolidation of multiple 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 dispute resolution service 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 UDRP 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 five Domain Names resolve to one of three Websites. Two of the Domain Names are registered to the same entity with the same address. Four of the Domain Names have the same “New Yourk” address which is clearly a false address. All five Domain Names have the same email contact address. 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 justifies 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.
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 “bag”, “bags”, “replica”, “official” and “store”, the numerals “2012” and the geographical indicators “fr” and “hong kong” in various combinations 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 typically permissible for the Panel to ignore the generic domain suffix “.com”.
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 Panel accepts the Complainant’s reasonable and prima facie contentions in the Complaint as the Respondent has not provided any rebutting evidence. 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. In the Panel’s view, 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. 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 above in paragraph 6D. The use by a registrant 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). 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 users to a website for commercial gain has been found to constitute a form of “bad faith” Goyard St-Honoré v. Kim Yong, WIPO Case No. D2012-1168.
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 <goyardbagreplica.com>, <goyardbagsfr.com>, <goyardhongkongstore.com>, <goyard-official.com> and <goyardreplica2012.com> transferred to the Complainant.
Date: April 24, 2013