WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pierre Balmain S.A. v. lan qing tian

Case No. D2016-1796

1. The Parties

The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is lan qing tian of Chengdu, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <pierrebalmain.vip> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2016. On September 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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.

On September 7, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On September 8, 2016, the Complainant submitted an amended Complaint which included a submission of English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on September 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2016.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 14, 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, Pierre Balmain S.A., was founded in 1945 by the French fashion designer Pierre Balmain. The Complainant designs and sells clothing, including outerwear, dresses, skirts, tops, jeans and trousers, shoes, bags, accessories, and fragrances. In the period following World War II, Pierre Balmain’s signature “Jolie Madame” style became a favorite style among European royalty and Hollywood stars. Audrey Hepburn, Ava Gardener, Brigitte Bardot, Katherine Hepburn, Sophia Loren, and other stars wore Balmain’s designs. Nicaraguan first lady Hope Portocarrer and Queen Sirikit of Thailand also wore Balmain’s designs. Balmain promoted himself internationally by traveling the world and lecturing on fashion in France. In 1951, Balmain expanded operations into the United States of America, selling ready-to-wear clothes, which earned Balmain the Nieman Marcus Fashion Award in 1955. In 2015, H & M Hennes & Mauritz AB announced collaboration with the Complainant, its eleventh guest-designer collaboration.

The Complainant has a global presence, with store locations in over 40 countries worldwide and boutique locations in some of the largest cities of the world, including Paris, London, Shanghai, Beijing, and Dubai. In the United States of America, the Complainant’s products are sold in seven retail stores, including Barneys New York, Saks Fifth Avenue and Neiman Marcus New York. In 2015, the Complainant’s net sales exceeded EUR 58 million.

The Complainant has an Internet presence through its primary website “www.balmain.com” and through social media platforms, including Instagram, Facebook and Twitter. The Complainant’s primary website received an average of more than 36,000 unique visitors per month in the period between January 2015 and January 2016. As of February 2016, the Complainant reported more than 3 million total followers on Instagram, more than 529,000 page Likes on Facebook, and almost 10,000 new followers on Twitter.

The Complainant owns trademark registrations for its PIERRE BALMAIN mark in multiple jurisdictions, including the following trademark registrations in China, where the Respondent is located: Registration Nos. 5429218 (registered on September 21, 2009), 5429219 (registered on October 28, 2009), 5429220 (registered on September 14, 2009), 5429264 (registered on June 14, 2009), 5429270 (registered on November 21, 2009).

The Respondent registered the disputed domain name on June 17, 2016. The disputed domain name resolves to an inactive website. In addition to the disputed domain name, the Respondent currently holds registrations for thousands of domain names. Among them are domain names that consist of well-known fashion brand names, including <tom-ford.vip>, <tommy.hilfiger.vip>, <dolce-gabbana.vip>, <affliction.vip>, and <franck-muller.vip>.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant is the owner of the PIERRE BALMAIN trademark by virtue of its registrations. When comparing the disputed domain name to the Complainant’s trademark, the relevant comparison is made between only the second-level portion of the disputed domain name and the Complainant’s trademark. Consideration should not be given to the Top-Level Domain (“TLD”) “.vip”. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The disputed domain name contains the PIERRE BALMAIN mark in its entirety and is identical to the Complainant’s trademark. Because the disputed domain name encompasses the Complainant’s trademark in its entirety, it should be considered confusingly similar to the Complainant’s trademark. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503. Therefore, the disputed domain name is identical or confusingly similar to the Complainant’s PIERRE BALMAIN trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China (“SAIC”) granted registrations for the PIERRE BALMAIN trademark to the Complainant, which is prima facie evidence of the validity of the term PIERRE BALMAIN as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the PIERRE BALMAIN trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. The Respondent is not affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks, including in domain names. The Respondent is not commonly known by the disputed domain name. The WhoIs information identifies the Respondent as “Lan Qing Tian”, which does not resemble the disputed domain name. Where no evidence suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in it.

Furthermore, the Respondent has failed to make use of or to demonstrate any attempt to make legitimate use of the disputed domain name, which evinces a lack of rights or legitimate interests in it. The Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content.

The Respondent registered the disputed domain name on June 17, 2016, which is significantly after Complainant filed for registration of its PIERRE BALMAIN trademark with the SAIC, and also significantly after the Complainant’s first use in commerce of its trademark on 1945.

The disputed domain name was registered and is being used in bad faith. The Complainant and its PIERRE BALMAIN trademark are internationally known. The Complainant owns trademark registrations in numerous countries. The Complainant has marketed and sold its goods and services using the PIERRE BALMAIN trademark since 1945, which is well before the Respondent’s registration of the disputed domain name. By registering a domain name that is confusingly similar to the Complainant’s trademark, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. It is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the disputed domain name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. PIERRE BALMAIN is so closely linked and associated with the Complainant that the Respondent’s use of this mark strongly implies bad faith. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. Because the disputed domain name contains the Complainant’s PIERRE BALMAIN trademark in its entirety, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

What is more, at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant is a famous French haute couture fashion house that has been in existence since 1945. The Complainant is internationally well known with a presence in over 40 countries and reaches consumers through both its store locations and its website “www.balmain.com”. In China, where the Respondent is located, the Complainant’s products are sold in at least eight locations. A respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the disputed domain name in bad faith, where the complainant’s mark is well known and the circumstances support such a finding. See Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878.

The disputed domain name currently resolves to an inactive site and is not being used. Bad faith “use” does not require a positive action on the part of the Respondent. Instead, passively holding a domain name can constitute a factor in finding bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, supra; Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260. In this case, the disputed domain name is confusingly similar to Complainant’s trademark and the Respondent has made no use of the disputed domain name. These factors should be considered in assessing bad faith. See DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228. Additionally, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, which demonstrates that the Respondent is engaging in a pattern of cybersquatting. This is further evidence of bad faith registration and use of the disputed domain name.

The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. Regardless, the Respondent’s conduct suggests that the Respondent understands English. The disputed domain name consists of Latin characters and the Respondent has registered several domain names that contain English words. Additionally, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed.

Substantive Discussion

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Complainant has rights in the PIERRE BALMAIN trademark. The Complainant has established that it is the registered owner of trademark registrations of the PIERRE BALMAIN trademark. The Panel accepts that the Complainant’s PIERRE BALMAIN mark is well known.

The disputed domain name is composed of the terms “pierre balmain” — identical to the Complainant’s PIERRE BALMAIN mark. As a technical part of a domain name, a TLD is not relevant in determining confusing similarity and is without legal significance. Alienware Corporation v. Truther, WIPO Case No. DCO2012-0027.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or

(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use its PIERRE BALMAIN trademark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainant in any way. Additionally, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services, nor is there any evidence in the record demonstrating preparations to do so. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Indeed, the Respondent has failed to make any use of the disputed domain name.

The Complainant’s PIERRE BALMAIN mark is long-established and widely known around the world. In the absence of any evidence to the contrary, knowledge of the Complainant’s rights in the PIERRE BALMAIN mark may be imputed to the Respondent at the time of registration of the disputed domain name. Because the name “Pierre Balmain” bears no obvious relationship to the Respondent, “[t]he inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant.” See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The Respondent must have been aware of the Complainant and its PIERRE BALMAIN trademark at the time of registration of the disputed domain name. The Complainant’s PIERRE BALMAIN mark is well known throughout the world. The Complainant has used the PIERRE BALMAIN mark in commerce for more than a half-century prior to the registration of the disputed domain name. Additionally, the Complainant owns trademark registrations in several jurisdictions, including in China where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for PIERRE BALMAIN would have yielded many obvious references to the Complainant. Bad faith registration can be inferred from a respondent’s registration of a domain name incorporating a well-known mark of which the respondent must have been aware without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C., WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation Pty Ltd v. Ravindra Bala, WIPO Case No. D2008-1059.

The Panel finds that given the totality of the circumstances in this case, the Respondent is using the disputed domain name in bad faith. Given that the disputed domain name is identical to the Complainant’s extensively used and well-known mark, the Panel finds that the Respondent must have been aware that Internet users would be led to believe that the disputed domain name would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, supra. Moreover, the Respondent’s holding of the disputed domain name prevents the Complainant from reflecting its mark in the same domain name. See id. The Respondent holds several other domain names that are comprised of other well-known third-party marks, prima facie evidence that the Respondent regularly has engaged in a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012. Additionally, the Complainant contends, and the Respondent does not deny, that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding, which is further evidence of bad faith. See Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, supra. Under the totality of circumstances, the Respondent’s passive holding of the disputed domain name amounts to use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

Accordingly, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith.

7. Decision

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 <pierrebalmain.vip> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: October 27, 2016