WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pierre Balmain S.A. v. Zhang Wei

Case No. D2016-1815

1. The Parties

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

The Respondent is Zhang Wei of Yangzhou, Jiangsu, China.

2. The Domain Names and Registrars

There are three disputed domain names: <balmein.com>, <blamain.com> and <wwwbalmain.com>. The first of these is registered with 1API GmbH while the other two are registered with 22net, Inc. (each referred to below as the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 7, 2016. On the same day, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 8, 2016, each 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 12, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding and submitted an amended Complaint that included the language request. The Respondent did not comment on the language of the proceeding. On September 13, 2016, the Complainant submitted a further amended Complaint that added the Registrar's information with respect to the disputed domain name <balmein.com>.

The Center verified that the further 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 of the Complaint in both English and Chinese, and the proceedings commenced on September 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 20, 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 is a French fashion house that sells clothing, shoes, bags, accessories and fragrances around the world, including in China, in physical stores and online at its official website "www.balmain.com". It is named after its founder, Pierre Balmain. The Complainant owns multiple registrations of trademarks for BALMAIN in multiple jurisdictions, including Chinese trademark registration no. 1130633, registered on November 28, 1997, and European Union trademark registration no. 001262039, registered on October 9, 2000, both specifying clothing in class 25, among other goods. These registrations remain in effect.

The Respondent is the registrant of the disputed domain names. The disputed domain names were created on different dates during the period November 2, 2015 to November 12, 2015. Each disputed domain name resolves to a different parking page displaying links to websites with some relevance to "Balmain" clothing, accessories, footwear or fragrances. Two of the links at the website to which the disputed domain name <wwwbalmain.com> resolves relate to a different fashion designer or to "designer shoes" in general.

5. Parties' Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant's BALMAIN trademark. They are all examples of typosquatting: the disputed domain name <wwwbalmain.com> removes the period between "www" and "balmain"; the disputed domain name <balmein.com> replaces the "a" in "balmain" with an "e" and the disputed domain name <blamain.com> transposes the "a" and the "l" in "balmain".

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain names. The Respondent is using the disputed domain names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant's business. The Respondent's websites feature links that directly reference the Complainant and its business. Presumably, the Respondent receives pay-per-click fees from the linked websites. This does not constitute a bona fide offering of goods or services that would create rights or legitimate interests in the disputed domain names.

The disputed domain names were registered and are being used in bad faith. At the time of registration of the disputed domain names, the Respondent knew, or should have known, of the Complainant's trademarks because the Complainant is well known, including in China. Typosquatting itself has been considered evidence of bad faith registration and use. The Respondent is using the disputed domain names to confuse unsuspecting Internet users looking for the Complainant's services, and to mislead Internet users as to the source of the disputed domain names and websites; which constitutes a disruption of the Complainant's business; and the Respondent has engaged in a pattern of cybersquatting, which constitutes bad faith within the meaning of paragraph 4(b)(iv), (iii) and (ii) of the Policy, respectively.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that "unless 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 Registrars confirmed that the Registration Agreement for the disputed domain name <balmein.com> is in English and that the Registration Agreements for the disputed domain names <blamain.com> and <wwwbalmain.com> are in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that it is unable to communicate in Chinese; that translation of the Complainant would unfairly disadvantage and burden the Complainant and delay the proceeding; that the disputed domain names are in Latin script and that "Balmain" is not a Chinese word.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of the language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. The Registration Agreement for one of the disputed domain names is in English, from which it is reasonable to deduce that the Respondent understands that language. Moreover, having received notice of the proceeding in both Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2. Analysis and Findings

The Respondent's failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the BALMAIN trademark.

The first disputed domain name <balmein.com> consists of the element "balmein" followed by a generic Top-Level Domain ("gTLD") suffix. "Balmein" is an obvious misspelling of the Complainant's BALMAIN trademark, a practice known as "typosquatting". This element and the trademark may even be aurally identical. The misspelt BALMAIN is the dominant and only distinctive element of this disputed domain name.

The second disputed domain name <blamain.com> consists of the element "blamain" followed by a gTLD suffix. "Blamain" is another obvious misspelling of the Complainant's BALMAIN trademark, and another example of typosquatting. The misspelt BALMAIN is the dominant and only distinctive element of this disputed domain name.

The third disputed domain name <wwwbalmain.com> incorporates the Complainant's BALMAIN trademark in its entirety, preceded by the letters "www" and followed by a gTLD suffix. The omission of a full stop between the "www" prefix and a domain name is a common typographical error. Accordingly, the addition of those letters without a full stop does not dispel confusing similarity of this disputed domain name with the trademark that follows. See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659.

Each disputed domain name contains the gTLD suffix ".com". However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of comparison under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

"(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [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."

The Panel has already found that the disputed domain names are confusingly similar to the Complainant's trademark. The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names.

As regards the first circumstance set out above, each disputed domain name resolves to a parking page displaying links to other websites. Most of the links refer to the Complainant's trademark in combination with a category of product marketed by the Complainant while some refer to specific fragrances marketed by the Complainant. Two of the links on one of the websites refer only to a category of product marketed by the Complainant or to another fashion designer. This all indicates that the links are based on the trademark value of the Complainant's mark. Accordingly, the Panel does not consider these to be bona fide offerings of goods or services that would create rights or give rise to legitimate interests for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.

As regards the second circumstance set out above, the Respondent's name is "Zhang Wei", which has no apparent connection with any of the disputed domain names.

As regards the third circumstance set out above, each disputed domain name resolves to a website displaying links that presumably generate pay-per-click revenue, which is not a legitimate noncommercial or other fair use for the purposes of the Policy.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

"(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 [the Respondent's] website or location or of a product or service on [the Respondent's] website or location."

The disputed domain names were registered in 2015, several years after the Complainant registered its trademarks, including in China where the Respondent is located. The disputed domain names are obvious misspellings of the Complainant's BALMAIN trademark or a common typographical error in its domain name (plus a gTLD suffix) with no other apparent meaning. They have been parked at websites that display links based on the trademark value of the Complainant's marks. These facts indicate to the Panel that the Respondent was well aware of the Complainant's trademark at the time of registration of the disputed domain names and that the choice to register domain names confusingly similar to the Complainant's trademark was in bad faith.

The disputed domain names are used to attract Internet users who misspell the Complainant's trademark or domain name to parking pages displaying links to websites. The links are generated based on the trademark value of the Complainant's mark and at least some of the links at one of the websites redirect to products of the Complainant's competitors. The disputed domain names operate by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the parking pages. This use is intentional and either for the Respondent's own commercial gain, if he is paid to direct traffic to the other websites, or for the commercial gain of the operators of the parking pages, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 names <balmein.com>, <blamain.com> and <wwwbalmain.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 24, 2016