The Complainant is Balenciaga of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is PrivacyProtect.org / n/a, Acosta Jose Julian / Jeff Lander of Moergestel, Netherlands, Ceiba, Puerto Rico, and Panama, Panama, respectively.
The disputed domain name <balenciga.com> was registered with Lead Networks Domains Pvt. Ltd. at the time the Complaint was filed, and is currently registered with Fabulous.com Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2009. On December 22, 2009 the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On December 30, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 6, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 11, 2010. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 2, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on February 22, 2010. 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.
Subsequent to the Panel's appointment, the Center became aware of a change in the registration details, reflecting an apparent transfer of the domain name to a different registrant, “Jeff Lander”, and to a different registrar, Fabulous.com Pty Ltd.
On March 15, 2010, the Center sent by email to Lead Networks Domains Pvt. Ltd. (which had previously confirmed that it was the registrar of record and that the domain name had been locked) and Fabulous.com Pty Ltd. a request for clarification regarding the circumstances of the apparent transfer and requesting a re-confirmation that the domain name would be locked during the proceedings. The Center did not receive a response from Lead Networks Domains Pvt. Ltd., but did receive confirmation of the newly-identified registrant information and lock status from Fabulous.com Pty Ltd. on March 16, 2010.
On April 6, 2010, the Panel issued Procedural Order No. 1, directed to both registrars involved, Lead Networks Domains Pvt. Ltd. and Fabulous.com Pty Ltd., as well as to the Parties and the newly-identified registrant of the disputed domain name. The Parties were invited to provide supplemental submissions regarding the new factual information regarding the registration, and the newly-identified entity listed as the registrant was sent a copy of the pleadings and the Procedural Order by email. The order requested all responses or submissions by April 16, 2010.
The Center has not received any reply to Procedural Order No. 1 from either registrar nor from any of the Parties.
The Complainant is a French company that has been registered since 1955 but has been in existence since 1918 through the work of the fashion house's founder, Cristobal Balenciaga. The Complainant's business consists of the design and sale of women's and men's ready-to-wear clothes, shoes and accessories which are sold around the world.
The Complainant holds a number of trademark registrations dating as far back as 1951 for the BALENCIAGA trademark for countries all around the world, including France, the United States, Japan, the United Arab Emirates and a number of other locations.
Furthermore, the Complainant also holds a significant number of domain names incorporating the BALENCIAGA trademark for a number of locations around the world, many of which predate the registration date of the disputed domain name.
The Respondent in this case is PrivacyProtect.org / n/a, Acosta Jose Julian / Jeff Lander, a party holding the disputed domain name of <balenciga.com> which was initially registered with Lead Networks Domains Pvt. Ltd. According to a WhoIs database search, the disputed domain name was initially registered on March 8, 2005.
In presenting its initial argument under paragraph 4(a) of the Policy claiming that the disputed domain name of <balenciga.com> is almost identical to a trademark in which the Complainant has rights, the Complainant has presented significant evidence of trademarks and domain names which have been registered all around the world incorporating the BALENCIAGA trademark. The Complainant has indicated that many of the registered trademarks and domain names incorporating the BALENCIAGA trademark have been registered before the disputed domain name of <balenciga.com> was registered by the Respondent on March 8, 2005. The Complainant notes that the list of trademark registrations was non-exhaustive and if the Panel required more evidence, the Complainant would be happy to provide further evidence.
With respect to the disputed domain name, the Complainant notes that <balenciga.com> is composed of letters that are both identical and in the same order as the Complainant's trademark of BALENCIAGA with the exception of the second “a”. The Complainant further contends that the omission of one letter from a well-known trademark in a domain name is a characteristic of “typosquatting”, a form of Internet cybersquatting that is based on the probability that a certain number of Internet users will mistype the name of a popular website. Thereafter the Complainant argues that the offending party can capitalize on the high volume of traffic by selling advertising space.
With respect to the “.com” suffix, the Complainant argues that the ending is not relevant for the purposes of comparison and that the suffix should be disregarded by the Panel. The Complainant notes that, as the disputed domain name <balenciga.com> differs by the omission of only one letter from the BALENCIAGA trademark, the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Since BALENCIAGA is a well-known trademark and is used around the world, the Complainant argues that even the “typosquatted” domain name would not be considered sufficiently distinct from the Complainant's trademark.
In arguing the second element under paragraph 4(a) of the Policy, the Complainant notes that it is highly unlikely that the Respondent has any trademark rights to BALENCIAGA. Additionally, as the owner of the BALENCIAGA trademark, the Complainant argues that they have never granted a license or right to the Respondent to use the BALENCIAGA trademark or register a domain name incorporating the BALENCIAGA trademark.
In further evidencing that the Respondent has no rights or legitimate interest to the disputed domain name, the Complainant argues that the Respondent has made no use or any demonstrable preparations to use the disputed domain name. Additionally there is no evidence that any goods or services are being offered in connection with <balenciga.com>. The Complainant avers that the disputed domain name simply resolves to pay-per-click commercial links, some of which resolve to websites of the Complainant's competitors. Therefore the Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name and is not making a legitimate noncommercial or fair use of the domain name without the intent for commercial gain.
In establishing the third element that the disputed domain name was registered and is being used in bad faith, the Complainant goes into a detailed background of the beginning of its business dating back to 1918 and the work of its founder, Cristobal Balenciaga. The Complainant then evidences that the BALENCIAGA trademark has gained significant goodwill and notoriety across the world. Two examples provided by the Complainant are the brand's appreciation by celebrities around the world as well as the inclusion of the term “Balenciaga” into a French dictionary.
The Complainant then argues that the term “Balenciaga” is an original term used only for fashion products and is neither a common noun nor a common word. The Complainant contends that an Internet search confirmed this as the trademark was used primarily with the Complainant's products and in its business. Due to the notoriety and widespread use of the BALENCIAGA trademark in connection with the Complainant's business and its products, the Complainant argues that the Respondent's almost virtual incorporation of the BALENCIAGA trademark into the disputed domain name was made with full knowledge of the Complainant and the BALENCIAGA trademark.
The distinctiveness of the Complainant's trademark in this respect is then compared to the disputed domain name of <balenciga.com>. The Complainant argues that the registration of <balenciga.com> could not have resulted from chance or coincidence and was only motivated by the Respondent's desire to create an illegitimate association with the Complainant and to divert Internet traffic.
BALENCIAGA was marketed worldwide prior to the registration of <balenciga.com> and is regularly referenced by a number of media outlets around the world. The Complainant also indicates that the documents they have provided in the Complaint and as Annexes should evidence the extent to which the Complainant has sought to protect its business.
The Complainant goes into great detail regarding the widespread nature of the trademark registrations, the marketing of the Complainant's business and its long history. The Complainant argues that due to the notoriety and distinctiveness of the Complainant's trademark, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark rights and as a result such registration was in bad faith.
As far as evidencing the bad faith use by the Respondent, the Complainant notes that the disputed domain name resolves to a landing page consisting entirely of commercial links or pay-per-click advertising. A number of these links embody websites relating to fashion and in some cases include websites of the Complainant's competitors. Accordingly the Complainant argues that this use is not a bona fide use and that the Respondent has tried to divert Internet users to the disputed domain name for commercial gain. The Complainant goes on to indicate that this use significantly benefits the Respondent, creates a serious likelihood of confusion and also impacts the business of the Complainant. Accordingly the Respondent's registration and use of <balenciga.com> is in bad faith.
The Respondent did not reply to the Complainant's contentions.
In accordance with the Rules, a panel is required to render its decision 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 applicable. (Rules, paragraph 15(a)).
Additionally, in each case a complainant must establish each element of paragraph 4(a) of the Policy, which are as follows:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
As noted above, despite Lead Networks Domains Pvt. Ltd. confirmation that the domain name was “locked,” it nonetheless permitted the transfer of the disputed domain name to a different registrar and registrant while the proceeding was ongoing. In the Panel's view, this action is not consistent with the Policy, paragraph 8(a), which prohibits transfer of a domain name registration to another holder during the pendency of proceedings under the UDRP. Further, the Panel views Lead Networks Domains Pvt. Ltd.'s conduct in permitting the transfer as inconsistent with the UDRP and its other obligations as a registrar. Further, the Panel notes the general lack of responsiveness of this registrar, which contributed to the delay in these proceedings.
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules, which provides:
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, under the Panel's view, PrivacyProtect.org and n/a, Acosta Jose Julian remain proper Respondents in this case. On these facts, however, the Panel finds evidence of cyberflight and pursuant to the powers and discretion granted to the Panel under the Rules, paragraph 10, the Panel also designates Jeff Lander as a Respondent. To do otherwise under these circumstances would undercut the efficacy of the proceedings.
The Panel is satisfied that the Center took all steps reasonably necessary to notify each of the Respondents of the initiation of these proceedings, including providing a copy of the Complaint and an opportunity to respond to each.
In accordance with its obligations under paragraph 4(a)(i) of the Policy, the Complainant must first evidence that the disputed domain name <balenciga.com> is identical or confusingly similar to a trademark in which the Complainant has rights.
As evidenced by Annexes 3A-3H to the Complaint, the Complainant has produced significant evidence of the registration of the BALENCIAGA trademark in France, the United States, Japan, China, the United Arab Emirates and elsewhere around the world. In many cases, the registration dates for the various BALENCIAGA trademarks go back over thirty years, with one even dating back to 1951. The Complainant has also evidenced through Annexes 4A through 4O to the Complaint that it holds a number of registered domain names incorporating the BALENCIAGA trademark, many of which predate the Respondent's registration of <balenciga.com> which was registered on March 8, 2005. A few examples of the Complainant's registered domain names include <balenciaga.com>, <balenciaga.fr>, <balenciaga.us>, and <balenciagaparfums.com>.
The Panel finds that the Complainant has presented significant evidence of its rights to the BALENCIAGA trademark. The Complainant has alleged in this case that the disputed domain name <balenciga.com> is almost identical to the BALENCIAGA trademark of the Complainant.
The Panel agrees with the Complainant's contention that the “.com” ending of the disputed domain name is not relevant for the purposes of determining if the disputed domain name is identical or confusingly similar to the BALENCIAGA trademark and is an irrelevant distinction that does not alter the likelihood of confusion. VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607: Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709.
The issue here is whether the fact that the disputed domain name of <balenciga.com> incorporates an almost identical spelling to that of the Complainant's BALENCIAGA trademark makes the disputed domain name confusingly similar to the BALENCIAGA trademark. Here as the Complainant argues, many panels in the past have found that “typosquatting” can result in a domain name being considered as confusingly similar to a trademark in which the complainant has rights. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937. The Panel finds support from one previous panel decision where the panel considered the context in which the domain name was being used as well as the similarity between the domain name and the complainant's trademark. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
In the present case, the Complainant has evidenced the numerous registrations of the BALENCIAGA trademark around the world and the long history and goodwill associated with the trademark. The Complainant has also evidenced that the trademark is not a generic or common term, but is actually the surname of the Complainant's original founder Cristobal Balenciaga.
The Panel considered the remark made by the Complainant that the term “Balenciaga” has entered a French dictionary. In this regard, the Panel conducted some research in order to determine whether the inclusion of the term “Balenciaga” in a French dictionary could mean that the term has become generic. The Panel concluded that this is not the case. The term is being included in a section of a “dictionary” that provides definitions of people and other factual terms of reference, as opposed to a language dictionary per se.
Based on the above, the Panel finds credibility in the Complainant's contention that the Respondent is a “typosquatter” since the disputed domain is almost identical to this unique trademark. As a result, and taking all the evidence together, despite the omission of the second “a” of BALENCIAGA, the Panel is of the opinion that the disputed domain name is confusingly similar to the BALENCIAGA trademark which the Complainant has rights to. The Complainant has therefore met the first element of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once that case has been made the burden shifts to the Respondent who must demonstrate that it has rights or a legitimate interest in the domain name. Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that the Respondent may use to demonstrate that it possesses rights or legitimate interests in a domain name.
The Panel does not need to get into an exhaustive determination of whether the Complainant has rights to the BALENCIAGA trademark as the Complainant has presented significant evidence in the Annexes to the Complaint of numerous trademark registrations from all over the world going back as far as 1951. In addition, the Complainant has also produced evidence of a number of domain name registrations incorporating the BALENCIAGA trademark.
The Respondent on the other hand has not presented any evidence that the Complainant or any other party gave it a right to utilize the BALENCIAGA trademark whether in the form of a license or otherwise. The Complainant has indicated that it has not provided the Respondent with any such license or authority to use the BALENCIAGA trademark either. As far as the BALENCIAGA trademark, the Respondent has not presented any evidence that they were commonly known or associated with this trademark.
While it is clear that the Respondent did not have the Complainant's authority to use the BALENCIAGA trademark or that it was commonly known by that trademark, these facts alone are not conclusive as to whether the use was legitimate. Amscot Corporation v. Fibertech Columns, Inc., WIPO Case No. D2005-0656. A panel can also assess whether the use was in connection with a bona fide offering of goods or services as well as if the respondent is making a legitimate, noncommercial or fair use of the domain name without the intent for commercial gain or to tarnish the trademark at issue.
With particular respect to landing pages, if the links are based on the generic value of the domain name and do not implicate any trademark rights, such a use can be considered bona fide. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. If however the links were targeted to the trademark name and the services offered by the Complainant, such use would not constitute a fair or legitimate use. See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.
In this case, as the Panel noted above, <balenciga.com> reverts to a landing page which primarily consists of pay-per-click advertising links. Most of the links relate to fashion and fashion accessories that the Complainant sells in its business, some of which even advertise the goods of the Complainant's competitors. Upon a visit from the Panel, one link even advertised the Complainant's products. In this case, advertising the links of a competitor of the trademark holder is not a bona fide, legitimate or fair use of the disputed domain name. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Here no argument can be made that the Respondent was only attempting to capitalize off the generic value of the trademark, as the BALENCIAGA trademark is not only well-known, but unique.
In this case it is clear that there is intent to utilize the disputed domain name for commercial gain due to the pay-per-click links. While previous cases have held that the use of pay-per-click links on a website can constitute a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy (Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED., WIPO Case No. D2008-1675) the circumstances of each case must be evaluated by the panel.
Here there is no bona fide offering of goods or services or legitimate use of the domain name. In this case the pay-per-click links on the resulting website advertise goods associated with the business of the Complainant as well as the Complainant's competitors. Such a use would not constitute a fair use. Here the disputed domain name <balenciga.com> was clearly targeted towards the goodwill of the Complainant's trademark and sought to misleadingly divert Internet users to the disputed domain name.
Accordingly, based on the factors above, the Panel finds that based on the weight of the evidence that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
The final element that the Complainant must evidence under the Policy is that the disputed domain name <balenciga.com> was registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration, however this list is not exhaustive.
Throughout its Complaint, the Complainant has heavily emphasized the history behind its business, its initial founding in 1918 and the BALENCIAGA trademark. The Complainant also details the progression of the business from a local haute couture house in Spain to a widely known and recognized fashion business. Over the years a number of trademark registrations incorporating the BALENCIAGA trademark were made around the world. Additionally, a number of domain name registrations were also made in the same respect.
The Panel considers this history and the notoriety of the Complainant's trademarks to be important in assessing whether the disputed domain name was registered in bad faith. Many, if not the majority of the trademark registrations and the domain name registrations incorporating the BALENCIAGA trademark, predate the Respondent's March 8, 2005 registration of the disputed domain name. The Panel has found, based on the extent of the evidence provided, that the Complainant and its business has achieved a certain reputation and goodwill around the world through the use of the BALENCIAGA trademark in its business.
The Panel does not find that the term “Balenciaga” is a generic word. In actuality it is a distinct term as it is the surname of the founder of the Complainant's business, Cristobal Balenciaga. In light of the extent and duration of the Complainant's business the Panel finds that the term “Balenciaga” is a widely-known and recognized term that has achieved a certain degree of recognition around the world.
At this point the Panel would like to note that as past decisions have emphasized, a panel is permitted to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In this case the Respondent's domain name is confusingly similar to a trademark in which the Complainant has rights. Additionally, the landing page of <balenciga.com> resolves to a number of pay-per-click links that are primarily related to fashion and fashion accessories which is the primary business of the Complainant.
The Panel also finds some support in the Complainant's contention that the Respondent had constructive notice of the Complainant's rights to the BALENCIAGA trademark as other panels have considered in the past. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Sterling Jewelers Inc. v. Sterling Jewelers, Inc. and Domain Traffic, WIPO Case No. D2002-0772. In light of the long history and world-wide extent of the Complainant's business combined with the similarity of the products being offered on <balenciga.com>, the Panel can conclude based on a preponderance of the evidence that the disputed domain name was registered in bad faith.
As far as bad faith use, the Panel finds support in the Complainant's contention that the Respondent sought to utilize the disputed domain name to attract Internet users for commercial gain. Under paragraph 4(b)(iv) of the Policy, a party can be found to be using a domain name in bad faith if they have intentionally tried to attract Internet users for commercial gain to the website by creating a likelihood of confusion with the Complainant's mark.
In this case, the Panel has already acknowledged the reputation and notoriety associated with the BALENCIAGA trademark. The Panel has also concluded above that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. In this case due to the similarity between the disputed domain name and the Complainant's trademark as well as the similar product offerings, the Panel finds that the disputed domain name is being used in bad faith. Here there is sufficient evidence for the Panel to conclude that the Respondent has tried to create a likelihood of confusion by registering a domain name that was confusingly similar to a trademark in which the Complainant had rights. Through the use of the pay-per-click links, the Respondent specifically targeted and sought to capitalize off the Complainant's trademark by attempting to attract Internet users to its domain name for commercial gain. The bad faith use is further emphasized by the fact that in some cases the links resolve to competitors of the Complainant's business.
Based on the preponderance of the evidence put forward by the Complainant, the Panel finds that the Respondent had registered and was using the disputed domain name of <balenciga.com> in bad faith. Accordingly, the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For all 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 <balenciga.com> be transferred to the Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: April 21, 2010