WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Balenciaga v. Zhifeng Rao

Case No. D2013-0575

1. The Parties

Complainant is Balenciaga of Paris, France, internally represented.

Respondent is Zhifeng Rao of Wuhua, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <balenciagahandbags2012.com>, <balenciagaonline.org>, <balenciagaoutletonlineusa.com>, <balenciagaoutlet-usa.net>, and <balenciagasacs.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 3, 15, and 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 15, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceedings. Respondent did not comment on the language of proceedings 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 Respondent of the Complaint, and the proceedings commenced on April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2013.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 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

A. General

Complainant is a company based in France founded in 1918 by Cristobel Balenciaga. Complainant and its predecessors in title have used the mark BALENCIAGA for many years in relation to luxury fashion goods. Today, Complainant creates women’s and men’s ready-to-wear, shoes, handbags and accessories and sells the items worldwide under the mark BALENCIAGA. Complainant is the registered owner of various word marks and stylized trademarks consisting of the word “balenciaga” in a number of jurisdictions, including countries within Europe, Asia, Africa, and North America. Complainant further operates a website linked to numerous domain names having the word “balenciaga” as the entirety of the second-level domain. The Panel accepts that BALENCIAGA is a well-known trademark.

Respondent “Zhifeng Rao” is based in China. The disputed domain names <balenciagaonline.org>, <balenciagahandbags2012.com>, <balenciagasacs.com>, <balenciagaoutlet-usa.net>, <balenciagaoutletonlineusa.com> were registered on March 9, 2012, April 6, 2012, April 6, 2012, February 21, 2013, and March 17, 2013, respectively. The disputed domain names<balenciagaonline.org>, <balenciagahandbags2012.com>, and <balenciagasacs.com> expired on March 9, 2013, April 6, 2013, and April 6, 2013, respectively.

B. Domain Name Expiry

On April 3, 4, and 8, 2013, the Center requested that the Registrar confirm that the disputed domain names <balenciagaonline.org>, <balenciagahandbags2012.com> and <balenciagasacs.com>would remain active during the UDRP proceeding. The Registrar responded that if neither party renewed these disputed domain names, they would be deleted and not subject to renewal. Complainant arranged for renewal payments to be paid for the disputed domain names <balenciagaonline.org>, <balenciagahandbags2012.com> and <balenciagasacs.com> through Paypal. Subsequently, the Center requested that the Registrar confirm that these disputed domain names had been renewed, and that they had been locked during the UDRP proceeding. The Registrar confirmed that the disputed domain names <balenciagaonline.org>, <balenciagahandbags2012.com> and <balenciagasacs.com> had been renewed and locked.

5. Parties’ Contentions

A. Complainant

Complainant requests the proceedings be in English because (1) the majority of the disputed domain names include English non-distinctive words, (2) websites linked to the disputed domain names are in English, and (3) Respondent therefore has demonstrated a familiarity with English.

Complainant claims the disputed domain names are identical or confusingly similar to Complainant’s BALENCIAGA trademarks because each of the disputed domain names contains the trademark in its entirety and because the insertion of the various generic terms (e.g., “online,” “handbags,” “sacs,” and “outlet”) are common and usual for Complainant’s products or activity and do not distinguish the disputed domain names from the BALENCIAGA trademark. Complainant further cites other UDRP panel decisions where it was found that the domain names were confusingly similar to the trademark because they “comprise the Trade Mark in its entirety, together with the non-distinctive words ‘bags,’ ‘online’ and ‘handbags.’” See Goyard St-Honoré v. suying chen, WIPO Case No. D2012-1171.

Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because (1) Complainant is the sole owner of the trademark registrations for BALENCIAGA, (2) Complainant did not grant any license or otherwise permit to Respondent to use its BALENCIAGA trademark, (3) Respondent does not use the disputed domain names as part of its legal name, corporate name, or upon information and belief, any commonly-known identifier, and (4) Respondent makes use of the disputed domain names to sell so-called Balenciaga products without authorization.

Complainant claims Respondent has registered and is using the disputed domain names in bad faith because (1) the disputed domain name <balenciagaonline.org> resolves to a parking page displaying a list of Google AdSense ads relating to Complainant’s products, that, when clicked, display commercial advertisements for sale, (2) the disputed domain names <balenciagaoutlet-usa.net> and <balenciagaoutletonlineusa.com> resolve to an identical selling website featuring Complainant’s “BB” registered mark and includes, at the bottom of the webpage, “Copyright © 2013 balenciagaonline.net,” a domain name owned by Complainant, (3) the disputed domain names <balenciagahandbags2012.com> and <balenciagasacs.com> (though now resolve to a default page) resolved to a website reproducing the BALENCIAGA trademark and promotional materials.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Matters

i. 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 proceedings. Respondent has not commented regarding the language of the proceedings. The Center has communicated notice of the Complaint in both 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. Further, all the disputed domain names incorporate English language words, including generic terms added to Complainant’s BALENCIAGA 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.

ii. Domain Names Expiry

As a preliminary matter, the Panel notes that although three of the disputed domain names, <balenciagaonline.org>, <balenciagahandbags2012.com> and <balenciagasacs.com>, have expired during the course of this dispute, paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy provides that “[i]n the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant.” The Panel notes that the Registrar has confirmed that the disputed domain names <balenciagaonline.org>, <balenciagahandbags2012.com> and <balenciagasacs.com> have been renewed by Complainant to avoid being deleted and locked pending resolution of this dispute, and thus will be available for registration by Complainant after the present dispute is resolved. In these circumstances, Complainant has a legitimate interest in pursuing its Complaint, even as to a domain name that has expired in the course of this dispute.

B. Standard for UDRP Proceedings

According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:

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

(ii) 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.

C. Identical or Confusingly Similar

The record shows Complainant owns trademark rights in BALENCIAGA throughout several continents prior to the registrations of the disputed domain names in 2012-2013. The record also shows that Respondent is purporting to use—or has used—the disputed domain names in connection with the sale of goods.

The disputed domain names combine the literal element consisting of Complainant’s BALENCIAGA trademark with various generic terms. The panel views the “balenciaga” portion of the disputed domain names as identical to Complainant’s BALENCIAGA 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.” Advanced Magazine Publishers, Inc. v. Computer Dazhong, WIPO Case No. D2003-0668. The Panel finds that Complainant has established its rights in the BALENCIAGA trademark.

The mere addition of a generic term to Complainant’s BALENCIAGA 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 that mark.” Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trade mark 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 trade mark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffman-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.” Id.

Here, each of the disputed domain names incorporates the entirety of Complainant’s trademark, and the additional generic terms do not reduce the prominence of Complainant’s trademark therein. The addition of generic terms only increases the likelihood of confusion because they relate to Complainant’s business. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. Further, the inclusion of a generic term to Complainant’s BALENCIAGA trademark does not create a new or different mark that is materially different from Complainant’s BALENCIAGA 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 BALENCIAGA trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

D. 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 “balenciaga.” Thus, Complainant has successfully presented a prima facie case, which Respondent has not rebutted. Further, as discussed below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record 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.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

E. Registered and Used in Bad Faith

The record shows Complainant owns trademark rights in BALENCIAGA that predate creation of the disputed domain names. The disputed domain names are predominantly composed of Complainant’s trademark and incorporate the trademark in its entirety. An Internet search for “balenciaga” returns in links predominantly associated with Complainant and Complainant’s website. 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 contents of the websites resolving from the disputed domain names feature the BALENCIAGA trademark and advertise similar-looking goods as those offered by Complainant under the BALENCIAGA trademark. Further, those websites feature copyrighted information and logos owned by Complainant. 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 BALENCIAGA 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. See Lancôme Parfums et Beaute & Comagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. By registering the disputed domain names using Complainanat’s BALENCIAGA trademark and advertising goods in competition with Complainant using Complainant’s well-known and registered trademarks and logos, Respondent is intentionally diverting traffic from Complainant’s business and websites. Indeed, at least one of the disputed domain names resolves to a website with click-through advertisements to Complainant’s competitors. Such “parking pages” inherently derive commercial gain. See Hermès International v. Whois privacy services provided by DomainProtect LLC / Domain Administrator, Internetconsult Ltd, WIPO Case No. D2011-2146 (“[I]t is very likely that this parking page provides revenues to the Respondent, who is therefore trading off the reputation of the Complainant’s famous trademarks.”).

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.

The record shows that Respondent has used the disputed domain names to advertise 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 Respondent’s relationship with Complainant, illustrates an intent to deceive consumers into believing that the disputed domain names are associated with, affiliated with, and/or endorsed by Complainant and cannot constitute a bona fide use. The record offers no evidence to refute this finding.

The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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, <balenciagahandbags2012.com>, <balenciagaonline.org>, <balenciagaoutletonlineusa.com>, <balenciagaoutlet-usa.net>, and <balenciagasacs.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: June 10, 2013