WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A. v. George Friar
Case No. D2017-2404
1. The Parties
The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is George Friar of Knock of Auchnahannet, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <balmain.store> is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2017. On December 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2017, 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 December 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2018. An email communication from the Respondent was received by the Center on December 14, 2017, indicating it was willing to transfer the disputed domain name to the Complainant. In light thereof, the Center sent an email communication to the Parties on December 15, 2017, offering the Parties time to explore settlement options. The Complainant requested suspension of the proceeding on December 15, 2018, and the proceeding was subsequently suspended on December 18, 2017. On December 29, 2017, the Center received an email communication from the Complainant requesting the reinstitution of the proceeding, and subsequently the proceeding was reinstituted on January 3, 2018, with the new due date for Response set to January 19, 2018. The Center notified the Parties of the commencement of panel appointment process on January 23, 2018.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on February 7, 2018. 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 was founded in 1945 by famous French fashion designer Pierre Balmain and has a global presence. Within France, Balmain has 35 points of sale, including department stores. Internationally, Balmain has store locations in over 40 countries worldwide with boutique locations in some of the largest cities in the world including: Paris, London, Hong Kong, Shanghai, Beijing, and Dubai.
The Complainant is the owner of several trademark registrations for BALMAIN, which have been registered in numerous jurisdictions around the world, including European Union Trademark registration number 1262039, BALMAIN, registered on October 09, 2000 and International Trademark registration number 758712, BALMAIN, registered on April 10, 2001.
The disputed domain name was registered on October 17, 2017, which is significantly after the Complainant's registration of its BALMAIN trademarks from at least 2000 and its <balmain.com> domain name on March 17, 1997. The disputed domain name resolves to a website offering e-books.
5. Parties' Contentions
The Complainant argues that the disputed domain name is identical to its BALMAIN trademark. The addition of the generic Top-Level Domain (gTLD) ".store" adds to a certain degree of confusion.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the element "balmain", which is identical to the Complainant's registered trademark BALMAIN.
The Panel finds that the Complainant has rights in the word BALMAIN by virtue of its trademark registrations and through use. The evidence clearly establishes the BALMAIN trademark as being well-known.
In the present case the disputed domain name and the Complainant's BALMAIN trademark are identical if the ".storeˮ gTLD suffix is ignored. So far as the ".storeˮ suffix is concerned the Panel adopts and agrees with the reasoning of the panel in Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564, where the panel stated that: "Commonly, it is permissible for a panel to ignore the top level domain identifier when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. However, in this case the top level domain identifier '.pro', while descriptive (and in that sense, generic), is precisely descriptive of the market for which the Complainant claims that its electrical hair stylers are suitable, namely the professional market, and its presence in the Domain Name therefore renders the risk of confusion all the more likely.ˮ
Accordingly the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark and the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permission, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant's BALMAIN trademark.
In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that: "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.ˮ
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. On the record, the Panel therefore finds that the Complaint fulfills the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name well after the Complainant's trademark became famous and well-known in many countries around the world.
The registration of the Complainant's trademark as domain name in the gTLD ".storeˮ which is descriptive of the Complainant's business, suggests that the Respondent was aware of the Complainants' trademark when it registered the disputed domain name. Additionally, the Respondent replied to the Complainant's cease and desist letter saying that he would sell the domain name on the marketplace if the Complainant was only willing to give him his registration fee.
The circumstances of the case suggest that the Respondent did not register and use the disputed domain name for a legitimate purpose without intent to mislead Internet users and trade upon the Complainant's trademark, but rather to sell the dispute domain name to the Complainants for a profit.
In addition, given the notoriety of the Complainant's trademark, particularly in the area of business associated with the present gTLD, the Panel cannot conceive of any plausible use by the Respondent that would not be in bad faith under these circumstances.
Under paragraph 4(b)(iv) of the Policy, a panel may find the registration and use of a disputed domain name where there is evidence that, by using it, a respondent has intentionally generated traffic and presumably income by creating a likelihood of confusion with the complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the linked website.
The disputed domain name resolves to a website that offers e-books, a service to which one must subscribe in order to have access to the books. The Respondent is using the disputed domain name to attract Internet users to a website that upon initial sight will likely be seen as related to the Complainant, but which, in fact, is being used by the Respondent to offer downloads of third party e-books (See magicJack LP v. Tom Chambers, WIPO Case No. D2017-1766).
The Panel therefore finds that the Respondent registered and is using the disputed domain name in bad faith.
The third element of the Policy has, therefore, been 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 <balmain.store> be transferred to the Complainant.
Date: February 20, 2018