WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goyard St-Honoré v. Alice Chan
Case No. D2014-1166
1. The Parties
The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Lexington Avocats, France.
The Respondent is Alice Chan of Guangdong, China.
2. The Domain Names and Registrar
The disputed domain names <goyardreplicasale.net> and <goyardreplicaus.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2014, 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 July 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2014.
The Center appointed Antony Gold as the sole panelist in this matter on August 12, 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 Complainant is a designer, manufacturer and seller of luxury goods, located in France. It was established in 1853. Its trade mark, GOYARD, is the family name of its founder. The Complainant’s goods primarily comprise hand bags, wallets, purses, luggage and other similar items. They are sold in numerous countries. The Complainant has secured widespread protection for the GOYARD trade mark. It has individual trade mark registrations in over 20 countries as well as a Community Trade Mark for GOYARD and an International Trade Mark designating a number of countries, including China.
The disputed domain names were registered on November 5, 2013, in respect of <goyardreplicaus.com> (the “first disputed domain name”), and May 3, 2014, in respect of <goyardreplicasale.net> (the “second disputed domain name”).
The web site to which the first disputed domain name points offers for sale a range of products similar to those sold by the Complainant. They are all offered for sale under the GOYARD name. The Complainant has provided selected screen prints of the web site from which it is evident that the page headings vary slightly. However, one example includes the words “1:1 Mirror Quality Knock Off Goyard” and then “New Goyard For Sale”. The descriptions which appear underneath photographs of some products advertised for sale include phrases such as “Best Quality Fake” and “Imitation Fake”. In respect of other products, the description does not indicate whether they are acknowledged fakes or whether the Respondent is purporting to offer for sale genuine products of the Complainant.
The Complainant has not provided screen prints of the web site to which the second disputed domain name points. As the use to which the second disputed domain name has been put is germane to these proceedings, the Panel has accordingly visited the web site. As at the date of this decision, it forwards to a web site at “www.replicabagbulk.net”, branded “Best Replica Handbags”, which offers for sale a range of products based on the bags of many luxury goods designers, albeit not the Complainant. The description applied to all the products viewed by the Panel is “Replica Knockoff”. The Panel has also conducted a WhoIs search in respect of the domain name <replicabagbulk.net> and established that this domain name is also owned by the Respondent.
5. Parties’ Contentions
The Complainant asserts that the disputed domain names are confusingly similar to a trade mark or service mark in which it has rights. The Complaint sets out in some detail the Complainant’s trade mark rights in its GOYARD trade mark as outlined above. The Complainant also provides details of the domain names it has registered including <goyard.com>, <goyard.net>, <goyard.us> and <goyard.eu>. In addition it has provided copies of various press articles from a number of publications which mention the GOYARD brand.
The Complainant says that the “.com” suffix should be disregarded for the purpose of assessing similarity. It says that the GOYARD trade mark is inherently distinctive and has, to the best of its knowledge, no meaning in any language. In respect of the first disputed domain name it says that the addition of the letters “replicaus” to its GOYARD trade mark would be perceived by many Internet users as the words “replica” and “us” (that is, in upper case, “US”, a common abbreviation for the United States of America). The Complainant says the addition of “replicaus” to its GOYARD trade mark comprises the addition of words which are wholly descriptive in character and which Internet users would understand to mean that replica (or counterfeit) copies of the Complainant’s products are for sale at the web site established at the first disputed domain name, particularly to English speaking users. Accordingly, the Complainant says that, notwithstanding the addition of “replicaus” to “Goyard”, the first disputed domain name is confusingly similar to its GOYARD trade mark.
The Complainant adopts a similar analysis in respect of the second disputed domain name. Specifically, it says that the addition of “replica” and “sale” after “Goyard” will signify to most Internet users that replicas of the Complainant’s products are available for purchase from the web site established at the site of the second disputed domain name.
In support of its contention that the Respondent has no rights or legitimate interests in respect of the disputed domain names the Complainant asserts that it has not had any relationship of any type with the Respondent at any time and that it has never authorized the Respondent to use its GOYARD trade mark. It says that Respondent is not a manufacturer, licensee or distributor of the Complainant and that the Respondent is not using the disputed domain names in connection with a bona fide offer of goods nor is it making a legitimate noncommercial use of the disputed domain names, not least because the Complainant believes that all the goods offered for sale at the web sites established at the disputed domain names are counterfeit.
Lastly, the Complainant says that the disputed domain names were both registered and used in bad faith. In terms of bad faith registration, the Complainant says that the incorporation of GOYARD, being a very well-known mark, into the disputed domain names, coupled with its inherently distinctive character and the fact that the Respondent has used the disputed domain names to establish web sites selling products purporting to be copies of the Complainant’s goods establishes that the registration of the disputed domain names was in bad faith. The Complainant draws attention to another complaint under the Policy it brought against Alice Chan, the same respondent as in these proceedings, namely Goyard St-Honoré v. Alice Chan, WIPO Case No. D2014-0540. Those proceedings, which related to the domain names <goyardreplicasale.com> and <goyardreplicauk.net>, were decided in its favour by the panel.
The Complainant points to the nature of the Respondent’s continued use of the web sites to which the disputed domain names point as evidence of continued bad faith use of the disputed domain names. The Complainant says that it is obvious that the goods offered for sale by the Respondent are counterfeit because their prices are far too low relative to the prices of the genuine products and that some of the products which are purportedly sold as the Complainant’s products do not exist in the Complainant’s range of products. Moroever, the Complainant says that it does not sell its goods on the Internet. The Complainant says that Internet users visiting the web sites to which the disputed domain names point are likely to be misled into believing they have found online shops legitimately connected to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are 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 with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in its GOYARD trade mark. The trade mark registrations it has secured for GOYARD in multiple jurisdictions, numerous examples of which were submitted with the Complaint, provide sufficient evidence in this respect and it is not necessary to deal with the additional evidence the Complainant has submitted in order to substantiate its rights.
As the Complainant asserts, it is well established that the applicable generic Top-Level Domain suffixes “.com” and “.net” should be disregarded for the purpose of determining whether a disputed domain name is confusingly similar to a complainant’s mark.
Accordingly, is the material part of the first disputed domain name, “goyardreplicaus” confusingly similar to “Goyard”? The word “replica” does not inevitably connote an unlawful copy but in the context of a domain name it would suggest to most Internet users that the web site to which the first disputed domain name points is selling copies of goods associated with the GOYARD brand. The meaning of the letters “us” may not immediately connote to every Internet user that the goods are for sale to Internet users in the United States of America or to Internet users in English-speaking countries as it might also be read as the object form of “we”. However, the addition of “replica” and “us” do not add any distinctive or distinguishing component to the GOYARD trade mark.
The test of confusing similarity needs to take into account the inherent distinctiveness of the trade mark and the fame of the trade mark. The more distinctive the trade mark and the greater its fame, the more likely it is that the Internet user will focus on the distinctive component of the disputed domain name and the less emphasis will be placed on the words which follow, particularly if they are entirely descriptive in character. The Complainant has established that the trade mark GOYARD is wholly distinctive in character and the press articles it submitted with the Complaint support the contention that it is very well known in at least some jurisdictions. As explained above, “Goyard” is the only distinctive element in the first disputed domain name and the Panel accordingly finds that the first disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Is the second disputed domain name, “goyardreplicasale”, similar to “Goyard”? The use of the words “replica” and “sale” in conjunction with “Goyard” clearly connote that goods which are replicas of the Complainant’s goods are for sale at the web site established at the site of the disputed domain name. The additional words are entirely descriptive in character. Accordingly, the Panel finds that the second disputed domain name is also confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that it has not given any authority to the Respondent to use its GOYARD trade mark. There is no evidence that the Respondent is known by the name GOYARD or has any other entitlement to use this name. The Respondent has chosen not to avail herself of the opportunity to respond to the evidence and submissions filed by the Complainant. There is accordingly nothing before the Panel to suggest any basis on which the Respondent might have a right or legitimate interest in the disputed domain names. The Panel accordingly finds that the Respondent has no such rights or legitimate interests.
C. Registered and Used in Bad Faith
As has been explained above, the uses which the Respondent has put the first and second disputed domain names would appear, at least at present, to vary slightly in that the web site to which the second disputed domain name now forwards does not purport to sell either genuine or replica bags of the Complainant but “knock offs” of bags of the Complainant’s competitors. In terms of bad fad faith, such conduct has essentially the same characteristics in either case; the Complainant’s GOYARD mark is being used by the Respondent as bait to attract Internet users to its web sites for commercial gain. Whether the Respondent chooses at any given moment to use the web site to promote replica bags of the Complainant or its competitors is conduct which is accordingly perceived as of largely the same type under the terms of the Policy. However, the Panel should add that the Complainant should have provided screen prints of the web site at the second disputed domain name (or the web site to which this domain name pointed, as appropriate) and have made specific submissions based upon their content. It should not have been necessary for the Panel to make its own investigations in this respect.
The evidence filed by the Complainant shows that by the time of the registrations of the disputed domain names in 2013 and 2014 the Complainant had an international reputation and trade mark rights in numerous countries, including China. The fact that the Respondent has established web sites at the sites of the disputed domain names which purport to sell “replica” copies of the Complainant’s goods or replica copies of those of its competitors, coupled with the Respondent’s previous registration of other “Goyard” related domain names which were the subject of the decision in Goyard St-Honoré v. Alice Chan, WIPO Case No. D2014-0540 shows that the Respondent was aware of the Complainant’s repute and the products it sold. The Panel accordingly finds that the disputed domain names were registered in bad faith.
The sites at the disputed domain names have been used to sell replica goods of the Complainant or its competitors. The goods on sale at the web site of the first disputed domain name and at the web site to which the second disputed domain name presently points are either “replicas” or counterfeit. The Panel accordingly also finds that the Respondent’s use of the disputed domain names is in bad faith on the grounds set out at paragraph 4(b)(iv) of the Policy namely that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites or of products on them.
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 <goyardreplicasale.net> and <goyardreplicaus.com> be transferred to the Complainant.
Date: August 16, 2014