WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pierre Balmain S.A. v. bodson bodson

Case No. D2017-0473

1. The Parties

The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is bodson bodson of Yichun, Heilongjiang, China.

2. The Domain Name and Registrar

The disputed domain name <pierrebalmain.xyz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March, 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March, 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April, 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April, 21, 2017.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May, 5, 2017. 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, Pierre Balmain S.A., was founded in 1945 by the French fashion designer Pierre Balmain. The Complainant designs and sells clothing, including outerwear, dresses, skirts, tops, jeans and trousers, shoes, bags, accessories, and fragrances.

The Complainant has a global presence, with store locations in over 40 countries worldwide and boutique locations in some of the largest cities of the world, including, Paris, London, Shanghai, Beijing and Dubai. In 2015, the Complainant’s net sales exceeded EUR 58 million.

The Complainant has an Internet presence through its primary website “www.balmain.com” and through social media platforms, including Instagram, Facebook and Twitter. The Complainant also owns the domain name <pierrebalmain.com>.

The Complainant is the owner of trademark registrations for its PIERRE BALMAIN mark in multiple jurisdictions, including the following trademark registrations with Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China (SAIC), where the Respondent is located:

The Respondent registered the disputed domain name on June, 28, 2016. The Respondent is using the disputed domain name to operate a website which features pay-per-click links, some of which relates to the Complainant’s competitors. The Complainant contacted the Respondent on February, 8, 2017 through a cease-and-desist letter sent by email and demanded the Respondent to transfer the disputed domain name to the Complainant. The Respondent replied stating that it was prepared to transfer the disputed domain name for a consideration of USD 1,000. The Complainant pointed out that this sum was far in excess of the Respondent’s out of pocket costs and reiterated the demand to transfer the disputed domain name, to which the Respondent refused.

5. Parties’ Contentions

A. Complainant

The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with paragraph 4(a)(i) of the Policy, on the following grounds:

Firstly, the disputed domain name is identical and/or confusingly similar to the Complainant’s PIERRE BALMAIN trademark. Through its national and international trademark registrations, the Complainant is the owner of the PIERRE BALMAIN trademark. The Complainant alleges that when comparing the disputed domain name to the Complainant’s trademark, the relevant comparison is made between only the second-level-portion of the disputed domain name and the Complainant’s trademark and consideration should not be given to the generic Top-Level Domain (“gTLD”) “.xyz”. As the disputed domain name contains the Complainant’s trademark in its entirety, the Complainant alleges that it should be considered as identical and/or confusingly similar to the Complainant’s trademark.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name because, inter alia:

(a) The Complainant has ownership and the exclusive rights to use the PIERRE BALMAIN trademark in commerce on or in connection with the classes of goods and/or services in which the trademark is registered;

(b) The Respondent is not sponsored by or affiliated with the Complainant in any way;

(c) The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner; and

(d) The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.

Finally, the Complainant alleges that the Respondent had registered and used the disputed domain name in bad faith because, inter alia:

(a) The Respondent has registered a domain name that is identical and/or confusingly similar to the Complainant’s trademark, as well as the Complainant’s <balmain.com> and <pierrebalmain.com> domain names. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business;

(b) The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business and the Respondent receives pay-per-click fees from these linked websites;

(c) The disputed domain name is being offered for sale on SEDO for a minimum offer of USD 90. When the Complainant contacted the Respondent through a Cease and Desist Letter, the Respondent requested payment in the sum of USD 1,000 in exchange for the transfer of the disputed domain name. This is an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain name less than a year ago on June, 28, 2016, which serves as further evidence of the Respondent’s lack of rights and legitimate interests;

(d) At the time of registration of the disputed domain name, the Respondent knew, or at least should have known of the existence of the Complainant’s trademarks and that the registration of domain names containing well-known trademarks constitute bad faith;

(e) The Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain name that matches the PIERRE BALMAIN trademark entirely. This demonstrates that the disputed domain name seeks to confuse unsuspecting Internet users as to the source, sponsorship affiliation or endorsement of the Respondent’s website. The Respondent has also demonstrated an intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to its website for the Respondent’s own monetary gain, as evidenced by the presence of multiple pay-per-click links on the website, some of which directly reference the Complainant and/or its competitors.

(f) The Respondent is engaging in a pattern of cybersquatting or typosquatting as the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, which is evidence of bad faith registration and use of the disputed domain name.

The Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and that the Respondent should be found to have registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) of the Policy:

(i) The disputed domain name is 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 name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the PIERRE BALMAIN trademark.

This Panel accepts the Complainant’s submission that when comparing the disputed domain name to the Complainant’s PIERRE BALMAIN trademark, the relevant comparison to be made is between the second-level portion of the disputed domain name against the trademark in question and that the Top-Level Domain is typically disregarded. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

As the disputed domain name contains the Complainant’s PIERRE BALMAIN trademark unabridged and in its entirety, this Panel finds that the disputed domain name is identical to the Complainant’s PIERRE BALMAIN trademark.

B. Rights or Legitimate Interests

It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. The evidence include:

(a) A screen-grab of the website linked to the disputed domain name on which appears sponsored links, some of which relates to competitors of the Complainant;

(b) The Complainant’s representation to the Panel that the Respondent is not a licensee of the Complainant’s trademarks and has not otherwise been authorized to use the Complainant’s trademarks;

(c) Production of trademark certificates evidencing that the Complainant has used its PIERRE BALMAIN trademarks since 1945 and that the trademarks have been registered with SAIC since November 21, 2009;

(d) The cease-and-desist letter dated February, 8, 2017 and email correspondence dated February, 8, 2017 and February, 10, 2017.

On the contrary, there is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name, nor to support that the Complainant had authorized the Respondent to use its PIERRE BALMAIN trademark, nor to register any domain name incorporating the PIERRE BALMAIN trademark, nor to suggest the Respondent’s affiliation with the Complainant in any way.

Additionally, the evidence shows that the website at which the disputed domain name resolves features multiple third-party links for products and goods ostensibly produced by PIERRE BALMAIN, but also for other brands such as Yves Saint Laurent, Carven and Lanvin. The Panel deems it likely that the Respondent receives pay-per-click fees from these linked websites. In addition, the Panel agrees with the previous UDRP decisions that have consistently held that respondents that monetize domain names using pay-per-click links particularly those that may compete with or relate to the complainant’s goods have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under Policy, paragraph 4(c)(i), nor is there any evidence in the record demonstrating preparations to do so. Therefore, the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name under Policy 4(c)(iii). See Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344.

Accordingly, the Panel accepts as sufficient the evidence adduced by the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy illustrates some non-exclusive grounds of bad faith registration and use. Relevant to the consideration of the instant case are the following grounds:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

Notably as the Panel has determined that the disputed domain name is identical with the Complainant’s trademarks, this can give rise to confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on such website.

This Panel accepts the Complainant’s submission that the disputed domain name was registered and is being used in bad faith by the Respondent as it is used to capitalize and leverage on the goodwill of the Complainant’s PIERRE BALMAIN trademark in order to increase traffic to the website to which the disputed domain name resolves. From the evidence, the Respondent’s website displays pay-per-click links, some of which directly reference the Complainant and/or its competitors (or similarly situated brands or companies). It is not disputed that clicking on those links will generate revenue for the Respondent; that is to say, a “commercial gain” within the meaning of the Policy, paragraph 4(b)(iv). This Panel refers to and approves the cited case of Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., supra where a respondent using the disputed domain name to operate a website which features pay-per-click links to competing and non-competing commercial websites from which the respondent presumably receives referral fees, such use for the respondent’s own commercial gain, is evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).

The Respondent’s conduct of holding registrations for several other domain names that seemingly misappropriates the trademarks of well-known brands and businesses also suggests that the Respondent is engaging in a pattern of cybersquatting or typosquatting. While the particulars of these other potential domain name abuses are beyond the ambit of this case, and their merits depend on a properly submitted complaint before a properly constituted panel, previous UDRP panels have held the view that cybersquatting and typosquatting is per se bad faith. See Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568.

This Panel is also of the view that the Respondent has acted in bad faith pursuant to Policy, paragraph 4(b)(i) as the Respondent is currently offering to sell the disputed domain name to the public and requested for fees most likely in excess of its out-of-pocket costs. The Respondent had attempted to exact payment from the Complainant in its reply to the Complainant’s cease-and-desist letter, which the Complainant refused. In Intesa Sanpaolo S.p.A. v. Wei Jinping, WIPO Case No. D2011-1321, the panel found that the Respondent’s request for fees in excess of out-of-pocket costs constituted evidence of bad faith and in Clairol Incorporated v. Jean-Pierre Fux, WIPO Case No.DTV2001-0006, the panel also found that registering a domain name for the purpose of selling or transferring it to the Complainant for valuable consideration satisfied the element of bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used by the Respondent 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 name <pierrebalmain.xyz> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Date: May 19, 2017