WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Goyard St-Honoré v. Baizhi Zhang

Case No. D2013-0897

1. The Parties

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

Respondent is Baizhi Zhang of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <goyard-tote.com> is registered with Chengdu Fly-Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2013. On May 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 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 May 28, 2013, the Center sent an email communication in both Chinese and English to the parties regarding language of the proceedings. On the same day, Complainant confirmed its request that English be the language of the proceedings. Respondent did not comment on the language of the 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 June 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 26, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on July 23, 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

Complainant, Goyard St-Honoré, is a company incorporated in Paris, France. Goyard is a well-established and famous French luxury goods house, operating since 1853. It has been a French luxury luggage and trunk maker who designs, manufactures and markets its luxury goods all over the world, mainly: hand bags, wallets, purses, luggage, trunks et al, (see Annexes 38-40 to the Complaint).

Complainant has exclusive rights in the GOYARD Marks. Complainant is the exclusive owner of the well-known registered GOYARD trademarks globally, including in Hong Kong, China (since 2005) and Mainland China (since 1994) (see Annexes 3-29 to the Complaint). It also owns the domain name registrations <goyard.com> (since January 2, 1998), <goyard.asia> (since June 26, 1994) and <goyard.fr> (since May 14, 1999); and multiple other domain names incorporating the GOYARD Mark (see Annexes 30-36 to the Complaint).

Respondent is Baizhi Zhang of Hong Kong, China. The disputed domain name <goyard-tote.com> was registered on September 23, 2011, long after the GOYARD Marks became internationally well-known (Annexes 3-29 and Annexes 38-40 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights;

Besides the unregistered rights belonging to Complainant on GOYARD through the old and wide use of the GOYARD word mark, Complainant is the owner of, among others, registered GOYARD word marks globally, including Hong Kong, China (since 2005), and Mainland China (since 1994) (see Annexes 3-29 to the Complaint).

Complainant operates, among others, the domain names reflecting the GOYARD trademark, such as <goyard.com> registered on January 2, 1998 (Annex 30 to the Complaint) and multiple other domain names incorporating the GOYARD Mark (Annexes 31-36 to the Complaint).

The disputed domain name is confusingly similar to the registered GOYARD word marks hold by Complainant.

The disputed domain name <goyard-tote.com> incorporates the GOYARD trademark is its entirety.

The use of the descriptive word “tote” cannot be considered sufficient to avoid confusion between the disputed domain name and Complainant’s trademark.

This additional descriptive word of Complainant’s goods is directly linked to Complainant’s use of his GOYARD Mark (registered in class 18 also for handbags) and will not generally serve to distinguish the disputed domain name from the GOYARD Mark.

Furthermore, the word “tote” only refers to one of GOYARD’s most emblematic product, the ST-LOUIS BAG, which is considered a “tote bag”, and widely regarded as the “Goyard tote”. It obviously increases the likelihood of confusion between the latter marks and the disputed domain name.

The mere adjunction of the generic “.com” extension is irrelevant as it is well established that the generic Top Level Domain is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of Complainant’s mark and the disputed domain name.

(b) Respondent has no rights or legitimate interests in the disputed domain name.

There is no indication in the WhoIs (Annex 1 to the Complaint) that Respondent is known under the disputed domain name, or under GOYARD. GOYARD has no meaning whatsoever in Chinese or English, which are the languages of Respondent and the websites, according to online dictionaries (Annexes 41 and 42 to the Complaint), or in any other language.

GOYARD does not describe or designate the goods offered for sale on the current website “www.goyard-tote.com” (such as, hand bags, luggage, and purses; Annexes 44, 41-42 to the Complaint).

Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use his GOYARD word mark in any fashion.

Respondent has no prior right in the disputed domain name. Respondent has never used the name GOYARD before or after the founder of GOYARD and Complainant started the business for 150 years (foundation of GOYARD and worldwide use of the GOYARD word mark started in 1853, acknowledged in many former UDRP cases).

Complainant’s GOYARD trademark is very well-known since it is an old and widely used mark throughout the world (Annexes 3-36, 39-40 to the Complaint, acknowledged in former UDRP case) and in the country of Respondent (Annexes 14, 16 and 38).

Respondent has never used the disputed domain name in connection with a bona fide offering of goods, or made a legitimate non-commercial use of the disputed domain name. The disputed domain name points to a website where counterfeit GOYARD goods can be purchased. The website appears to be a fake official GOYARD website and bears all the other Complainant’s trademarks (Annexes 43-44 and 3-29).

Complainant states that all the goods offered are counterfeit since (i) some of them do not exist in Complainant’s range of products, and (ii) the prices are way too low to be those of genuine luxury goods.

Respondent is not making a fair use of the disputed domain name. The disputed domain name and the website mislead consumers on the identity of the holder of the website and the origin of the goods that can be purchased. Respondent is trading on the goodwill of Complainant’s mark in order to generate revenues.

(c) The disputed domain name was registered and is being used in bad faith.

(i) The disputed domain name was registered in bad faith

GOYARD is the only distinctive word of the disputed domain name. Complainant’s GOYARD trademark is very well-known, because it is an old and widely used mark throughout the world and also in the country of Respondent, China.

The disputed domain name directs Internet users to a web page related to Complainant’s business. The website and the goods offered for sale are all bearing the well-known GOYARD device mark worldwide registered, including in China, Respondent’s country (Annex 43 to the Complaint).

By using Complainant’s well-known GOYARD device on his website “www.goyard-tote.com”, Respondent reveals his knowledge of Complainant’s trademark at the time of registration.

The website appears to be a fake GOYARD website misleading consumer with its relationship to Complainant and tarnishing Complainant’s reputation and the GOYARD trademark. Respondent is attempting to divert customers from Complainant and thus to disrupt Complainant’s business.

Respondent was fully aware of Complainant and its GOYARD mark when it selected the disputed domain name.

(ii) The disputed domain name is being used in bad faith

The disputed domain name directs Internet users to a website bearing all GOYARD trademarks, and offering for sale the type of goods sold by Complainant (e.g. hand bags, luggage, purses etc., Annexes 3-29, 43 and 44 to the Complaint).

These circumstances demonstrate that Internet users are likely to be misled into believing that they have found, with the disputed domain name, a website legitimately connected to Complainant.

The website sells goods bearing Complainant’s trademarks (Annexes 3-29, 43 and 44 to the Complaint) which are counterfeiting ones.

Complainant manufactures its goods in France in its own factories, controls all the marketing process and has no licensee (Annex 39 to the Complaint). Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use his GOYARD word mark in any fashion.

Complainant states that all the goods offered are counterfeit since (i) some of them do not exist in Complainant’s range of products, and (ii) the prices are way too low to be those of genuine luxurious goods.

Complainant has never and will never sell its goods on the Internet, because they are luxurious ones. Many former UDRP decisions show that registering and using domain names to sell counterfeit goods is a strong evidence of bad faith.

Respondent is trading on the goodwill of Complainant’s trademark in order to generate revenues. Respondent intentionally attempted to attract for commercial gain, Internet users to its website, by creating confusion with Complainant’s mark as to the source and/or affiliation of Respondent’s website and goods.

It seems obvious that Respondent has a commercial interest in choosing and using the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) Respondent clearly has the ability to understand and communicate in English;

(b) Respondent has used an English term in the disputed domain name, “tote” which refers to the goods covered by Complainant’s GOYARD trademark and the business of Respondent (offering for sale GOYARD counterfeit goods);

(c) Respondent’s website is in English;

(d) Respondent would be given a fair opportunity to present its case and that the proceeding takes place with due expedition if the Panel allows the proceedings to be conducted in English;

(e) Complainant, being a French entity, is not able to communicate in Chinese;

(f) Complainant is not in a position to conduct these proceedings in Chinese, without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting annexes;

(g) It would not be fair to Complainant to be forced to conduct the proceedings in Chinese.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from France, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “Goyard” and the English word “tote” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <goyard-tote.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex 44 to the Complaint); (c) the website at the disputed domain name appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings, and the decision will be rendered in English.

6.2. Discussion and Findings

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

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the GOYARD Marks acquired through registration. The GOYARD Mark has been registered worldwide including in China, and Complainant has a widespread reputation as a well-established French luxury goods house and a luxury luggage and trunk maker.

The disputed domain name <goyard-tote.com> comprises the GOYARD Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the additions of “-” and the final word “tote” to the mark GOYARD. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name. (Micronel AG v. Leafty, A. / yangbaozhu / Micronel U.S. LLC, WIPO Case No. D2012-1103)

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere additions of “-” and the descriptive term “tote” as a suffix to Complainant’s mark fail to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. The “tote” is one of the products of Complainant. According to Complainant, the word “tote” refers to one GOYARD’s most emblematic products, the ST-LOUIS BAG, which is considered a “tote bag”, and widely regarded as the “Goyard tote”. Internet users who visit <goyard-tote.com> are likely to be confused and may falsely believe that <goyard-tote.com> is operated by Complainant for selling GOYARD-branded products, particularly “Goyard tote”.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the GOYARD Marks.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the GOYARD Mark globally, including registration in Hong Kong, China since 2005, and Mainland China since 1994 (see Annexes 14 and 16 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (September 23, 2011). According to Complainant, Complainant is the world’s leading luxury goods house and a luxury luggage and trunk maker of hand bags, wallets, purses, luggage and trunks with more than a 150-year history.

Moreover, Respondent is not an authorized dealer of GOYARD branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Goyard” in its business operation or the use of the GOYARD Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the GOYARD Mark or to apply for or use any domain name incorporating the GOYARD Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <goyard-tote.com> on September 23, 2011. The disputed domain name is identical or confusingly similar to Complainant’s GOYARD Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported GOYARD products at <goyard-tote.com> (Annex 44 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the GOYARD Marks with regard to its products. Complainant has registered its GOYARD Marks internationally, including registration in China (since 1994). Moreover, the website at the disputed domain name advertises for sale various purported Goyard products. Respondent would likely not have advertised products purporting to be Goyard products on the website at the disputed domain name if it was unaware of Goyard’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the Goyard Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s GOYARD branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” purportedly offering Complainant’s GOYARD branded products without authorization. Complainant claimed that “Respondent intentionally attempted to attract for commercial gain, Internet users to its website, by creating confusion with Complainant’s mark as to the source and/or affiliation of Respondent’s website and goods.”

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the GOYARD Marks (as well as the content on Respondent’s website - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 44 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the GOYARD Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <goyard-tote.com> is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfills the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <goyard-tote.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: August 8, 2013