WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A. v. bin fan, shanghaishipudongxinqubeicaizhenlanxuehuahuijingyingbu
Case No. D2016-1816
1. The Parties
The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is bin fan, shanghaishipudongxinqubeicaizhenlanxuehuahuijingyingbu of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <balmain.mom> (the “Domain Name”) 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 September 7, 2016. On September 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 9, 2016, 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 September 12, 2016, the Center sent an email communication to the Parties regarding the language of the proceeding in both Chinese and English. On the same day, the Complainant requested that English be the language of the proceeding by filing an amended Complaint. 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 both Chinese and English of the Complaint, and the proceedings commenced on September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on October 13, 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 was founded in 1945 by French fashion designer Pierre Balmain. The Complainant states that the company was a favourite of both European royalty and in Hollywood after the Second World War and has included Audrey Hepburn, Ava Gardner, Brigitte Bardot, Katherine Hepburn and Sophia Loren as clients. Mr. Balmain expanded operations to the United States of America in 1951, selling ready-to-wear clothes that earned him a Neiman Marcus Fashion Award in 1955. With its roots in couture, the Complainant continues to be a leading brand today with international presence. The Complainant 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. In China, the Complainant’s products are sold in over ten locations across five cities. In 2015 the Complainant had net sales in excess of EUR 58 million.
The Complainant’s products are sold under the BALMAIN mark. The trade mark is registered throughout the world including in China (e.g., Chinese trade mark Registration No.1130322, registered on November 28, 2007). The earliest trade mark submitted in evidence dates back to 1999. Its first use in commerce dates back to 1945. The Complainant also maintains a strong Internet and retail presence through its primary website “www.balmain.com” as well as its various social media platforms including Instagram, Facebook and Twitter. According to Compete.com, the Complainant’s website located at its primary domain name <balmain.com> received an average of more than 36,000 unique visitors per month during a 13-month period ranging from January 2015 to January 2016. According to Alexa.com, “www.balmain.com” has a global ranking of 123,960. In February 2016 the Complainant reported over 3 million total followers on Instagram, over 529,000 page likes on Facebook, and close to 10,000 new followers on Twitter.
The Respondent registered the Domain Name on May 18, 2016. The Domain Name resolves to an inactive website. The Complainant’s representatives sent a cease-and-desist letter to the Respondent on May 27, 2016, and followed this up with reminders on June 20 and 28, 2016, and a third reminder on July 5, 2016. The Respondent did not respond.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the trade mark BALMAIN, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in the amended Complaint that the language of the proceeding should be English.
The Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceeding and adjudication of this matter. The Domain Name is comprised of Latin characters. The Respondent was given many opportunities to respond to the cease-and-desist letter and request that communications be in Chinese. However, it did not respond. Allowing the Respondent to dictate the course of this matter and further burden the Complainant at this stage would contravene the spirit of the UDRP and disadvantage the Complainant.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not having been put on notice of the proceeding. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.3 Substantive Matters
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the BALMAIN trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself whether the trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant’s distinctive trademark BALMAIN in its entirety which is identical to the trade mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Panel finds that the Domain Name is identical to the BALMAIN trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not sponsored by or affiliated to the Complainant in any way nor has it been given permission by the Complainant to use its trade marks in any manner including in domain names. The Respondent is not commonly known by the Domain Name. The Respondent is using the Domain Name to redirect Internet users to a website that resolves to a blank page and lacks content. It has failed to demonstrate any bona fide use of the Domain Name suggesting a lack of rights and legitimate interests in the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The BALMAIN trade mark was registered well before the Domain Name was registered. The Complainant is a well-known brand with international presence and has registered trade marks for the BALMAIN mark in China where the Respondent appears to be based. It has a substantial presence on the Internet worldwide. It would be highly doubtful that the Respondent had no knowledge or actual notice of the BALMAIN trade mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
The Domain Name resolves to an inactive website. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
The following facts indicate that the Domain Name is being used in bad faith – the Complainant has a well-known trade mark, the Respondent failed to file a response, the Respondent has ignored the Complainant’s attempts to resolve the dispute when it failed to respond to the cease-and-desist letters. In addition the Respondent has a pattern of conduct in relation to registering domain names which belong to other well-known brands. These include:
- <bally.mom> (Bally Schuhfabriken AG – BALLY)
- <burberry.mom> (Burberry Limited – BURBERRY)
- <dolcegabbana.mom> (Dolce & Gabbana – DOLCE & GABBANA)
- <moncler.mom> (MONCLER S.P.A. – MONCLER)
- <laperla.vip> (La Perla – LA PERLA)
Considering the circumstances, the Panel considers that the Domain Name is also used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <balmain.mom> be transferred to the Complainant.
Date: October 31, 2016