The Complainant is Pierre Balmain S.A. of Paris, France, represented by Gide Loyrette Nouel, the People’s Republic of China.
The Respondent is Lin Sai Hui of Putian, Fujian, the People’s Republic of China.
The Disputed Domain Name <balmain-sales.com> is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On December 16, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 20, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 6, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on February 8, 2011. 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.
The Complainant is a French fashion and garments company created by the French designer Mr. Pierre Balmain in 1945. The Complainant has been using the trade marks BALMAIN and PIERRE BALMAIN since 1946 on products in the fashion industry.
The Complainant has registered the following the trade marks BALMAIN and PIERRE BALMAIN around the world. The registrations include:
Jurisdiction | Trade Mark | Registration Number | Registration Date |
|
International Registration |
PIERRE BALMAIN |
183835 |
April 2, 1955 |
|
United States |
BALMAIN |
0702312 |
August 2, 1960 |
|
International |
BALMAIN |
451759 |
April 25, 1980 |
|
International Registration |
BALMAIN |
758712 |
April 10, 2001 |
The International Registrations No. 183835 and No. 758712 depict the word “Balmain” in the following stylized form (the “BALMAIN Logo”):
The Complainant has also registered the domain name <balmain.com> on March 17, 1997, which resolves to a website providing an online boutique. The BALMAIN Logo is featured prominently on the top left corner of the website.
The Disputed Domain Name was registered on July 5, 2010. The Complainant alleges that the Disputed Domain Name “is linked with another website www.balmainjacketssale.com”, supporting the same with printouts of that website, presumably as at about the time of the Complaint. The Panel understands the Complainant as alleging that the Disputed Domain Name redirected to the website at “www.balmainjacketssale.com”. Unfortunately, the Panel’s attempts to access a website under the Disputed Domain Name at the time of writing this decision were unsuccessful. Also, visits to http://www.balmainjacketssale.com were redirected to a website at http://balmainjacketssale.info. The website at http://balmainjacketssale.info presented a layout similar to and consistent with the printouts of the website at http://www.balmainjacketssale.com submitted with the Complaint. It was an English-language website displaying the BALMAIN Logo at the top left corner. The website offered fashion products for sale and used the word “Balmain” generously in association with these products.
Although the Disputed Domain Name did not appear to resolve to any website at the time of writing this decision, there is nothing to suggest that the Panel should doubt that the Disputed Domain Name redirected to a website at “www.balmainjacketssale.com” at the time of the Complaint, and the Panel accepts the evidence as such. Other than the evidence submitted with the Complaint, no information about the Respondent is available.
The Complainant contends that:
(1) The Disputed Domain Name is confusingly similar to the trade mark BALMAIN. It comprises the word “balmain” and “sale”. The word “balmain” in the Disputed Domain Name is identical to the trade mark BALMAIN;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has never licensed or authorized the Respondent to use the trade mark BALMAIN. The Respondent is not commonly known by the name “balmain”; and
(3) The Disputed Domain Name was registered and is being used in bad faith pursuant to paragraphs 4(b)(ii), (iii) and (iv) of the Policy. The trade mark BALMAIN is a “famous mark”. The website redirected from the Disputed Domain Name reproduced pictures designed and created by the Complainant and were copyright infringements.
The Respondent did not reply to the Complainant’s contentions.
Having regarding the circumstances including the following, the Panel determines that English shall be the language of the proceeding:
(1) The Complainant is French where Chinese is not the mother language;
(2) English is used for all content displayed on the website which previously redirected from the Disputed Domain Name (i.e., “www.balmainjacketssales.com”);
(3) The Respondent did not object to English being the language of the proceeding; and
(4) The Respondent did not submit a Response and pursuing the proceeding in Chinese would serve no discernible purpose in the present circumstances.
To succeed in this proceeding, the Complainant must establish the following 3 limbs of paragraph 4(a) of the Policy:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark 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; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
The trade mark BALMAIN has been registered as a trade mark by the Complainant for some decades. There is no doubt that the Complainant has rights in the trade mark BALMAIN. The consensus view of previous UDRP panels is that a domain name which incorporates a trade mark in its entirety and incorporates other elements which do not distinguish the domain name from the trade mark is generally confusingly similar for purposes of paragraph 4(a) of the Policy.
The Disputed Domain Name incorporates the trade mark BALMAIN in its entirety. The word “sale” after the word “balmain” in the Disputed Domain Name is descriptive and does not successfully distinguish the Disputed Domain Name from the trade mark BALMAIN. The Panel therefore holds that the Disputed Domain Name is confusingly similar to the trade mark BALMAIN.
The first limb of paragraph 4(a) of the Policy is hereby established.
The consensus view of previous UDRP panels is that because the second limb of paragraph 4(a) of the Policy requires the proving of a negative, a complainant only has to show a prima facie case and the burden of proof will shift to the respondent. In the present case, the Complainant has confirmed that it has never licensed or authorized the Respondent to use the trade mark BALMAIN. The Respondent’s name is “Lin Sai Hai”, an individual, and it does not appear from the evidence that the Respondent is commonly known by the name “balmain”.
The Panel is of the view that the Complainant has shown a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Since the Respondent did not file a Response, the prima facie case has not been rebutted. Therefore, the Panel holds that the second limb of paragraph 4(a) of the Policy is established.
Paragraph 4(b)(ii) of the Policy states: “[the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct”.
Although it would appear from the evidence that the registration of the Disputed Domain Name prevented the Complainant from reflecting the trade mark BALMAIN in a domain name corresponding to the Disputed Domain Name, the available evidence does not show that the Respondent had engaged in a pattern of such conduct. For example, there is no evidence of the relationship between the Respondent and the registrant for <balmainjacketssales.com> to which the Disputed Domain Name redirected. As such, the Panel is of the view that paragraph 4(b)(ii) is not applicable to the present facts.
Paragraph 4(b)(iii) of the Policy states: “[the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”.
It is not clear from the facts that the Respondent may be regarded as a competitor of the Complainant. The Panel is mindful of the comments of the panel in Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 as follows:
“… a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner. If Paragraph 4(b)(iii) were given the meaning advanced by Complainant, respondents would be found to have disrupted the business of competitors in far too many cases, and the Policy’s bad faith requirement would be diluted beyond recognition.”
In particular, there is no evidence as to the origin of the goods offered for sale on the website previously resolved from the Disputed Domain Name (e.g., whether they originated from the Complainant, whether they are counterfeits, whether they rivaled the Complainant’s goods in quality). As such, the Panel is unable to make any finding in respect of paragraph 4(b)(iii) of the Policy based on the facts.
Paragraph 4(b)(iv) of the Policy states:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The Panel believes that the website previously redirected from the Disputed Domain Name at the time of the Complaint is designed to attract Internet users. In the absence of any explanation by the Respondent, the offering of goods on the website can only plausibly be attributed to an intention for commercial gain. The Complainant has confirmed that the Disputed Domain Name was not authorized. Yet the Respondent has without authorization used the Disputed Domain Name to resolve to a website which offers goods for sale and displayed the BALMAIN Logo on the website. A reasonable Internet user visiting the website previously resolved from the Disputed Domain Name is likely to be confused as its source, sponsorship, affiliation, or endorsement. In the circumstances, the Panel concludes that circumstances are within the scope of paragraph 4(b)(iv) of the Policy.
The third limb of paragraph 4(a) of the Policy is accordingly also established.
For all 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-sales.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: February 22, 2011