WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A.S. v. Liu Wen Di
Case No. D2018-0081
1. The Parties
The Complainant is Pierre Balmain S.A.S. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Liu Wen Di of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <balmain.link> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2018. On January 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2018, 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 January 19, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding to the Parties. The Complainant requested that English be the language of the proceeding and filed an amended Complaint on the same day. 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 English and Chinese of the Complaint, and the proceedings commenced on January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on March 2, 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 the French fashion designer, Pierre Balmain. He had designed haute couture fashion and dressed many famous personalities including Katherine Hepburn, Sophia Loren, Audrey Hepburn, and Ava Gardner. Pierre Balmain was active in promoting himself internationally, until his death in 1982. The BALMAIN brand has an international presence. Apart from 35 points of sale in France, Balmain stores are located in many large cities in over 40 countries including in Shanghai, Hong Kong, Beijing, London, and Dubai. The Complainant’s products are sold in over 33 locations across 17 cities. In 2015, the Complainant’s net sales were in excess of EUR 58 million.
The Complainant also maintains a strong Internet and retail presence through its primary website at “www.balmain.com”, as well as through its various social media platforms. In February 2016, the Complainant reported over 3 million followers on Instagram, over 529,000 Facebook page likes, and close to 10,000 followers on Twitter.
The Complainant is the owner of trade mark registrations for BALMAIN across various jurisdictions, including in China and the United States of America (“the U.S.”). The Complainant’s Chinese trademark registrations date from November 28, 1997 (registration no. 1130322), and the U.S. registration dates from as early as August 2, 1960 (registration no. 0702312). The Complainant’s first use of the BALMAIN trade mark in commerce dates from March 8, 1946.
The Respondent registered the disputed domain name on October 31, 2017. The disputed domain name does not resolve to any active webpage.
The Complainant sent the Respondent a cease-and-desist letter by email on November 10, 2017. The Respondent replied, stating that he had intended to use the disputed domain name for a blog site for his pet named Balmain, but would consider selling the disputed domain name for not less than USD 500. The Complainant’s efforts to settle the matter amicably were stated to be unsuccessful.
5. Parties’ Contentions
The disputed domain name is identical to the BALMAIN trade mark in which the Complainant has rights.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant; the Complainant never gave the Respondent permission to use the Complainant’s trade marks in any way or in domain name registrations; the Respondent is not commonly known by the disputed domain name; and the disputed domain name has not been used by the Respondent to offer goods or service. Furthermore, the disputed domain name was registered long after the Complainant’s BALMAIN trade mark was applied for and registered in China.
The disputed domain name was registered and is being used in bad faith. By registering the disputed domain name which incorporates the Complainant’s BALMAIN trade mark, the Respondent shows that he was specifically targeting the Complainant. It is not conceivable that the Respondent would have been unaware of the Complainant’s BALMAIN trade mark at the time the disputed domain name was registered. The BALMAIN trade mark is so closely associated with the Complainant that the Respondent’s use of the mark in the disputed domain name strongly suggests bad faith. The inactive use of the disputed domain name does not mean that there cannot be a finding of bad faith registration pursuant to paragraph 4(a)(iii) of the Policy. There is no plausible good-faith reason or logic for why the Respondent registered the disputed domain name other than that the Respondent intended to cause confusion and deceive Internet users. The Respondent moreover holds registrations for many other domain names that misappropriate the well-known trademarks of other brand owners, particularly in the realm of high-end fashion, e.g., <balenciaga.link>, <boucheron.link>, <christofle.link>, <saintlaurentparis.link>, <calvin-klein.link> and <tommyhilfiger.link>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
The Registration Agreement is in Chinese. The Complainant requested that the proceeding be conducted in English notwithstanding the language of the Registration Agreement and paragraph 11(a) of the Rules which states that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant provided these bases for its request:
1) the Complainant is unable to communicate in Chinese;
2) having to translate the Complaint would unfairly disadvantage and burden the Complainant and delay the proceeding;
3) the term “Balmain” does not carry any specific meaning in Chinese; and
4) the Complainant’s cease-and-desist letter to the Respondent was in English and the Respondent corresponded in English, which proves that Respondent both understands and is able to communicate in English.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 10(c) of the Rules stipulates that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Taking this provision into account as well as the fact that the Respondent appears to be familiar with and conversant in English, the Panel finds in the circumstances of this case that the Respondent would not be prejudiced if English were to apply as the language of the proceeding. The Respondent did not raise any objections and neither did he choose to respond in Chinese in this entire proceeding. The Panel sees no justification for delaying this proceeding by requiring a submission of a Chinese translation of the Complainant’s written submissions.
The Panel therefore concludes that it would be appropriate for English to be adopted as the language of the proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the BALMAIN trade mark in which the Complainant has rights. The only differences lie in the generic Top-Level Domain “.link”, which is a technical requirement of domain names and has no relevance to the issue of identity or confusing similarity. The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant did not authorize the Respondent to use the BALMAIN trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name “balmain”, or that there has been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. There is little doubt, in the Panel’s view, that BALMAIN is a well-known trade mark. It is therefore inconceivable for the Respondent to be able to assert that he has rights or legitimate interests in the disputed domain name. Moreover, the Panel notes that the Respondent, in his reply to the cease-and-desist letter, did not rebut the Complainant’s claim with an assertion that he has a right or legitimate interest, other than making a bare assertion that he has a pet named Balmain.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
In view of the fame of the Complainant’s mark, even in China where the Respondent is located, it is highly unlikely that the Respondent was not aware of the Complainant and its BALMAIN trade mark at the time he registered the disputed domain name. The fame of the Complainant’s trade mark and the Respondent’s silence in this proceeding are indicative of the Respondent’s bad faith.
In view of the Respondent’s numerous other domain name registrations incorporating the names of other well-known brands, which demonstrates a “pattern of conduct” on the Respondent’s part, the Panel concludes that 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”, per paragraph 4(b)(ii) of the Policy, and to “ have acquired the 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” per paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the third element of paragraph 4(a) 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 name <balmain.link> be transferred to the Complainant.
Date: March 6, 2018