The Complainant is Goyard St-Honore of Paris, France, represented by Cabinet Granger, France.
The Respondent is Mitzi Jarrett of Wuxi, Jiangsu Province, China.
The disputed domain name <goyardonline.net> (the “Disputed Domain Name”) is registered with Melbourne IT Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2013. On May 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 24, 2013, 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 May 27, 2013, the Complainant confirmed that a copy of Complaint had been transmitted to the Respondent and Registrar by email.
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 May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2013.
The Center appointed Charné Le Roux as the sole panelist in this matter on June 21, 2013. 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 very old and established French luxury goods house that has been in operation since 1853. The Complainant’s principal trade mark is GOYARD, which is also the main part of the Complainant’s trading style. The Complainant specialises in the design, production and sale of French luxury luggage, handbags, wallets, trunks and the like. The Complainant is the owner of a very substantial portfolio of international trade mark registrations for GOYARD, including (but not limited to) registrations filed through the United States Patent and Trademark Office (USPTO) in November 1990, a Community Trade Mark filed in June 2005 and an International trade mark registered in June 2004. The Complainant’s International trade mark registration extends to China, where the Respondent is situated. The Complainant’s GOYARD trade marks are registered mostly in class 18 for handbags, trunks and related goods. The Complainant also owns a number of domain names in generic top level and country specific domains, all comprising the GOYARD trade mark, for example <goyard.com>, <goyard.org>, <goyard.asia> and <goyard.fr>.
The Disputed Domain Name was registered on August 20, 2012 and the website attached to it features goods such as handbags, luggage, purses and the like, and also bears the Complainant’s GOYARD trade mark.
The Complainant provided substantial information regarding the history associated with its GOYARD trade mark and its significant trade mark and domain name portfolio (mentioned in Section 4. above). It asserts that it has been trading under the Goyard name for over 150 years in connection with luxury luggage goods and that Goyard products are distributed worldwide. The Complainant contends that the GOYARD trade mark is extremely well-known. The Complainant also provided information regarding the promotional activities that have taken place in connection with the GOYARD trade mark, including promotion through international magazines and newspapers, which included magazines distributed in China.
The Complainant contends that the Disputed Domain Name is confusingly similar to the GOYARD trade mark in which it holds rights. It points out that the Disputed Domain Name incorporates the whole of its GOYARD trade mark, coupled with a non-distinctive and descriptive element, being the word “online”. The Complainant submits that the addition of the term “online” increases the likelihood of confusion because the word refers to the fact that the website attached to the Disputed Domain Name will offer Goyard goods for sale on the Internet. The Complainant argues that the fame attached to the GOYARD trade mark has already been confirmed by other panels and it provided a number of case references in support of this contention.
The Complainant asserts that the Respondent lacks rights and legitimate interest in the Disputed Domain Name in that:
a) the Respondent is not known by the Disputed Domain Name;
b) the Respondent is not a licensee or an authorized agent of the Complainant or has any relationship with the Complainant whatsoever;
c) the word “goyard” has no meaning in Chinese or English, which are the most likely languages of the Respondent and are used on the website associated with the Disputed Domain Name and the word does not describe or designate the goods offered for sale on the said website;
d) the Respondent has no prior rights in the Disputed Domain Name nor has it made any use of the Disputed Domain Name in connection with a bona fide offering of goods;
e) the Respondent is not making legitimate, noncommercial or fair use of the Disputed Domain Name. In fact, the Complainant states, the Respondent has used the Disputed Domain Name to point to a website where counterfeit Goyard goods can be purchased. It submits that all the goods that are offered on the website are counterfeit because some of them do not even exist in the Complainant’s range of products and others have prices that are so low that they can not be considered to be genuine luxurious goods;
f) the Respondent is not making any fair use of the Disputed Domain Name and the website attached to the Disputed Domain Name in fact misleads consumers regarding the identity of the holder of the website and of the origin of the goods that can be purchased from it; and
g) the Respondent is trading on the goodwill of the Complainant’s trade mark in order to generate a revenue.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It states that the fame associated with its GOYARD trade mark is so significant that when the Respondent registered the Disputed Domain Name, it must have been aware of the Complainant’s rights in the trade mark, a fact borne out by the subsequent listing of products featuring the Complainant’s trade mark on the website associated with the Disputed Domain Name.
The Complainant submits that the Respondent clearly registered the Disputed Domain Name in an attempt to divert customers from the Complainant and in so doing, to disrupt the Complainant’s business.
The Complainant also contends that the Disputed Domain Name has been used in bad faith because the website associated with the Disputed Domain Name bears the Complainant’s GOYARD trade mark and offers for sale the type of goods sold by the Complainant, which are likely to mislead Internet users to believing that they have found a website legitimately connected to the Complainant.
The Complainant asserts that the fact that the goods to be sold from the website are counterfeit goods is strong evidence of bad faith. The Complainant submits that it manufactures its goods in France in its own factories, that it controls all the processes, that it has no licensee and that it never has and has no intention of selling its goods on the Internet. It states that the Complainant has no relationship with the Respondent and that it is confident that the goods are counterfeit for these reasons and also because some of them, as mentioned above, do not exist in the Complainant’s range and are sold for very low prices not normally associated with genuine luxurious goods.
The Complainant requests that the Disputed Domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove:
(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has demonstrated that it has acquired rights in the GOYARD trade mark by virtue of its substantial portfolio of trade mark registrations for it and its considerable use of the mark for over 150 years. The Complainant has also demonstrated that the GOYARD trade mark is well-known, a fact confirmed by many other UDRP panels in connection with complaints lodged by the Complainant in the following cases:
Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee, WIPO Case No. D2011-1837
Goyard St.Honoré v. Cai Jin Yong, WIPO Case No. DCO2012-0007
Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158
Goyard St-Honoré v. Domain Whois Protection Service / Lin Honghai, WIPO Case No. D2012-1159
Goyard St-Honoré v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2012-1160
Goyard St-Honoré v. Starout Soft, AAS SSS, Wang Xiaoming, WIPO Case No. D2012-1161
Goyard St-Honoré v. Lin Honghai, WIPO Case No. D2012-1165
Goyard St-Honoré v. Yard Baker, WIPO Case No. D2012-1167
Goyard St-Honoré v. Kim Yong, WIPO Case No. D2012-1168
Goyard St-Honoré v. Stefano Rugoletti, WIPO Case No. D2012-1170
Goyard St-Honoré v. suying chen, WIPO Case No. D2012-1171
Goyard St-Honoré v. Qi Huan Wu, WIPO Case No. D2012-1172
Goyard St-Honoré v. Li Mei Huang, WIPO Case No. D2012-1173
Goyard St-Honoré v. Ye Shi, WIPO Case No. D2012-1178
Ignoring for this purpose the generic top level domain “.net”, as the Panel is entitled to do, the Panel finds that the combination of the Complainant’s well-known GOYARD trade mark with the descriptor “online”, will suffice for the purposes of finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement.
The Complainant asserts that its GOYARD trade mark is very famous worldwide, that it has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name, or has made any legitimate noncommercial or fair use of the Disputed Domain Name. The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer.
The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
The Respondent has clearly registered the Disputed Domain Name primarily with an intention to capitalize on the reputation attached to the Complainant’s mark by diverting Internet users seeking information about the Complainant to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark, in order to obtain financial reward through the offer of sale of products promoted on the website linked to the Disputed Domain Name. The subsequent use that the Respondent has made of the Disputed Domain Name corresponds with its intention at registration.
The Complainant alleges that the Respondent also sells counterfeit goods on the website and, as the Respondent has not disputed the Complainant’s submissions in this regard, this is a factor that weighs heavily against it in considering the question of bad faith.
Since the GOYARD trade mark is well-known it is impossible that the Respondent could not have appreciated that it was a registered and well-known trade mark and that it would have a substantial commercial value and that anyone who would be making unauthorized use of the disputed domain name that incorporates this trade mark, would be likely to be confusing Internet users into believing that the disputed domain name was associated with the Complainant.
The Respondent could have shown in this administrative proceeding its rights or legitimate interests, or its good faith conduct, and it could have challenged the Complainant’s contentions, particularly the damaging allegation regarding the sale of counterfeit goods, but it elected not to take up these opportunities.
Taking all the above circumstances into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
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 Name, <goyardonline.net>, be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Date: June 27, 2013