WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Whois Privacy Protection Service, Inc.
Case No. D2014-0231
1. The Parties
The Complainant is Goyard St-Honoré of Paris, France, represented by Lexington, France.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <goyardshop.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 February 14, 2014. On February 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email communication to the Complainant informing it that the Complaint was administratively deficient and inviting it to file an amended Complaint. The Complainant filed an amended Complaint on February 26, 2014.
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 February 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2014.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on March 26, 2014. 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 facts relevant to the findings and decision in this case are that:
- the Complainant sells, inter alia, handbags and travelling bags by reference to the registered trade mark, GOYARD;
- the trade mark is, inter alia, the subject of United States Federal (“USPTO”) Trade Mark Registration No. 1,821,224 dated February 15, 1994, for the word mark GOYARD;
- the disputed domain name was registered on October 7, 2012;
- at the time the Complaint was filed, the disputed domain name resolved to a website showing goods of the same kind as those sold by the Complainant, offered for sale by reference to the trade mark; and
- there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in GOYARD and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Complainant provides a copy of its USPTO certificate of registration of the trade mark GOYARD. The Panel accepts that the Complainant has trade mark rights.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the trade mark with other integers of no distinctive value. For the purposes of testing confusing similarity, the generic Top-Level Domain (“gTLD”) “.com” can be ignored2. Likewise, within the context of the Complainant’s business, the word “shop” is wholly descriptive and has no effect on the overall impression of the disputed domain name which might avoid confusion with the trade mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests3.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The identity of the holder of the disputed domain name is protected by a privacy shield. The WhoIs database identifies the registrant as “Whois Privacy Protection Service, Inc.” In consequence of these Administrative Proceedings the Registrar disclosed the apparent underlying holder to be a third party fashion house in New York, US. None of this information supports a conclusion that the Respondent might be commonly known by the disputed domain name4.
Moving on, there is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. There is no indication of the use of the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website where handbags offered for sale by reference to the trade mark are shown. The Complainant asserts that the handbags shown there are counterfeit copies of the genuine goods or are handbags which find no correspondence in the Complainant’s range of goods. Absent a Response, the Panel accepts that the goods are not genuine goods made by the Complainant and that the trade mark has been applied without permission.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
It is plain to the Panel that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The Panel finds that the likelihood of confusion as to the source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. The resolving website exits for the purpose of commercial gain.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
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 <goyardshop.com> be transferred to the Complainant.
Debrett G. Lyons
Date: April 8, 2014
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
4 It is important to note here that the Center’s attempts to ensure that the Respondent was aware of the Complaint resulted in correspondence being sent to the New York address given for the fashion house which prompted, on March 6, 2014, an email from the counsel to the concerned brand which went on confirming to the Center that their client had no part in the registration of the disputed domain name. (The letter posited that the actual owner of the disputed domain name had assumed the name of their client and used its New York address to commit a fraud on the domain name Registrar).
The Panel concludes from the evidence as a whole that this scenario is, very likely, true. (The Panel notes for the record that the counsel was keen to distance their client from any possible liability that might result from the improper assumption of one of their client’s trademarks.) In light of the outcome of these proceedings and to reasonably safeguard the interests of an innocent third party who might suffer tarnishment, the apparently underlying Respondent’s name has been redacted from this decision.