WIPO Domain Name Decision: D2008-0952

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MLA Multibrand Holdings, Inc., BCBG Max Azria Group Inc. v. Chen Bao Shui/ Privacyprotect.org/ Laksh Internet Solutions Private Limited

Case No. D2008-0952

1. The Parties

The Complainant is MLA Multibrand Holdings, Inc., BCBG Max Azria Group Inc., Vernon, California, of United States of America, represented by Maryn Miller, United States of America.

The Respondent is Chen Bao Shui/ PrivacyProtect.org/ Laksh Internet Solutions Private Limited, of Shanghai, China; Moergestel, Netherlands; and Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <bcbgmaxazria.com>is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2008. On June 24, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. an initial request for registrar verification in connection with the domain name at issue. Lead Networks Domains Pvt. Ltd. did not reply to the initial and numerous follow up requests for registrar verification. Following the initial request for registrar verification a search of the registrar’s publicly available WhoIs disclosed a new Registrant Laksh Internet Solutions Private Limited as the Registrant of the domain name in dispute. Based on the change in the publicly available WhoIs, the Center thus invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 16, 2008 adding Laksh Internet Solutions Private Limited as a Respondent. The Center verified that the Complaint together with the amended to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on July 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2008. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on August 8, 2008.

The Center appointed Ross Carson as the sole panelist in this matter on August 27, 2008. 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

Complainant is the owner of the trademark BCBG MAX AZRIA which is registered with the United States of America Patent and Trademark Office and the Chinese and Canadian Trademarks Office and in use by Complainant for the following goods and services, among others:

toiletries, namely, perfumes, colognes and eaux de toilette, scented body spay, perfume oils, body lotions, shampoos, hair conditioners, bath oils and salts, bath soaps, bath gels, bubble bath, skin soap, body oil, body powder, skin moisturizers, body and eye cream, and cosmetics, namely, mascaras, lipsticks, lip glosses, cosmetic pencils, eye pencils, eye shadows, eyeliners, eye make up remover, foundation, face powder, blusher, hair gel and hair styling preparations, nail enamel, nail polish and potpourri (US Reg. No. 2581590)

sunglasses (US Reg. No 2229366);

jewelry and watches (US Reg. No. 2362512);

handbags, purses, clutches, cosmetic bags and back packs (US Reg. No. 2162709);

clothing, namely, jackets, pants, shirts, dresses, T-shirts, headbands, skirts, suits, hats, belts, shoes, boots and slippers (US Reg. No. 2160919); and

retail stores featuring men’s and women’s clothing, footwear, eyewear, belts, bags, wallets, notebooks, costume jewelry, and accessories (US Reg. No. 2229365).

Complainant is also the owner of Canadian Reg. No. TMA 573447, and Chinese Reg. Nos. 1389232, 1420403, 1395328, 1407740, and 1246718 for the trademark BCBG MAX AZRIA.

The domain name in dispute was registered on May 22, 2004.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that the domain name in dispute is identical to the trademark in which the Complainant has rights as it uses the identical term “bcbgmaxazria” as the trademark BCBG MAX AZRIA. Complainant states that its trademark is entirely reproduced in the domain name in dispute. The only difference between the two, i.e., the lack of the spaces between the three words in the domain name in dispute, emanates from the technical restrictions of a domain name, i.e., that they do not contain spaces. The fact that a space is made between the elements of a mark is irrelevant, both for the consumers and merchants, and for the Internet users and the research engines. See Christian Dior Couture SA v. Liage International Inc., WIPO Case No. D2000-0098.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that there is no evidence to suggest that, before any notice to the original Respondent of the dispute, the original Respondent made use of the domain name in connection with a bona fide offering of goods or services.

Complainant further states that there is absolutely no evidence that Respondent is or has ever been using the name in any legitimate noncommercial or fair use basis. There is no evidence that Respondent, as an individual, business, or other organization, has ever been known by the name “bcbgmaxazria” or any name similar thereto.

Complainant states that Respondent is not the licensee of the Complainant and is, in no way, authorized to use Complainant’s trademark BCBG MAX AZRIA. Furthermore, the Respondent is not authorized to market any products or services bearing said trademark, to use or apply for registration of a domain name on behalf of Complainant, to represent the Complainant, or to act on its behalf. Complainant has no affiliation with Respondent other than this action. (See Crédit Industriel et Commercial S.A v. Betjinghongshanhushuizushangmaoyouxiangongsi, WIPO Case No. D2007-1818, (hereinafter the “Beijinghong Case”) and Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268, both finding that these factors are enough show respondent has no rights or legitimate interests in respect of the domain name).

A.3 Registered and Used in Bad Faith

Complainant submits that Respondent registered the domain name in dispute in bad faith as Complainant had made extensive use of and registered its trademark BCBG MAX AZRIA in China, the United States of America, Canada and other countries prior to registration of the domain name in dispute on May 22, 2004. Complainant further states that the term “BCBG” in the trademark is a French term of art in the apparel industry standing for “Bon Chic Bon Genre” which translates to “Good Style, Good Life”. Complainant states that as Respondent is not French it is not conceivable that Respondent registered the domain name in dispute comprised of a French term and the name of a well-known designer in good faith independently of Complainant’s previously used and registered trademark BCBG MAX AZRIA.

Complainant states that in the Beijinghong Case, supra, a case almost identical in facts to this one, the panel taking into account the fact that the complainant’s mark was incorporated entirely into the domain name, and the complainant’s reputation and activities worldwide, found that the respondent was undoubtedly aware of the complainant’s mark. The other facts that the panel considered in making the inference that the respondent has registered the domain name in bad faith were: (i) that the domain name contained a generic word, “banques”, which describes the complainant’s business; and (ii) this word is in French, a language that would appear to be foreign to the respondent. The panel concluded in the Beijinghong Case “[t]o suggest that the Respondent’s selection of this domain name is pure coincidence would require a stretch of one’s imagination.”

Complainant further states that Respondent has used the domain name in dispute in bad faith.

Complainant states that UDRP case records show that the Respondent Shui is a well-known “domain squatter.” There are at least 7 cases in the UDRP case records involving Respondent Shui for claims of cybersquatting and, all of them, ordered Respondent Shui to transfer the domain name to the owner. See Beijinghong Case, WIPO Case No. D2007-1818; Deveraux Deloitte v. Bao Shui Chen, WIPO Case No. D2007-1160; Cis Bio International v. N.A. Bao Shui Chen, WIPO Case No. D2007-1191; Weyerhaeuser Company v. Chen Bao Shui, WIPO Case No. D2007-0969; The Ford Foundation v. Chen Bao Shui, WIPO Case No. D2007-0862; SmithKline Beecham PLC v. Chen Bao Shui, NAF Case No. 989685 (June 28, 2007); and Dillard’s, Inc., Dillard’s International, Inc. v. Chen Bao Shui, WIPO Case No. D2007-0520.

Complainant submits that previous UDRP Panels have established the principle that the registration of a domain name that is obviously connected with a well-known trade mark by someone who has no connection whatsoever with the trade mark suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Complainant further submits that the domain name in dispute is obviously connected with the Complainant’s widely known trademark. Previous UDRP Panels have found that this indicates that the domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. See Beijinghong Case, supra.

Complainant states that Respondent has registered a domain name that exactly corresponds to the widely-known mark of Complainant. This indicates that it has intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark. See Beijinghong Case, supra.

Complainant further submits that the domain name in dispute diverts Internet users to an inactive website which does not correspond to the Complainant’s official website but instead points users to other sites that sell BCBG MAX AZRIA products. This is damaging to Complainant’s reputation as Internet users would expect the domain name to lead them to Complainant’s website and is damaging to Complainant’s business in that it directly diverts potential purchasers of Complainant’s products to vendors other than Complainant, some of which are unauthorized.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the registered owner of trademark registrations for the trademark BCBG MAX AZRIA in the United States of America, Canada and the People’s Republic of China particulars of which are provided in paragraph 4 above. Complainant’s trademark BCBG MAX AZRIA has been widely used and advertised in print and online since at least as early as 1996 and considerable customer recognition and goodwill has been built up in Complainant’s trademark.

The domain name in dispute is comprised of Complainant’s registered trademark BCBG MAX AZRIA in combination with the TLD designation “.com”. Previous panels have held that the absence of spacing between parts of trademarks copied in domain names as a result of the ICANN rules governing the presentation of domain names is irrelevant in determining the likelihood of confusion of a domain name in dispute with a registered trademark.

Panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net”, or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that the domain name in dispute is confusingly similar to Complainant’s trademarks BCBG MAX AZRIA.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademark confusingly similar thereto.

The web page associated with the domain name in dispute displays a series of sponsored links to Internet sites offering BCBG MAX AZRIA fashions as well as fashions of Complainant’s competitors. UDRP decisions have consistently found that registrants that “park” their domain names that are confusingly similar to a trademark by using redirecting services with links to the goods or services of a complainant or complainant’s competitors have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute, e.g. pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts a respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

C.1 Domain Name Registered in Bad Faith

By reason of Complainant’s registrations and substantial use of its trade mark BCBG MAX AZRIA for many years in association with the sale of the goods and services listed in paragraph 4, Complainant’s trademark was widely known prior to registration of the domain name in dispute on May 22, 2004.

The domain name at issue, <bcbgmaxazria.com>, includes Complainant’s trade mark BCBG MAX AZRIA and consists of Complainant’s trademark in combination with the generic top level domain descriptor “. com”. “BCBG” in the trademark is a French term of art in the apparel industry standing for “Bon Chic Bon Genre” which translates to “Good Style, Good Life”. Respondent is not French, and it is difficult to conceive that Respondent registered the domain name in dispute comprised of a French term and the name of a well known designer in good faith independently of Complainant’s previously used and registered trademark BCBG MAX AZRIA.

Respondent was invited to file a Response. Respondent’s failure to explain any reason for choosing the domain name in dispute strengthens the Panel’s inference that Respondent registered the domain name in dispute with knowledge of Complainant’s fashion goods and services sold and advertised by Complainant in association with Complainant’s trademark BCBG MAX AZRIA.

The Panel finds that Respondent registered the domain name in dispute in bad faith.

C.2. Domain Name Used in Bad Faith.

Respondent’s use of the domain name in dispute <bcbgmaxazria.com> to resolve to websites of Complainant and Complainant’s competitors incorporating Complainant’s trademark BCBG MAX AZRIA constitutes use of the domain name in bad faith. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038. (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”)

Respondent is using the confusingly similar domain name <bcbgmaxazria.com> to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) of the Policy.

Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Respondent has engaged in a pattern of conduct that substantiates this finding. There are at least 7 cases in the UDRP case records involving Respondent Shui for claims of cybersquatting and, all of them, ordered Respondent Shui to transfer the domain name to the owner. See Beijinghong Case, WIPO Case No. D2007-1818; Deveraux Deloitte v. Bao Shui Chen, WIPO Case No. D2007-1160; Cis Bio International v. N.A. Bao Shui Chen, WIPO Case No. D2007-1191; Weyerhaeuser Company v. Chen Bao Shui, WIPO Case No. D2007-0969; The Ford Foundation v. Chen Bao Shui, WIPO Case No. D2007-0862; SmithKline Beecham PLC v. Chen Bao Shui, NAF Case No. 989685; and Dillard’s, Inc., Dillard’s International, Inc. v. Chen Bao Shui, WIPO Case No. D2007-0520.

The Panel finds that Respondent is using the domain name in dispute in bad faith.

7. Decision

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 <bcbgmaxazria.com> be transferred to the Complainant.

Ross Carson
Sole Panelist

Dated: September 10, 2008