WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Givenchy SA v. Krry Bord
Case No. D2018-2914
1. The Parties
The Complainant is Givenchy SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Krry Bord of New York, New York, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <givenchyoutlet.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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.
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 January 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2019.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on February 5, 2019. 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 house of Givenchy was founded by the designer Hubert de Givenchy in 1952. In 1988, Givenchy became part of the multinational luxury goods conglomerate LVMH Moët Hennessy Louis Vuitton, known as LVMH.
The Complainant is the owner of over 350 trademark registrations worldwide for GIVENCHY (word or figurative marks) in connection with haute couture clothing, products of the high-fashion and leather industry, accessories as well as fragrances and cosmetics (i.e., United States trademark No. 1297100, registered on September 18, 1984), the full list of the which is provided in an Annex to the Complaint.
The disputed domain name <givenchyoutlet.com> was registered by the Respondent on April 25, 2017, and resolves to a website which mimics the Complainant’s official website.
5. Parties’ Contentions
The Complainant says that the GIVENCHY trademark has been used by the Complainant for more than 65 years in connection with haute couture clothing, products of the high-fashion and leather industry, accessories as well as fragrances and cosmetics. The products bearing the Complainant’s trademark are sold in 69 countries with sale points in high-end department stores as well as 50 direct operated shops around the world.
The Complainant’s products have attracted celebrities:
“The most famous ambassador of the brand was Audrey Hepburn, that decided to wear Givenchy clothes on and off the screen. Beginning as a client, she became the muse of the house for forty years, bringing the Complainant’s creation on the screen in some most classical movies such as Sabrina (1954), Love in the Afternoon (1957), Funny Face (1957), Charade (1963), Paris When It Sizzles (1963), How to Steal a Million (1965) and Bloodline (1979). In 1961, Audrey Hepburn installed the reputation of the house by wearing the famous ‘little black dress’ in Breakfast at Tiffany's.”
The Complainant’s other famous patrons include:
“Empress Farah Pahlavi, Gloria Guinness and Marella Agnelli, as well as the Guinness, Grimaldi, Kennedy and Rothschild families, who famously wore Givenchy clothes to the funeral of John F. Kennedy. Givenchy products attracted also many celebrities, including Greta Garbo, Elizabeth Taylor, Marlène Dietrich, Jacqueline Kennedy-Onassis, Beyoncé Knowles, Princess Grace of Monaco .... Today, Givenchy dresses the most famous Hollywood stars such as Cate Blanchett, Emma Stone, Lady Gaga, Julianne Moore, Julia Roberts, Rooney Mara, and others. On May 19th, 2018, for her wedding to Prince Harry, Ms. Meghan Markle, now the Duchess of Sussex, wore an elegant Givenchy Haute Couture wedding gown with a hand- embroidered veil, both custom designed by artistic director Clare Waight Keller.”
The indicative turnover of the Complainant was EUR 335 million in 2016, and EUR 322 million in 2017. The 2018 turnover is estimated to exceed EUR 344 million.
The Complainant adds that the trademark GIVENCHY is supported by intensive advertising campaigns worldwide, with collections appearing in important international magazines with broad circulation such as Vanity Fair, Elle, Glamour, Harper’s Bazaar, Vogue, Madame Figaro, Marie-Claire, Grazia.
GIVENCHY is also widely promoted via Internet, in particular with a strong presence online through the most popular social medias, such as Facebook, Twitter, Instagram, YouTube and LinkedIn.
The Complainant’s advertising expenses in the promotion of the GIVENCHY trademark worldwide amounted to over EUR 20 million in 2016, EUR 23 million in 2017 and as at December 2018 some EUR 33 million had been invested.
The Complainant’s principal website dedicated to the GIVENCHY brand is “www.givenchy.com”, to which most of its domain names are redirected and which generates a significant number of visits by Internet users: namely 7.5 million in 2016, 10.6 million in 2017 and 17 million as at December 2018.
In order to protect its trademarks on the Internet, the Complainant has registered numerous domain names worldwide consisting of or comprising the word GIVENCHY, including, amongst others, <givenchy.com> and <givenchy.us>.
The Complainant says that the Respondent registered the disputed domain name on April 25, 2017. At the time the Complainant became aware of the registration, and until recently, the disputed domain name resolved to a website displaying, without any disclaimer of non-affiliation, GIVENCHY figurative trademarks and images taken from the Complainant’s official Ad campaigns.
According to the Complainant, on that website the Respondent was offering for sale unauthorized GIVENCHY products at very discounted prices without disclosing any information about the company managing the website, circumstances which suggest that the goods were very likely counterfeited.
The Complainant says that:
1. The disputed domain name isidentical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
3. The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
A. Identical or Confusingly Similar
The Complainant’s case is that the disputed domain name incorporates the whole of the Complainant’s trademark, with the mere addition of the term “outlet”, a factor which does not affect the confusing similarity. It is a well-established principle, inter alia, recognized in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a domain name that wholly incorporates a trademark, in particular one as well-known as GIVENCHY, is found to be confusingly similar for purposes of the Policy, despite the fact that it may contain descriptive or generic terms. The non-distinctive element “outlet” included in the disputed domain name does not certainly affect the confusing similarity between the signs concerned.
The Complainant refers to the decision in Basic Trademark S.A. v. Ed Swain, WIPO Case No. D2009-1029 where the panel stated that “The fact that the word ‘outlet’ is added to Complainant's trademark does not eliminate the similarity between Complainant's trademark and the disputed domain name, as ‘outlet’ is a descriptive component of the disputed domain name”.
The Respondent had the opportunity to challenge the Complainant’s case but has not done so. The Panel is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant says that the Respondent is not a license or an authorized agent of the Complainant and is not authorized to use the Complainant’s trademark GIVENCHY.
The Complainant argues that, whilst the burden of proof lies on a Complainant, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of a domain name “is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that Complainant shows a prima facie evidence in order to shift the burden of production on Respondent”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent has failed to assert any such rights.
The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant refers to the use of the trademark GIVENCHY since 1951; the amount of advertising and sales of the Complainant’s GIVENCHY products; and the intensive use of the trademark worldwide - including in the United States, where the Respondent is evidently based. The Respondent must have been well aware of the Complainant and the GIVENCHY trademark at the date of registration of the disputed domain name.
The Complainant says that the disputed domain name was used in connection with a website publishing the Complainant’s trademarks and official images and offering for sale “very discounted and thus most likely counterfeited products bearing the GIVENCHY trademark”. Such a conduct demonstrates that the only purpose of the Respondent was to use the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to such website, creating a likelihood of confusion and to take unfair advantage from the well-known character of the trademark for Respondent’s personal profit.
This Panel therefore finds that the Respondent is offering for sale counterfeit goods designed to deceive users into believing that they are purchasing goods designed and manufactured by the Complainant.
Again, it was open to the Respondent to challenge the Complainant’s case, but the Respondent has not done so.
In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of paragraph 4(a)(iii) of 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 <givenchyoutlet.com> be transferred to the Complainant.
Anthony R. Connerty
Date: February 20, 2019