Balenciaga SA v. Intdomain / Apexed
Claim Number: FA1707001738535
Complainant is Balenciaga SA (“Complainant”), represented by Mathieu Lamotte of INSIDERS, France. Respondent is Intdomain / Apexed (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <balenciaga.biz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2017; the Forum received payment on July 17, 2017.
On July 6, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <balenciaga.biz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@balenciaga.biz. Also on July 19, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds a trademark registration for the BALENCIAGA mark, registered with the Office for Harmonization in the Internal Market (“OHIM”) (Registry No. 011,865,805, registered Sept. 19, 2013), evincing rights in the mark. Respondent’s <balenciaga.biz> is identical to the mark because the mark is included entirely in the domain name, with the “.biz” generic top-level domain (“gTLD”) appended thereto.
Respondent has no rights or legitimate interests in respect of the domain name because Respondent is not affiliated with Complainant in any way and was not authorized to use the BALENCIAGA mark, and Respondent is not commonly known by <balenciaga.biz>.
Respondent registered and used <balenciaga.biz> in bad faith. Respondent registered the domain name for the sole purpose of reselling it to Complainant’s competitors in excess of out-of-pocket costs. Respondent profits from its parked use of the domain name under Policy ¶ 4(b)(iv). Lastly, Respondent had actual/constructive knowledge of Complainant when registering and using the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Balenciaga SA, of Paris France, owns domestic and international registrations for the mark BALENCIAGA. Complainant has continuously used its mark since at least as early as 2013 in connection with its provision of goods such as cosmetics, leather goods, and clothing.
Respondent is Intdomain / Apexed, of Burgenland, Austria. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that <balenciaga.biz> was registered on or about December 2, 2014.
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 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant holds a trademark registration for the BALENCIAGA mark, registered with the OHIM (Registry No. 011,865,805, registered Sept. 19, 2013), and argues that this registration evinces rights in the mark. Registrations with OHIM have been seen to adequately represent rights. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum Feb. 18, 2015) (“The Panel concludes that Complainant’s valid registration of LYCA with OHIM sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has prima facie established rights in the BALENCIAGA mark under Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <balenciaga.biz> is identical to the mark because the mark is included entirely in the domain name, with the “.biz” gTLD suffix added. Past panels have found such additions inconsequential in comparing a domain name with a mark. See Riverbed Technology, Inc. v. Intdomain / Apexed, FA 1583571 (Forum Nov. 10, 2014) (finding that Respondent’s <riverbed.biz> domain name is identical to Complainant’s RIVERBED mark pursuant to Policy ¶ 4(a)(i).). The Panel here finds that <balenciaga.biz> is identical to the BALENCIAGA mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant claims that Respondent has no rights or legitimate interests in respect of the domain name because Respondent is not affiliated with Complainant in any way and was not authorized to use the BALENCIAGA mark, and Respondent is not commonly known by <balenciaga.biz>. A respondent may be found to not be commonly known by a domain name where the WHOIS does not indicate as much, and where a complainant refutes any connection with such a respondent. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). In the instant case, the WHOIS lists “Intdomain / Apexed” as registrant of record and Respondent has failed to contest Complainant’s assertions. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant notes that the resolving website is parked. Parking has been found to be inadequate support for a respondent’s rights and legitimate interests. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel notes Complainant’s evidence that resolving website includes the following hyperlinks: “Balenciaga,” “Balenciaga Sneakers,” “Concerts & Music Festivals,” “Immigration Policy & Border Issues,” “Import & Export,” “Intelligence & Counterterrorism,” “Legal Jobs,” “Lots & Land,” “Martial Arts Equipment,” and “PDAs & Handhelds.” The Panel here finds that the page appears to be parked, that Respondent is indeed responsible for the content, and presumably profits from Internet users clicking the foregoing links, and that such use does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Furthermore, the Panel notes that Complainant has included an email sent by Respondent showing a number of entities copied, which solicits the entities by including a general offer for the sale of the disputed domain name. General offers for sale may weigh against rights and legitimate interests. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). The Panel here finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent registered and used <balenciaga.biz> in bad faith. First, Complainant urges that Respondent registered the domain name for the sole purpose of reselling it to Complainant’s competitors in excess of out-of-pocket costs. Invitations for an offer may suggest an intent to engage in conduct proscribed by Policy ¶ 4(b)(i). See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”). Here, Respondent emailed several entities (reportedly competitors of Complainant), stating, “We are the manager of international domain name: www.balenciaga.biz. If you want to buy it, please let me know. The international five largest domain name suffix (sic): com/net/org/biz/info, and the most of companies had generally protected those five suffix.” The Panel here finds that Respondent clearly indicated through email that it acquired the domain name for the purpose of selling it for an excess of out-of-pocket costs, given its inherent value as a “.biz”-formative domain name, and therefore engaged in Policy ¶ 4(b)(i) bad faith registration and use.
Complainant further argues that Respondent profits from its parked use of the domain name under Policy ¶ 4(b)(iv). Parking a domain name may indicate bad faith under this prong, even where a respondent has no control over the domain name’s content. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel here again notes Complainant’s evidence of Respondent’s unrelated and related hyperlinks on the resolving website of the disputed domain name. Accordingly, the Panel finds that Respondent has engaged in registration and use intended to confuse Internet users for the purpose of commercially gaining through click-through fees—as proscribed by Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <balenciaga.biz> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 24, 2017
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