WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A. v. Liu Fang
Case No. D2016-0965
1. The Parties
The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Liu Fang of Xiamen, China.
2. The Domain Names and Registrar
The disputed domain names <balmainjeanssale.com>, <balmainoutletonlines.com>, <balmainoutletstore.com>, <balmainsale.com> and <cheapbalmain.com> are 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 May 13, 2016. On May 17 and May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 18 and May 21, 2016, 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 proceedings commenced on May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2016.
The Center appointed Sir Ian Barker as the sole panelist in this matter on June 24, 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 is a French corporation which operates globally at the high end of the fashion market, created in 1945 by Pierre Balmain. Celebrities and royal personages have worn clothing designed by the Complainant.
The Complainant registered the domain name <balmain.com> on March 17, 1997 and has there established a website from which it conducts retail operations. According to the Complainant, the website received an average of more than 36,000 unique visitors per month in the period January 2015 to January 2016.
The Complainant has 35 points of retail sale in France and has store locations in 40 other countries including boutique locations in large cities such as Hong Kong, Beijing and Shanghai.
The Complainant firstly registered, on April 2, 1955, the trademark PIERRE BALMAIN (International Registration No. 183835) in 12 countries for International Class 25 and mainly covering "garments" and "shoes". The Complainant has subsequently registered several trademarks consisting of the word "Balmain" sometimes with other elements in various countries and classes. The trademark BALMAIN has been registered in many countries, including China where the Respondent is located.
The disputed domain names were registered on September 25, 2015, without any authorization from the Complainant. On websites accessed by the disputed domain names, the Respondent offers to sell the Complainant's products and also those of competitors of the Complainant such as "Armani" and "Valentino".
The Complainant caused "cease and desist" letters to be written to the Respondent but these could not be delivered to the Respondent's address as shown in the relevant WhoIs details.
5. Parties' Contentions
Each of the disputed domain names is confusingly similar to the Complainant's registered trademarks for BALMAIN. The whole of the trademark is used in each disputed domain name with the addition of generic terms which exacerbate the confusing similarity, given the Respondent's attempts to sell fashion items of the Complainant and of the Complainant's competitors on its websites.
The Respondent was not given any authorization of any sort to reflect the Complainant's trademark in a domain name. None of the situations envisaged by paragraph 4(c) of the Policy can apply to the Respondent.
The Respondent must be taken to have registered and to be using the disputed domain names in bad faith. By purporting to sell the Complainant's products it has created "a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement" of its websites. The likelihood of confusion is great because of the addition of generic terms to the mark which emphasize sales. The Respondent's conduct is disruptive of the Complainant's business.
The Respondent must be presumed to have known of the Complainant and the fame of the Complainant's mark. The Complainant is well-known internationally and has stores in China where the Respondent is located. The Respondent's attempt to sell the Complainant's products on the Internet clearly demonstrates bad faith.
The Complainant's trademarks have been recognized in several UDRP decisions including Pierre Balmain S.A. v. Wang Xin, WIPO Case No. D2011-0753.
The Respondent is engaged in a pattern of cybersquatting as is shown by the registration of several domain names using the Complainant's mark in combination with generic words suggesting sales.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has trademark rights in respect of the word "Balmain". The mark is distinctive of the Complainant's business and it has a worldwide reputation including a reputation in China.
The generic terms "outletonlines", "jeansale", "outletstore", "sale" and "cheap" exacerbate the confusing similarity by implying that the Respondent's website, accessed through each of the disputed domain names, is a place where one can buy the Complainant's products.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademark in the disputed domain names.
This fact and the circumstances of the present case satisfy paragraph 4(a)(ii) of the Policy in the absence of any Response from the Respondent.
The Respondent could have claimed that one or other of the situations envisaged by paragraph 4(c) of the Policy applied to the registration of the disputed domain name. Had it invoked paragraph 4(c) and satisfied the Panel that one of its three provisions applied in this case, then the Respondent would have had a defense. However, the Respondent chose not to file a Response.
Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Without doubt, the Complainant has established both bad faith registration and bad faith use. This is a very obvious case of cybersquatting.
The Complainant has established a worldwide reputation for the sale of fashion goods both at outlets in China and online at its website which it has maintained for 19 years.
When it registered the disputed domain names less than a year ago, the Respondent must have known of the Complainant's mark and its international fame. This knowledge is shown by its brazen cybersquatting by which it attempts to sell the Complainant's products on websites accessed by the disputed domain names.
The confusion to Internet users is obvious as is the potential disruption to the Complainant's legitimate business of selling its products on the Internet. The number of disputed domain names is also indicative of bad faith. All incorporate the Complainant's trademark.
Accordingly, paragraph 4(a)(iii) of the Policy has been satisfied.
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 <balmainjeanssale.com>, <balmainoutletonlines.com>, <balmainoutletstore.com>, <balmainsale.com> and <cheapbalmain.com> be transferred to the Complainant.
Sir Ian Barker
Date: July 1, 2016