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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pierre Balmain S.A. v. Nashan

Case No. D2017-1552

1. The Parties

The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Nashan of Shenyang, Liao Ning, China.

2. The Domain Name and Registrar

The disputed domain name <balmain.shop> 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 August 10, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2017, 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 August 14, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and provided an amended Complaint on August 16, 2017. 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 English and Chinese of the Complaint, and the proceedings commenced on August 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 11, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 15, 2017. 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 Pierre Balmain S.A. was founded in 1945 by the French fashion designer Pierre Balmain. The Complainant designs and sells clothing, including outerwear, dresses, skirts, tops, jeans and trousers, shoes, bags, accessories, and fragrances. In the period following World War II, Pierre Balmain's signature "Jolie Madame" style became a favorite style among European royalty and Hollywood stars. Audrey Hepburn, Ava Gardener, Brigitte Bardot, Katherine Hepburn, Sophia Loren, and other stars wore Balmain's designs. Nicaraguan first lady Hope Portocarrer and Queen Sirikit of Thailand also wore Balmain's designs. Mr. Balmain promoted himself internationally by traveling the world and lecturing on fashion in France. In 1951, the Complainant expanded operations into the United States of America ("United States"), selling ready-to-wear clothes, which earned Mr. Balmain the Nieman Marcus Fashion Award in 1955. In 2015, H & M Hennes & Mauritz AB announced collaboration with the Complainant, its eleventh guest-designer collaboration.

The Complainant has a global presence, with store locations in over 40 countries worldwide and boutique locations in some of the largest cities of the world, including Paris, London, Hong Kong, Shanghai, Beijing, and Dubai. In the United States, the Complainant's products are sold in more than 33 locations across 17 cities. In 2015, the Complainant's net sales exceeded EUR 58 million.

The Complainant has an Internet presence through its primary website "www.balmain.com" and through social media platforms, including Instagram, Facebook and Twitter. The Complainant's primary website received an average of more than 36,000 unique visitors per month in the period between January 2015 and January 2016. As of February 2016, the Complainant reported more than 3 million total followers on Instagram, more than 529,000 page Likes on Facebook, and almost 10,000 new followers on Twitter.

The Complainant owns trademark registrations for its BALMAIN mark in multiple jurisdictions, including the following trademark registrations in China, where the Respondent is located: Registration Nos. 1130322 (registered on November 28, 1997), 1130633 (registered on November 28, 1997), 1134329 (registered on December 14, 1997), 1137493 (registered on December 21, 1997), 1138097 (registered on December 28, 1997), 1138226 (registered on December 28, 1997), 1138823 (registered on December 28, 1997), 1154819 (registered on February 28, 1998), and 11637403 (registered on September 21, 2001).

The Respondent registered the disputed domain name on April 26, 2017. The disputed domain name does not resolve to an active website.

On May 11, 2017, the Complainant sent a letter to the Respondent, requesting transfer of the disputed domain name. On May 17, 2017, the Respondent responded by email, stating that the Respondent has legitimate interests in the disputed domain name but inviting the Complainant to make an offer of compensation in exchange for transfer. In subsequent correspondence between the Parties, the Respondent declined to explain its claim to have legitimate interests in the disputed domain name and later offered to transfer the disputed domain name in exchange for payment in the amount of USD 600.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's trademark. The Complainant is the owner of the BALMAIN mark and is the owner of various trademark registrations for the mark. When comparing the disputed domain name to the Complainant's trademark, the relevant comparison is made between only the second-level portion of the disputed domain name and the Complainant's trademark. Consideration should not be given to the top-level domain ("TLD") ".shop". The disputed domain name contains the BALMAIN mark in its entirety and, therefore, should be considered identical and confusingly similar to the Complainant's BALMAIN mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant's trademark registrations constitute prima facie evidence of the validity of the term BALMAIN as a trademark, of the Complainant's ownership of the trademark, and of the Complainant's exclusive right to use the BALMAIN trademark in commerce in connection with the goods and services identified in the registrations. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not granted the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The Respondent has failed to make use of the disputed domain name's website and has not demonstrated any attempt to make legitimate use of the disputed domain name. These facts indicate that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant and its BALMAIN trademark are known internationally. The Complainant has marketed and sold its goods and services using the BALMAIN trademark since 1945, well before the Respondent's registration of the disputed domain name. By registering a domain name that incorporates the BALMAIN trademark in its entirety, the Respondent has created a domain name that is confusingly similar to the Complainant's trademark as well as its <balmain.com> domain name. As such, the Respondent has demonstrated knowledge of and familiarity with the Complainant's brand and business. There is no plausible situation in which the Respondent would have been unaware of the Complainant's brands at the time the Respondent registered the disputed domain name. Because the BALMAIN trademark is so closely linked and associated with the Complainant, the Respondent's use of the disputed domain name suggests opportunistic bad faith. Further, the Complainant's trademark was submitted to the Trademark Clearinghouse, the Respondent should have received direct, actual notice of the Complainant's rights in the BALMAIN trademark at the time of registration. Thus, it is inconceivable that the Respondent was unaware of the Complainant's trademark when the Respondent registered the disputed domain name. The Respondent's registration of the disputed domain name containing a well-known trademark when the Respondent knew or should have known of the Complainant and its BALMAIN trademark constitutes bad faith per se.

The disputed domain name is being used in bad faith, even though it does not resolve to an active website. "Use" in this context does not require a positive act on the part of the Respondent. Use in bad faith can be determined by the totality of the circumstances. The disputed domain name is confusingly similar to the Complainant's mark and the Respondent has made no use of the disputed domain name. There is no plausible good-faith reason for the Respondent to have registered the disputed domain name. The only use for it would be to cause confusion among Internet users. Accordingly, any use of the disputed domain name would be in bad faith. That the Respondent has been a party to other UDRP proceedings that resulted in the transfer of a disputed domain name from the Respondent to the complaining party indicates a pattern of bad faith. The Respondent offered to sell the disputed domain name to the Complainant for USD 600, value in excess of the Respondent's out-of-pocket expenses, further evidence of bad faith. Under these circumstances, the Respondent's holding if the disputed domain name constitutes bad faith use.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. Regardless, the Respondent's conduct suggests that the Respondent understands English. The disputed domain name consists of Latin characters with no meaning in Chinese. A reverse WhoIs search indicates that the Respondent's email address is the contact email address for several other domain names comprising English terms, including, for example, <21stcenturyfox.xyz>, <bandaid.club>, <burtsbees.biz>, <invite.news>, and <pampers.website>, among dozens of others. The Respondent has been involved in prior domain name disputes with UDRP decisions issued in English. See, e.g., Natixis v. Nashan, WIPO Case No. D2017-1227; Sanofi v. nashan, WIPO Case No. D2017-1191; Yves Saint Laurent v. Nashan, WIPO Case No. D2017-1096. Although in the Parties' correspondence the Respondent's communications were written in Chinese, it is clear from their content that the Respondent understood the communications from the Complainant, which were written in English. Additionally, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed.

6.2 Substantive Discussion

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the BALMAIN trademark. The Complainant has established that it is the registered owner of trademark registrations of the BALMAIN trademark, including several in China.

The disputed domain name comprises the term "balmain" and the TLD ".shop". As a technical part of a domain name, the ".shop" TLD is not relevant in determining confusing similarity. Alienware Corporation. v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. What remains is identical to the Complainant's BALMAIN trademark.

Accordingly, the disputed domain name is identical to the Complainant's trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use its BALMAIN trademark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainant in any way. Additionally, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services, nor is there any evidence in the record demonstrating preparations to do so. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Indeed, the Respondent has failed to make any use of the disputed domain name.

The Complainant's BALMAIN mark is long-established and widely known around the world. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the BALMAIN trademark may be imputed to the Respondent at the time of registration of the disputed domain name. Because the name "Balmain" bears no obvious relationship to the Respondent, "the inevitable conclusion is that [this word is] not one that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant." See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.

In correspondence with the Complainant, the Respondent states that the Respondent has rights and legitimate interests in the disputed domain name. However, the Respondent declined to explain how, and there is no evidence in the record to indicate that, the Respondent has any rights or legitimate interests in respect of the disputed domain name. Accordingly, the Panel finds the Respondent's claim to be merely a pretext.

The Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed 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; or

(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The Respondent must have been aware of the Complainant and its BALMAIN trademark at the time of registration of the disputed domain name. The Complainant has used the BALMAIN mark in commerce for more than a half-century prior to the registration of the disputed domain name and the mark has come to be well known around the world. Additionally, the Complainant owns trademark registrations in several jurisdictions, including in China where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for "balmain" would have yielded many obvious references to the Complainant. Additionally, the BALMAIN trademark is registered with the Trademark Clearinghouse; therefore, the Respondent should have received a warning notice when registering the disputed domain name. It is inconceivable that the Respondent was not aware of the Complainant and the BALMAIN trademark at the time of registration. S­ee Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, WIPO Case No. D2014-1040. Bad faith registration can be inferred from a respondent's registration of a domain name incorporating a well-known mark of which the respondent was, or must have been, aware without any evident right to do so. See Hurriyet Gazetecilik ve Matbaacilik Anonim Sirketi v. Onuno L.L.C., WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059.

The disputed domain name does not resolve to an active website; however, this does not obviate a finding of use in bad faith. In light of the totality of circumstances in this case, the Respondent is using the disputed domain name in bad faith. See Telstra Corporation Ltd. V. Nuclear Marshmallows, WIPO Case No. D2000-0003. The disputed domain name is identical to the Complainant's extensively used and well-known mark, and the Respondent must have been aware that Internet users would be led to believe that the disputed domain name would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, supra. The Respondent has previously been found to have violated the Policy by registering domain names confusingly similar to other third-party trademarks. See, e.g., Natixis v. Nashan, supra; Sanofi v. nashan, supra; Yves Saint Laurent v. Nashan, supra. A reverse WhoIs search reveals that the Respondent's email address is also associated with many other domain names incorporating well-known marks owned by third parties in a range of industries, including, e.g., <21stcenturyfox.xyz>, <armani.site>, <honda.site>, <pampers.website>, <rolex.kim>, <thomsonreuters.xyz>, and <time-warner.club>. This evidences the Respondent's pattern of abusive registrations. Moreover, it is not possible to conceive of any legitimate use of the disputed domain name; any use would be use in bad faith. Finally, the Respondent offered to sell the disputed domain name to the Complaint for a sum greater than the out-of-pocket costs paid by the Respondent to register the disputed domain name and evaded the Complainant's requests to amicably settle the matter by claiming rights and legitimate interests that it could not or would not substantiate. Under these circumstances, the Respondent's conduct with regard to the disputed domain name amounts to use in bad faith. See Telstra Corporation Ltd. V. Nuclear Marshmallows, supra.

Accordingly, the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

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 <balmain.shop> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: September 26, 2017

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