WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pierre Balmain S.A. v. Zhong Sheng

Case No. D2016-1795

1. The Parties

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

The Respondent is Zhong Sheng of Tian Jin, China.

2. The Domain Names and Registrar

The disputed domain names <balmainoutlet.top> and <balmain.site> are 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 September 2, 2016. On September 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 8, 2016, 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 September 14, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on September 15, 2016. 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 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2016.

The Center appointed Jonathan Agmon as the sole panelist in this matter on October 14, 2016. 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 French fashion designer Pierre Balmain. The Complainant offers outerwear options, dresses and skirts, tops, jeans and trousers, shoes, bags, accessories, and fragrances. The Complainant has a global presence including store locations in over 40 countries worldwide with boutique locations in some of the largest cities in the world including: Paris, London, Shanghai, Beijing and Dubai. In the United States of America, the Complainant’s products are sold in over 33 locations across 17 cities. In France, the Complainant has 35 points of sale, including department stores. The Complainant maintains a strong Internet and retail presence through its primary website “www.balmain.com”.

The Complainant is the owner of multiple trademark registrations for the mark BALMAIN around the world. For example: Chinese Trademark Registration No. 1130633 – BALMAIN registered on November 28, 1997;

Chinese Trademark Registration No. 1130322 – BALMAIN registered on November 28, 1997; International trademark Registration No. 551195 – BALMAIN registered on March 8, 1990 and more.

The disputed domain name <balmainoutlet.top> was registered on March 11, 2016, by the Respondent.

The disputed domain name <balmain.site> was registered on June 15, 2016, by the Respondent.

Both disputed domain names currently resolve to inactive webpages.

5. Parties’ Contentions

A. Complainant

The Complainant and its BALMAIN trademark are known internationally, with trademark registrations across numerous countries.

The Complainant argues that the disputed domain name <balmain.site> contains the Complainant’s BALMAIN trademark in its entirety and is identical to the Complainant’s BALMAIN trademark.

The Complainant argues that the disputed domain name <balmainoutlet.top> contains the Complainant’s BALMAIN trademark in its entirety and in addition the English word “outlet” which is associated with the clothing and fashion industry and is therefore substantially identical to the Complainant’s BALMAIN trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant further argues that the Respondent is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not generally known by the disputed domain names, which is evidence of a lack of rights or legitimate interests.

The Complainant further argues that the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name <balmain.site>, where the Respondent offers and attempts to sell the products of the Complainant’s competitors, which directly compete with the Complainant’s own offerings.

The Complainant further argues that the Respondent is using the disputed domain name <balmainoutlet.top> to redirect Internet users to a website that resolves to a blank page and lacks content.

The Complainant further argues that the Respondent has registered and is using the disputed domain names in bad faith.

The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent registered the disputed domain names in an attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the BALMAIN trademark and products at the time it registered the disputed domain names.

The Complainant further argues that by using the disputed domain name <balmain.site>, the Respondent creates a likelihood of confusion with the Complainant and its BALMAIN trademarks by using a confusingly similar domain name to host a website featuring fashion related articles, product offers and links to the Complainant’s competitors, with the Respondent then attempting to profit from such confusion by promoting competing goods.

The Complainant further argues that the disputed domain name <balmainoutlet.top> currently resolves to an inactive site and this passive holding of a domain name is also an indication of bad faith registration and use by the Respondent.

The Complainant further contents that the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses and this demonstrates that the Respondent is engaging in a pattern of cybersquatting/typo-squatting, which also serves as additional evidence of bad faith registration and use of the disputed domain names.

The Complainant further contents that the Respondent did not respond to the Complainant’s cease-and-desist letters and this is also an additional evidence of bad faith registration and use of the disputed domain names.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreements for the disputed domain names is Chinese, as confirmed by the Registrar in its verification email to the Center of September 8, 2016.

The Complainant requested that the language of the proceeding be English.

The Complainant, a French based company, claims that it does not communicate in Chinese and submitting all documents in Chinese would unfairly disadvantage and burden the Complainant and delay the proceeding and adjudication of this matter.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006‑0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain names consist of Latin letters, rather than Chinese letters;

(ii) The disputed domain name <balmainoutlet.top> includes the English term “outlet”;

(iii) In accordance to the Complainant’s evidence the disputed domain name <balmain.site> resolved to a site displaying contents in English (Annex 5 of the Complaint);

(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel rules that English be the language of the proceeding.

6.2 Substantive Matters

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark BALMAIN around the world. For example: Chinese Trademark Registration No. 1130633 – BALMAIN registered on November 28, 1997; Chinese Trademark Registration No. 1130322 – BALMAIN registered on November 28, 1997; International trademark Registrations No. 551195 – BALMAIN registered on March 8, 1990 and more.

The disputed domain name <balmain.site> reproduces entirely the Complainant’s BALMAIN trademark with the addition of the generic Top-Level Domain (“gTLD”) “.site”.

The disputed domain name <balmainoutlet.top> reproduces entirely the Complainant’s BALMAIN trademark with the addition term “outlet” and the addition of the gTLD “.top”.

The addition of the term “outlet” and the gTLD suffix “.top” or the gTLD suffix “.site” to the Complainant’s BALMAIN registered trademark does not serve to distinguish the disputed domain names from the Complainant’s trademark and is disregarded when comparing this disputed domain names with the Complainant’s BALMAIN trademark. See Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014‑0080.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the BALMAIN trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.

The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its BALMAIN trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant used the BALMAIN trademark as early as 1945 and has owned a registration for the BALMAIN trademark dozens of years before the registrations of the disputed domain names. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered so long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009‑0735).

The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain names.

The disputed domain names are identical or confusingly similar to the Complainant’s well-known trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095.

To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

In accordance to the Panel’s examination, both of the disputed domain names are currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.

The Panel notes, that in accordance with the Complainant’s evidence, the Respondent has operated a website under the dispute domain name <balmain.site>. This website provided posts about fashion items and links to other websites selling competing goods with those of the Complainant. The Respondent did not respond to the Complaint and did not provide any reasoning for its behavior. Thus, the Panel finds that the Respondent was seeking to create a false association with the Complainant and clearly intended to attract Internet users to its website and capitalize on the goodwill of the Complainant’s BALMAIN trademarks for its own commercial gain.

In addition, the Respondent failed to respond to the cease and desist letters issued to it by the Complainant. Such behavior is yet another indication of bad faith registration and use of the disputed domain names.

Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant’s trademark in the disputed domain names, the current passive holding of the disputed domain names, the evidence provided by the Complainant, the Respondent’s failure to the reply to the cease-and-desist letters and to the Complaint, the Panel draws the inference that the disputed domain names were registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 names <balmainoutlet.top> and <balmain.site> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: October 28, 2016