WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Goyard St-Honoré v. Lin Honghai

Case No. D2012-1165

1. The Parties

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

The Respondent is Lin Honghai of Putian, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <goardofficials.com>, <goyardbagonline.com>, <goyardbagonlines.com>, <goyardofficial.com> and <goyardtotebag.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 7, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On June 8, 2012, GoDaddy.com, LLC 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 June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2012.

The Center appointed Michael J. Spence as the sole panelist in this matter on July 11, 2012. 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-known manufacturer of luxury luggage, including such items as handbags, wallets, purses and trunks. It has been in continuous operation since 1853 with an extensive international portfolio of trade marks involving the word “goyard”. The Respondent operates a web site under the disputed domain names that offers what appears to be counterfeit products for sale under the Complainant’s trade mark. There has never been any licensing or other relationship between the Complainant and the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain names; and the disputed domain names were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(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 have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the owner of trade mark GOYARD. Further, all but one of the disputed domain names contain the Complainant’s trade mark in its entirety. The addition of descriptive material to the trade mark in the disputed domain names does not mitigate against the confusing similarity of the trade mark and the disputed domain names. Indeed, by referring to goods of the type produced by the Complainant, it only increases the confusing similarity.

The other disputed domain name <goardofficials.com> differs from the Complainant’s trade mark only by the omission of one letter which has almost no phonetic effect (“Goyard” becomes “Goard”). Moreover, in relation to this disputed domain name, the addition of the word “officials” could only further confuse by suggesting that the relevant web site is an authorized site operated by the Complainant.

In this Panel’s view, there can be no doubt that the disputed domain names are confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain names.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the fact that the web sites operating under the disputed domain names resolve to web sites which offer apparently counterfeit goods bearing the Complainant’s trade mark, and that there has never been any licensing or other relationship between the Complainant and the Respondent, establishes a prima facie absence of rights or legitimate interests in the disputed domain names. The Respondent has tended no evidence to rebut this prima facie case.

The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the UDRP Policy.

C. Registered and Used in Bad Faith

The Complainant contends that the goods offered for sale at the websites associated with the disputed domain names are counterfeit and the Respondent has not rebutted this contention.

In this Panel’s view, the exploitation of consumer confusion for the purpose of selling counterfeit goods, with evident knowledge of the Complainant’s rights in its trade marks, is one of the strongest examples of registration and use in bad faith.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the UDRP Policy.

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 <goardofficials.com>, <goyardbagonline.com>, <goyardbagonlines.com>, <goyardofficial.com> and <goyardtotebag.com> be transferred to the Complainant.

Michael J. Spence
Sole Panelist
Date: July 26, 2012