WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Balenciaga v. Xin Tong

Case No. D2012-2298

1. The Parties

The Complainant is Balenciaga of Paris, France, represented internally.

The Respondent is Xin Tong of Hong Kong, China.

2. The Domain Names and Registrars

The disputed domain names <balenciagahk.com>, <balenciagahot.com>, and <hkbalenciaga.com> are registered with HiChina Zhicheng Technology Ltd.

The disputed domain names <balenciaga-t999.com>, <balenciaga-yhk.com>, <oyabalenciaga.com>, and <yn7-balenciaga.com> are registered with Xin Net Technology Corp.

The disputed domain names will hereinafter be collectively referred to as Disputed Domain Names. The concerned registrars will hereinafter be collectively referred to as Registrars.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2012. On November 21, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On November 22 and 27, 2012, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 27, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On November 29, 2012, the Complainant confirmed its request that English be the language of proceedings. The 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 the Respondent of the Complaint, and the proceedings commenced on December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.

The Center appointed Kar Liang Soh as the sole panelist in this matter on January 11, 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 French company registered since December 9, 1955. The Complainant’s business can be traced back to the founding of a haute couture house in San Sebastian, Spain in 1918. The Complainant uses the trademark BALENCIAGA in relation to fashion products including clothes, handbags, perfumes, shoes and hats. The trademark BALENCIAGA is regularly quoted in magazines and featured on TV shows around the world.

The Complainant owns many trademark registrations around the world for the trademark BALENCIAGA. These include:

The Complainant has also registered many domain names incorporating the trademark BALENCIAGA, including <balenciaga.com>, <balenciaga.it>, <balenciaga.eu> and <balenciaga.cn>. The trademark BALENCIAGA has been the subject of prior UDRP cases (Balenciaga v. xiong xuelin aka xuelin xiong, WIPO Case No. D2010-1830; Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831; Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-2082; Balenciaga v. Zhihu Fan, WIPO Case No. D2010-2083; Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei, WIPO Case No. D2011-1541).

The Complainant hosts their official website at the URL “www.balenciaga.com”.

The Disputed Domain Names were registered between February 11, 2011 and August 27, 2011. The Disputed Domain Names <balenciagahot.com>, <balenciagahk.com>, <hkbalenciaga.com> and <yn7-balenciaga.com> all resolve to websites which purport to offer products (mainly handbags) for sale. These products are shown on the websites in association with the trademark BALENCIAGA and other luxury brand trademarks. The titles of the webpages on the websites incorporate the word “balenciaga”. The Disputed Domain Names <balenciaga-t999.com>, <balenciaga-yhk.com>, <oyabalenciaga.com> do not appear to resolve to any website.

Other than the WhoIs information of the Disputed Domain Names, no other information about the Respondent is available.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Names are confusingly similar to the Complainant’s trademark BALENCIAGA. They reproduce the trademark BALENCIAGA. <balenciagahot.com> adds the word “hot” which is a popular English word. <balenciagahk.com> and <hkbalenciaga.com> add the element “HK” which stands for “Hong Kong”. <yn7-balenciaga.com>, <oyabalenciaga.com>, <balenciaga-t999.com> and <balenciaga-yhk.com> add the elements “yn7”, “oya”, “t999” and “yhk” respectively. All the additional elements do not distinguish the trademark BALENCIAGA;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not affiliated with the Complainant and has never sought or obtained the Complainant’s consent to use the trademark BALENCIAGA or register the Disputed Domain Names. The Respondent is not using the Disputed Domain Names as its name and is not making a legitimate noncommercial or fair use of the Disputed Domain Names; and

c) The Disputed Domain Names were registered and are being used in bad faith. The trademark BALENCIAGA is very famous. The choice of the Disputed Domain Names by the Respondent is not a result of chance but is motivated by a will to create an illegitimate association with the Complainant. The Respondent attempted to attract for commercial gain Internet users to the websites resolved from the Disputed Domain Names by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

The registration agreements of the Disputed Domain Names are in Chinese. The default language of the proceedings is accordingly Chinese. The Complainant has requested that English be adopted as the language of the proceedings. The Panel accepts the request and holds that English be adopted as such. In deciding thus, the Panel has taken into account the following factors:

a) The Complaint was filed in English;

b) The Complainant is not able to communicate in Chinese;

c) The Complainant will incur significant additional expense and the proceedings will suffer delay if Chinese were to be adopted;

d) The Respondent is based in Hong Kong, China where English is commonly used; and

e) No Response was filed and the Respondent did not object to the Complainant’s request that English be the language of the proceedings, despite notices from the Center in both English and Chinese.

6.2 Discussion

To succeed in this proceeding, paragraph 4(a) of the Policy requires the Complainant to show that:

(i) The Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark;

(ii) The 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.

A. Identical or Confusingly Similar

All the Disputed Domain Names incorporate the trademark BALENCIAGA in its entirety. The Panel agrees with the Complainant’s submission that the prefix or suffix appended to the trademark BALENCIAGA in each of the Disputed Domain Names do not assist to distinguish each of the Disputed Domain Names from the trademark BALENCIAGA. Accordingly, the Panel holds that all the Disputed Domain Names are confusingly similar to the Complainant’s trademark BALENCIAGA and the first limb of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant has already confirmed that the Respondent is not affiliated with the Complainant. The Respondent has also not received the Complainant’s consent to use the trademark BALENCIAGA. There is no evidence to suggest that the Respondent is commonly known by any of the Disputed Domain Names. The websites resolved from the Disputed Domain Names <balenciagahot.com>, <balenciagahk.com>, <hkbalenciaga.com> and <yn7-balenciaga.com> appear to be intended for commercial gain and can hardly be regarded as noncommercial or fair use of the trademark BALENCIAGA. In the circumstances, a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names has been established on the available facts. As no Response was filed, the prima facie case stands and the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy is relevant to the present facts. It specifies the following situation as an example of bad faith registration and use:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.

The websites resolved from the Disputed Domain Names <balenciagahot.com>, <balenciagahk.com>, <hkbalenciaga.com> and <yn7-balenciaga.com> are obviously intended for commercial gain. The evidence indicates that these websites are equipped with online shopping capabilities. The Panel accepts that the trademark BALENCIAGA is well-known. It is inconceivable that the Respondent was not aware of the trademark BALENCIAGA when he/she registered each of these 4 Disputed Domain Names. Based on the evidence before the Panel, the Respondent has in all likelihood adopted these Disputed Domain Names to attract Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark BALENCIAGA as to the source, sponsorship, affiliation, or endorsement of the websites or products on the websites in the manner described in paragraph 4(b)(iv). Therefore, the Panel holds that Disputed Domain Names <balenciagahot.com>, <balenciagahk.com>, <hkbalenciaga.com> and <yn7-balenciaga.com> were registered and are being used in bad faith.

In relation to <oyabalenciaga.com>, <balenciaga-t999.com> and <balenciaga-yhk.com> which do not resolve to any website, the Respondent is not free of the taint of opportunism exhibited in the resolution of <balenciagahot.com>, <balenciagahk.com>, <hkbalenciaga.com> and <yn7-balenciaga.com> to websites which create a likelihood of confusion with the trademark BALENCIAGA. In fact, such behavior is consistent with the form of opportunistic bad faith known as “passive holding” first propounded in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and subsequently developed by other UDRP panels. The circumstances taken as a whole, in particular the registration of multiple domain names incorporating the trademark BALENCIAGA by the Respondent, point conclusively to a finding that the Respondent registered and is using all of the Disputed Domain Names in bad faith.

The charges of bad faith alleged against the Respondent are serious. The failure of the Respondent to respond to these charges suggests that the Respondent is either not in a position to defend against these charges or is simply uninterested. Such behavior only reinforces the Panel’s conclusion that the Respondent registered and used all 7 Disputed Domain Names in bad faith. Accordingly, the third limb of paragraph 4(a) of the Policy is established.

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 <balenciagahk.com>, <balenciagahot.com>, <balenciaga-t999.com>, <balenciaga-yhk.com>, <hkbalenciaga.com>, <oyabalenciaga.com> and <yn7-balenciaga.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: January 31, 2013