WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Hardy v. Liheng, Just Traffic Supervision Consulting
Case No. D2015-2265
1. The Parties
The Complainant is Pierre Hardy of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Liheng, Just Traffic Supervision Consulting of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <pierrehardy.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2015. On December 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2016.
The Center appointed Charles Gielen as the sole panelist in this matter on February 4, 2016. 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, who is a fashion designer, owns several trademark registrations for the word mark PIERRE HARDY, among which International Registration No. 992959 covering a multitude of countries, which was registered on March 7, 2008, Community trademark registration No. 3057081, registered on February 17, 2008 and registration No. 301098946 registered on April 21, 2008 in Hong Kong, China. The International Registration and the registration in Hong Kong, China was made for goods in classes 14, 18 and 25; the Community trademark registration was made for goods in classes 3, 9, 14, 18 and 25.
The Respondent registered the disputed domain name <pierrehardy.biz> on August 18, 2013. The disputed domain name linked to a page which shows a list of the products offered by the Complainant and now links to an empty page.
5. Parties’ Contentions
The Complainant is the well-known designer Pierre Hardy who launched his own business in 1990 after having worked as a fashion designer for companies like Christian Dior, Balenciaga and Sequoia. The trademark PIERRE HARDY gained international recognition also because shoes under this trademark are used by famous Hollywood Stars. Furthermore, the Complainant owns a multitude of domain names, in which the name Pierre Hardy is used. The Complainant argues that the Chinese Trademark Review and Adjudication Board recognized that the trademark PIERRE HARDY is well-known to the Chinese public, and the Korean Intellectual Property Office specifically stated that the trademark PIERRE HARDY is well known worldwide.
The Complainant is of the opinion that the disputed domain name is identical or confusingly similar to the trademarks he owns. Furthermore, the Respondent does not own any rights or legitimate interests in the disputed domain name and finally, the disputed domain name is registered and is being used in bad faith.
According to the Complainant, the Respondent has not been licensed nor otherwise been permitted by the Complainant to use his trademark PIERRE HARDY, or to apply for any domain name incorporating the trademark. Moreover, there is no proof of a relationship or economic link between the Complainant and the Respondent. According to the Complainant, the Respondent registered the disputed domain name with the intent of obtaining a commercial gain out of the reputation of PIERRE HARDY and furthermore the disputed domain name was deliberately being used for the sole purpose of earning money by listing sponsored commercial links using the reputed trademark PIERRE HARDY. The Complainant believes that the Respondent, residing in Hong Kong, China, chose the disputed domain name because of its fame, particularly in China and Hong Kong, China. The bad faith also follows from the fact that the Respondent, after having been summoned on behalf of the Complainant, offered to sell the disputed domain name for USD 1,890 after which the website no longer showed the links displaying the trademark PIERRE HARDY. The mere holding of the landing page to which the disputed domain name links, is an act of bad faith in itself, also given the repute of the trademark PIERRE HARDY.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are justified and that the disputed domain name should be transferred to the Complainant. The Panel gives the following reasons for its decision.
A. Identical or Confusingly Similar
The Complainant proves that he has rights in the trademark PIERRE HARDY based on the aforementioned trademark registrations. This trademark is very distinctive with a substantial reputation and goodwill. The disputed domain name is confusingly similar to this trademark because it contains the identical name PIERRE HARDY without any addition. In making the comparison between the trademark and the disputed domain name the generic Top-Level Domain (“gTLD”) suffix is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademark. Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not show any prior legitimate use of the name Pierre Hardy, which is not a usual name and is very distinctive of the goods for which this mark is registered and used. The Panel is also of the opinion that it is no coincidence that the Respondent residing in Hong Kong, China chose the trademark PIERRE HARDY in the disputed domain name which represents a well-known trademark in China, Hong Kong, China and the Republic of Korea. A strong indication of the lack of own legitimate interests, is that the Respondent, who is not known under the name Pierre Hardy, started to link the disputed domain name to a page on which fashion products are being offered. Finally, the Respondent did not present any allegations or evidence of rights or legitimate interests it might have in the disputed domain name. In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The Panel recalls that the trademark of the Complainant is reputed in a multitude of countries, in particular in Hong Kong, China and the Republic of Korea, and is used and has been registered before the disputed domain name was registered. The Panel agrees with the Complainant that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, affiliation and endorsement of the Respondent’s website. Originally, the disputed domain name linked to a webpage showing fashion products using the trademark PIERRE HARDY. Upon having been summoned to transfer the disputed domain name, the Respondent offered the disputed domain name for sale to the Complainant for a price of USD 1,890, showing that it wanted to benefit from using the disputed domain name that contains the well-known trademark of the Complainant. This behavior should be considered as bad faith without doubt. The fact that subsequently, the content of the page was taken away, resulting in a blank page does not change the original bad faith behavior. In the present circumstances, the passive holding of the disputed domain name should be considered as an act of bad faith.
In view of the above, the Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 <pierrehardy.biz> be transferred to the Complainant.
Date: February 9, 2016