WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A.S. v. Xian Wei Fa
Case No. D2018-1167
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 Xian Wei Fa of Hezhou, Guangxi, China.
2. The Domain Name and Registrar
The disputed domain name <balmainoutlet.online> 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 May 25, 2018. On May 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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. In response to a request for clarification from the Center, the Complainant filed a first Amended Complaint on May 31, 2018.
On May 30, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed a second Amended Complaint on May 31, 2018, in which it requested that English be the language of the proceeding.
The Center verified that the Complaint together with the Amended Complaints 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 June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 4, 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 is a French haute couture fashion house founded in 1945. The Complainant has store locations in over 40 countries worldwide, and offers a large array of its products online through its main domain <balmain.com> and its other domain names. In the Respondent’s home jurisdiction, China, the Complainant’s products are sold at brick-and-mortar stores in three major cities: Beijing, Hangzhou and Shanghai.
The Complainant owns a large number of trademark registrations (word and device marks) for BALMAIN in various jurisdictions, including in China, see for instance Chinese trademark number 1130322, registered on November 28, 1997, and United Sates of America trademark number 0702312, registered on August 2, 1960. The Complainant also owns an official domain name, <balmain.com>, registered on March 17, 1997, through which it provides online sales services and marketing materials. All relevant registered trademarks and domain names adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on November 10, 2016.
The Complainant also provides evidence that it has sought to settle this matter amicably through a cease-and-desist letter, to which it received no answer.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its prior trademarks for BALMAIN, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the fashion industry, and provides evidence of marketing materials, sales figures, website analytics regarding its main website etc. The Complainant also provides a number of prior domain name decisions involving the Respondent, as well as reverse WhoIs results showing a number of the Respondent’s other domain name registrations, allegedly exposing a pattern of cybersquatting.
The Complainant also provides evidence that the disputed domain name is linked to an active website (through a link to <baoutlet.store>), selling competing products using the Complainant’s trademarks, without any reference to a license, distribution agreement or other permission from the Complainant. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.
The language of the Registration Agreement in this case is Chinese. Nevertheless, the Complainant requests that the language of proceedings be English, and motivates such request in its second Amended Complaint.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the complete lack of response of the Respondent the Panel notes that the Respondent’s rights have not been violated since all communications from the Center to the Parties are in both English and Chinese and the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the disputed domain name is linked to an active webpage that is entirely and exclusively in English and that contains hyperlinks to other webpages that are also entirely and exclusively in English, so that the Panel concludes that the Respondent has no problem with reading and writing in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
6.2. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the trademark BALMAIN based on its use and registration of the same as a trademark, even in the Respondent’s home jurisdiction China, commencing many years prior to the registration of the disputed domain name.
Moreover, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademark BALMAIN, incorporating it in its entirety, as a clearly dominant feature. The generic addition “outlet” does not differentiate it from the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Finally, the generic Top-Level Domain “.online” also does not differentiate it from the Complainant’s trademark. Indeed, according to WIPO Overview 3.0, section 1.11, “the top level domain in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element required by the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel notes that the Respondent is not an authorized licensee, reseller, service provider or distributor, and is not making a legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy applies. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second requirement under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademark, the registration of the disputed domain name, which incorporates such trademark in its entirety as its dominant element, is clearly intended to mislead and attract consumers to the disputed domain name. Even a cursory Internet search would have made it clear to the Respondent that the Complainant owns trademarks in BALMAIN and uses it extensively worldwide. Moreover, the addition of the word “outlet” in the disputed domain name (accurately defined by the Complainant as “a store selling the goods of a particular company or goods of a particular type, often one selling goods at prices that are lower than usual”) reinforces this finding, as it misleads Internet users and induces them to believe that there is an association between the domain name and the Complainant, by suggesting that the disputed domain name leads to the online outlet store of the Complainant. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the website linked to the disputed domain name is currently used as an advertisement and sales platform for products identical to, and competing with the Complainant’s products (as well as a range of products by other famous fashion houses). This induces consumers to believe that the disputed domain name leads to one of the Complainant’s official or authorized websites. Given the distinctiveness and reputation of the Complainant’s trademark, the use of the disputed domain name is clearly intended to mislead and divert consumers to the disputed domain name, where unauthorized products are advertised and offered for sale. Moreover, the Complainant also submits evidence (both prior domain name decisions involving the Respondent, as well as reverse WhoIs results) from which a clear pattern of domain name squatting by the Respondent appears. On the basis of all these elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under the Policy.
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 <balmainoutlet.online> be transferred to the Complainant.
Deanna Wong Wai Man
Date: July 18, 2018