WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. DFASDF ASDF
Case No. D2013-1755
1. The Parties
The Complainant is Goyard St-Honoré of Paris, France, represented by Lexington, France.
The Respondent is DFASDF ASDF of new York, ME, United States of America.
2. The Domain Names and Registrar
The disputed domain names <goyardsac-fr.com>, <goyardsacfr.com> and <goyardtotefr.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 21, 2013.
The Center verified that the Complaint together with the amended 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 October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 19, 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 well-known luggage and fashion handbag designer established in 1853. It takes its name from that of its founder Francois Goyard. It owns trademark registrations for the mark GOYARD in many jurisdictions worldwide as early as 1981. In addition, the Complainant owns numerous domain names reflecting the GOYARD trademark such as <goyard.com> and <goyard.fr>. The Complainant’s merchandise using the trademark has been widely marketed in many countries, including the United States where the Respondent is allegedly located.
On a website accessed by the disputed domain name are found advertisements for counterfeit Goyard merchandise and reproductions of the Complainant’s trademark. The Complainant’s device trademark is also depicted.
The disputed domain name was registered on March 18, 2013.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The Respondent has no rights or legitimate interest in the disputed domain name. The Complainant gave no rights to the Respondent. The Respondent has not given any evidence which would bring it within Paragraph 4(c) of the Policy. The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark. The whole of the trademark is reflected in the disputed domain name with the addition of:
a) the expressions “sac-fr” and “sacfr”. The word “sac” in French can refer to a handbag, one of the Complainant’s products. The expression “fr” is an abbreviation for France.
b) the expression “totefr”. The word “tote” refers to one of the Complainant’s most famous products, the St. Louis tote bag.
These additions to the trademarked word exacerbate the confusing similarity in that they imply that the goods originate in France. The goods are amongst those marketed by the Complainant.
Accordingly, Paragraph 4(a)(i) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no right to reflect its trademark in the disputed domain name. In the absence of any claim by the Respondent to come within paragraph 4(c) of the Policy, the absence of any right is sufficient to satisfy paragraph 4(a)(ii) of the Policy.
The Respondent has not sought to come within any of the limbs of paragraph 4(c) of the Policy any one which, if proved, could have provided a defense.
Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
There can be no doubt that bad faith registration and use can clearly be inferred. The content of the Respondent’s website shows that it knows a lot about the Complainant and its business. So much so, that it is blatantly pirating the Complainant’s trademark and goodwill by offering to sell counterfeit Goyard merchandise.
Internet users are likely to be misled into believing that they have found the Complainant’s legitimate website. The Complainant manufactures its goods in France: it controls its marketing processes, it never sells on the Internet, the prices offered by the Respondent are well below those charged by the Complainant.
The Respondent is trading on the Complainant’s reputation and trademark in a bid to make money out of counterfeit activities.
7. Comment on Respondent’s Identity
The Respondent is registered only by a series of letters which have no particular meaning. A registrant for a domain name should be an identifiable individual or a corporation constituted under the laws of some jurisdiction. The jumble of letters here denotes neither.
In the Panel’s view, registrars should be vigilant to ensure that registrants of domain names are either a recognizable individual or a corporate personality. Otherwise, it makes it impossible for a trademark holder to commence any action – against blatant infringers – other than through recourse under the Policy which may not always provide sufficient relief against a counterfeiter.
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 <goyardsac-fr.com>, <goyardsacfr.com> and <goyardtotefr.com> be transferred to the Complainant.
Sir Ian Barker
Date: December 3, 2013