WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain S.A. v. Wu Yuan Quan
Case No. D2017-2350
1. The Parties
The Complainant is Pierre Balmain S.A. of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Wu Yuan Quan of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <balmain.top> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2017. On November 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 December 6, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On December 7, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not reply 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, and the proceedings commenced on December 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on January 23, 2018. 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 is a French luxury fashion house founded in 1945 after the eponymous designer, Pierre Balmain. The Complainant operates in over forty countries around the world with monobrand boutiques in major cities including Beijing, Hangzhou and Shanghai. In 2015, the Complainant's net sales were in excess of EUR 58 million.
The Complainant holds registrations of the BALMAIN trade mark in several jurisdictions around the world, including Chinese Registration No. 1130633, registered on November 28, 1997, Chinese Registration No. 1130322, registered on November 28, 1997, and International Registration No. 758712, registered on 10 April 10, 2001.
The Complainant is the registrant of the domain name <balmain.com> registered on March 17, 1997.
The disputed domain name was registered by the Respondent on December 19, 2014. The disputed domain name is currently being offered for sale. Previously, the disputed domain name's website redirected users to a third party website with content unrelated to the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant contends that the various trade mark registrations confer upon it exclusive rights to BALMAIN as a trade mark. The disputed domain name contains the Complainant's BALMAIN trade mark in its entirety, thus resulting in a domain name identical to the Complainant's trade mark.
The Complainant further contends that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Respondent is not commonly known by the disputed domain name. The disputed domain name previously resolved to a third party website containing malware. Currently, the disputed domain name is being offered for sale. The Respondent registered the disputed domain name at a date significantly later than the date of first use and registration of the Complainant's BALMAIN trade mark as well as the registration date of its <balmain.com> domain name. Thus, the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant finally sets out the reasons to support its contention that the Respondent registered and used the Domain Name in bad faith. The composition of the disputed domain name lends the Complainant to believe that the Respondent registered the domain name with a view to specifically targeting the Complainant. Further, the Respondent knew, or should have known, of the existence of the Complainant's trade mark registrations and domain names. The Complainant is a famous French fashion house in existence since 1945 with an international presence. The Complainant operates stores in three cities of China, the country in which the Respondent resides. The disputed domain name resolves to a website that attempts to infect users' computers with viruses which is another indication of bad faith. In addition, the Respondent holds registrations for several other domain names that misappropriate the trade marks of well‑known brands demonstrating a pattern of cybersquatting. To this end, the Respondent is currently offering to sell the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. Lastly, the Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party's submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) The Complainant is unable to communicate in Chinese and having to provide translations would unfairly disadvantage and burden the Complainant and delay the proceeding;
(b) The disputed domain name is comprised of Latin characters;
(c) The disputed domain name resolves to a website which features English language content;
(d) The term "Balmain" does not carry any specific meaning in the Chinese language;
(e) The Complainant previously sent a cease-and-desist letter to the Respondent who had ample time to respond and request communications continue in Chinese. No response or request was received.
The Complainant cites two UDRP decisions in which a panel has allowed the language of the proceeding to be in English rather than the language of the Registration Agreement.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company from France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The disputed domain name previously redirected users to a website with English language content which indicates some familiarity with the English language;
(d) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese regarding the language of the proceeding, but the Respondent did not reply; and
(e) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
As one panel put it in the case Zappos.com, Inc. v. Zufu aka Huahaotrade,
WIPO Case No. D2008-1191 (<shopzappos.com>):
"…a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel."
6.1. Analysis of the Complaint
A. Identical or Confusingly Similar
The Complainant submitted extracts of the BALMAIN trade mark registrations from the official public records of the Trade Mark Office of the State Administration for Industry & Commerce of the People's Republic of China and the World Intellectual Property Organization. The registrations cover a broad range of goods and services, including clothing, jewelry, toys, fabrics and cosmetics.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the BALMAIN trade mark.
The disputed domain name replicates the Complainant's BALMAIN trade mark in its entirety. The addition of ".top", a generic Top-Level Domain ("gTLD"), "is a technical requirement of every domain name registration". Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise,
WIPO Case No. D2016-2087, (<grouponers.xyz>).
Therefore, the Panel finds that the disputed domain name is identical to the Complainant's BALMAIN
trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not sponsored or affiliated with the Complainant nor has the Respondent been authorized to use the BALMAIN trade mark or register the disputed domain name. The Complainant further contends that the Respondent is not "commonly known" by the name "Balmain", but is an individual whose name bears no resemblance to the disputed domain name.
In circumstances where the Complainant possesses exclusive rights to the BALMAIN trade mark whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,
WIPO Case No. D2002-0683.
The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, nor of any other circumstances giving rise to rights or legitimate interests in the disputed domain name. In fact, the dispute domain name used to point to a third party website containing malware and content unrelated to the Complainant. Currently, the disputed domain name is being offered for sale in excess of the Respondent's out of pocket expenses. Such conduct by the Respondent does not represent a bona fide offering of goods or services or support a recognition of a legitimate claim to the disputed domain name.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's BALMAIN trade mark has been widely registered and used around the world, including in China. The disputed domain name was registered well after the first registration of the Complainant's BALMAIN trade mark and <balmain.com> domain name.
The Respondent is a Chinese individual. The term "Balmain" has no meaning in the Chinese language and would be considered distinctive in this territory. By registering a domain name entirety composed of the term "Balmain", the Respondent cannot credibly claim not to have been aware of the Complainant's trade mark.
Another pertinent consideration is the current status of the disputed domain name. The Respondent is presently offering to sell the disputed domain name. While registering a domain name would not in itself support a finding of bad faith, the Panel is skeptical as to why the Respondent would chose to register a domain name which is identical to the Complainant's distinctive BALMAIN trade mark. The Respondent appears to be engaged in a pattern of abusive registrations having registered several domain names comprising well-known global brands. The Panel notes that in the past, the website redirected users to a website that contained a virus alert. Such conduct reinforces a finding of bad faith. Thus, the specific facts of this case strongly indicate that the Respondent registered the disputed domain name primarily to sell it to the Complainant for valuable consideration in excess of the Respondent's costs.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the earlier redirection and by now offering to sell the domain name at an inflated price, the Respondent has registered and used the disputed domain name in bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) 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 name <balmain.top> be transferred to the Complainant.
Rachel Tan
Sole Panelist
Date: February 2, 2018
