WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Rooy Beteryty
Case No. D2013-1023
1. The Parties
The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondent is Rooy Beteryty of Lamerey, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <goyardtoteonline.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On June 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2013.
The Center appointed David H. Tatham as the sole panelist in this matter on July 8, 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 an old and very well-established French company that has, since 1853, been in the business of making and selling luxury goods, including bags and luggage. It supplied copies of registrations of its trademark GOYARD in twenty seven countries, the earliest being a French registration No. 16333244 dated January 20, 1981. They include a trademark registration for GOYARD, registered on February 15, 1994 in the United States of America (“USA”) where the Respondent is apparently located. It also owns a number of domain names which include the name “Goyard”, including <goyard.us>.
The disputed domain name <goyardtoteonline.com> was registered on September 17, 2012.
Since the Respondent has not filed any response, there is almost no information about it.
5. Parties’ Contentions
As noted above, the Complainant is an old established company selling an extensive range of luxury and expensive leather goods under the name and trademark GOYARD. This name is the subject of registrations as a trademark in numerous countries. As noted above, the oldest of these registrations is in France, but the list includes International Registration No. 619536 dating from 1994 which is extended to thirteen countries, as well as a European Community trademark No. 4497641 which dates from 2005 and which is valid in all the countries of the European Union.
The Complainant also has a trademark registration for GOYARD in the United States of America which is the Respondent’s location, that was registered in 1994, claiming first use from January 1, 1984.
The Complainant referred to several earlier decisions under the Policy all involving domain names which included the trademark GOYARD and all of which the Complainant was successful.
The Complainant contends that the disputed domain name is confusingly similar to its trademark GOYARD as it contains the name and trademark GOYARD in its entirety with the addition of the descriptive words “tote” and “online”. The Complainant contends that these additional words will not distinguish the disputed domain name from the GOYAYD name and trademark, as “tote” refers to a type of bag sold by the Complainant while “online” merely indicate that the goods can be found on a website. Furthermore, the generic suffix “.com” is irrelevant as it is well established that the generic top level domain does not need to be taken into consideration when evaluating the question of similarity.
In addition, the Complainant contends that the Respondent cannot have any rights or legitimate interests in a domain name which incorporate the Complainant’s well-known name and trademark GOYARD because –
- There is no indication that the Respondent is known by the disputed domain name;
- The word “Goyard” has no meaning in any language or dictionary other than as the name of the Complainant and it does not describe the goods offered for sale on the website at the disputed domain name;
- The Complainant has no relationship with the Respondent;
- The Respondent has no prior rights in the disputed domain name and he has never used the name “Goyard” – apart from in the disputed domain name – neither before or after the founding of the Complainant, which occurred some 150 years ago;
- The trademark GOYARD is very well known and it has been widely used throughout the world, and exclusively by the Complainant;
In addition, the Complainant contends that the Respondent has made no bona fide use of the disputed domain name as it points to a website which gives every appearance of being an official site belonging to the Complainant since it contains several of the Complainant’s other trademarks. The Complainant alleges that the goods advertised as being for sale on the website at the disputed domain name must be counterfeit because the prices are far too low for them to be genuine luxury goods, and also because some of them do not even feature in Complainant’s own range of products. Thus, the Respondent is not making a fair use of the disputed domain name, and any use thereof is intended to mislead potential customers as to the true origin of the goods purely in order to trade on Complainant’s goodwill.
The website at the disputed domain name directs Internet users to a website that relates to the Complainant’s business and which make use of its trademarks, including a chevron device that is exclusive to the Complainant and which is actually registered as a trademark in many countries, including the Respondent’s country of origin, USA. The Complainant contends that the Respondent is thereby attempting to divert customers from itself, to mislead them, and to disrupt its business. The Complainant makes all of its goods itself and has no relationship with the Respondent. Furthermore, its goods are luxury goods and so are not sold via the Internet. The Respondent must have been fully aware of the Complainant and its products when selecting and registering the disputed domain name and the Complainant contends that the Respondent is thereby intentionally attempting to attract Internet users to its website for commercial gain.
The Complainant concludes by requesting that the disputed domain name be transferred to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Preliminary Remark
Paragraph 5(b)(i) of the Rules specifies that a respondent is expected to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present its case, but has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “[…] the Panel shall draw such inferences therefrom as it considers appropriate.” It was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443 that “[s]ince the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.”
In this present proceeding, since the Respondent has chosen not to submit a Response, its default entitles the Panel to conclude that it has no arguments or evidence to rebut the Complainant’s assertions, and the Panel will therefore take its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
B. Identical or Confusingly Similar
The Complainant claims to have a number of registrations of the trademark GOYARD and it supplied copies of twenty seven of them which, as noted above, include an International and a CTM registration both of which extend to numerous other countries.
As Complainant has pointed out, it is by now well established that, when comparing a disputed domain name with a trademark, a generic Top-Level Domain (“gTLD”) such as, in this case, “.com” may be disregarded. See, for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, in which it was found that the gTLD extension such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark GOYARD and the phrase “goyardtoteonline”.
The Complainant’s name and trademark GOYARD is well known throughout the world and, not surprisingly, it has attracted several attempts by cybersquatters to incorporate it into various domain names, and the Complainant refers to nine such cases, all of which were decided in its favor.
In the present case, the disputed domain name includes two generic words – ‘tote’ and ‘online’ – and there is little doubt that the average consumer would regard the disputed domain name as referring to, or belonging to, the Complainant seeing that the name GOYARD is famous and that the Complainant has been trading for 150 years. Also, tote bags are products which the Complainant makes and sells.
In Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033, it was held that “it is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins, WIPO Case No. D2004-0943, that “the Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes ‘buy’ and ‘generic’ are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the term ALLEGRA.”
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved.
C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name. It is well established that once a complainant has made out a prima facie case that the respondent has no rights or legitimate interests in a domain name, then the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828, in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name.
In the present case, the Respondent has chosen not to file anything in its defense despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed any other circumstance, are in its favor.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name which, as found above, is confusingly similar to the Complainant’s well-known trademark GOYARD. The website at the disputed domain name makes no mention of the Respondent although it does give every appearance of being a genuine site belonging to the Complainant, with the GOYARD name and crest prominently displayed at the top, and containing illustrations of a large number of different types of “Goyard” bags, including several tote bags. There is also a picture of Victoria Beckham holding a (presumably) genuine one.
The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use of it.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name so that paragraph 4(a)(ii) of the Policy is also proved in respect of it.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances which are evidence that a respondent has registered and uses the domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of two of them.
The Panel finds that the registration of the disputed domain name does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business, but it is also an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. In the Panel’s view, these fall squarely within paragraph 4(b)(iii) and (iv) of the Policy.
Additionally, the Respondent must have been aware of the Complainant’s name and trademark at the time of the registration of the disputed domain name because the trademark GOYARD is well known and recognized the world over. In addition, and as noted above, the website associated with the disputed domain name <goyardtoteonline.com> contains illustrations of, and invitations to buy a large number of bags which, in this Panel’s view, are likely counterfeit examples of the Complainant’s genuine goods.
This suggests opportunistic bad faith on the part of the Respondent. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trademark in the domain name, and because of the similarity of products implied by addition of telecommunications services suffix. All of which suggested a knowledge of the complainant’s rights in the trademarks.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut any of the Complainant’s arguments on this point.
The Panel concludes that paragraph 4(a)(iii) of the Policy has been proved.
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 <goyardtoteonline.com> be transferred to the Complainant.
David H. Tatham
Date: July 16, 2013