WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PIERRE BALMAIN S.A. v. Guilian Zhang
Case No. D2010-2140
1. The Parties
The Complainant is PIERRE BALMAIN S.A. of Paris, France represented by Gide Loyrette Nouel, the People’s Republic of China.
The Respondent is Guilian Zhang of Ha er bin, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <balmainjacketssale.com> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 10, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2010, HiChina Zhicheng Technology Ltd. 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 notified the parties that the default language of the proceeding is Chinese on December 16, 2010. The Complainant submitted a Chinese translation of the Complainant on December 21, 2010 and requested that English be the language of the proceeding if the Respondent does not raise any objection as such. The Respondent did not respond to the Center’s notification.
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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 26, 2011. 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 French fashion and garments company created by the French designer Mr. Pierre Balmain in 1945. Mr. Balmain is credited with designing the iconic uniform of the Singapore Airlines Singapore Girl among other accolades. The Complainant has been using the trade marks BALMAIN and PIERRE BALMAIN since 1946 on products in the fashion industry.
The Complainant has registered the following trade marks BALMAIN and PIERRE BALMAIN around the world including:
Jurisdiction Trade mark Trade mark number Registration date
WIPO PIERRE BALMAIN 183835 April 2, 1955
United States BALMAIN 0702312 August 2, 1960
WIPO BALMAIN 451759 April 25, 1980
WIPO BALMAIN 758712 April 10, 2001
The WIPO registrations 183835 and 758712 depict the word BALMAIN in the following stylized form (the “BALMAIN Logo”):
The Complainant has also registered the domain name <balmain.com> on March 17, 1997, which resolves to a website which provides an online boutique. The BALMAIN Logo is featured prominently on the top left corner of the website.
The Disputed Domain Name was registered on August 23, 2010. The Disputed Domain Name resolves to an English-language website which displays the BALMAIN Logo at the top left corner. The website offers fashion products for sale and uses the word BALMAIN generously in association with these products. Other than the evidence submitted with the Complaint, no information about the Respondent is available.
5. Parties’ Contentions
The Complainant contends that:
(1) The Disputed Domain Name is confusingly similar to the trade mark BALMAIN. It comprises the word “balmain”, “jackets” and “sale”. The word “balmain” in the Disputed Domain Name is identical to the trade mark BALMAIN;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has never licensed or authorized the Respondent to use the trade mark BALMAIN. The Respondent is not commonly known by the name “balmain”; and
(3) The Disputed Domain Name was registered and is being used in bad faith pursuant to paragraphs 4(b)(ii), (iii) and (iv) of the Policy. The website resolved from the Disputed Domain Name reproduces pictures designed and created by the Complainant and are copyright infringements.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the proceeding
Having regard to the circumstances, including the following, the Panel determines that English shall be the language of the proceeding:
(1) The Complainant is French;
(2) The Respondent uses English for all content displayed on the website resolved from the Disputed Domain Name;
(3) The Respondent did not object to English being the language of the proceeding;
(4) All of the Center’s communications, including the Complaint, have been transmitted in both English and Chinese; and
(5) The Respondent did not submit a Response and pursuing the proceeding in Chinese will serve no discernible purpose.
To succeed in this proceeding, the Complainant must establish the following 3 limbs of paragraph 4(a) of the Policy:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The trade mark BALMAIN has been registered as a trade mark by the Complainant for some decades. There is no doubt that the Complainant has rights in the trade mark BALMAIN. The consensus view of previous panels is that a domain name which incorporates a trade mark in its entirety and incorporates other elements which do not distinguish the domain name from the trade mark is confusingly similar for purposes of paragraph 4(a) of the Policy.
The Disputed Domain Name incorporates the trade mark BALMAIN in its entirety. The words “jackets” and “sale” after the word “balmain” in the Disputed Domain Name are descriptive and do not successfully distinguish the Disputed Domain Name from the trade mark BALMAIN. The Panel therefore holds that the Disputed Domain Name is confusingly similar to the trade mark BALMAIN.
The first limb of paragraph 4(a) of the Policy is hereby established.
B. Rights or Legitimate Interests
The consensus view of previous panels is that the second limb of paragraph 4(a) of the Policy requires the proving of a negative. A complainant only has to show a prima facie case and the burden of proof will shift to the respondent. In the present case, the Complainant has confirmed that it has never licensed or authorized the Respondent to use the trade mark BALMAIN. The Respondent’s name is “Guilian Zhang”. It also does not appear from the evidence that the Respondent is commonly known by the name “balmain”.
The Panel is of the view that the Complainant has shown a prima facie case that the Respondent has no right or legitimate interest in the Disputed Domain Name. Since the Respondent did not file a Response, the prima facie case has not been rebutted. Therefore, the Panel holds that the second limb of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(ii) of the Policy states:
“[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;”
Although it would appear from the evidence that the registration of the Disputed Domain Name prevents the Complainant from reflecting the trade mark BALMAIN in a domain name corresponding to the Disputed Domain Name, the available evidence does not show that the Respondent has engaged in a pattern of such conduct. As such, the Panel is of the view that paragraph 4(b)(ii) is not applicable to the present facts.
Paragraph 4(b)(iii) of the Policy states:
“[the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor;”
It is not clear from the facts that the Respondent is a competitor of the Complainant. Further, the Panel is mindful of the comments of the panel in Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 as follows:
“… a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner. If paragraph 4(b)(iii) were given the meaning advanced by Complainant, respondents would be found to have disrupted the business of competitors in far too many cases, and the Policy’s bad faith requirement would be diluted beyond recognition.”
In particular, there is no evidence as to the nature of the goods offered for sale on the website resolved from the Disputed Domain Name (e.g., whether they originate from the Complainant, whether they are counterfeits, whether they rival the Complainant’s goods). As such, the Panel is unable to make any finding in respect of paragraph 4(b)(iii) of the Policy based on the facts.
Paragraph 4(b)(iv) of the Policy states:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site or location or of a product or service on [the Respondent’s] web site or location.”
The Panel believes that the website resolved from the Disputed Domain Name is designed to attract Internet users. In the absence of any explanation by the Respondent, the offering of goods on the website can only plausibly be attributed to an intention for commercial gain. The Complainant has confirmed that the Disputed Domain Name was not authorized. Yet the Respondent has without authorization used the Disputed Domain Name to resolve to a website which offers goods (counterfeit or otherwise) for sale and displayed the BALMAIN Logo on the website. A reasonable Internet user visiting the website resolved from the Disputed Domain Name is likely to be confused as its source, sponsorship, affiliation, or endorsement. In the circumstances, the Panel concludes that circumstances are within the scope of paragraph 4(b)(iv).
The third limb of paragraph 4(a) of the Policy is accordingly also established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <balmainjacketssale.com> be transferred to the Complainant.
Kar Liang Soh
Dated: February 18, 2011