BALENCIAGA SA v. Song LiHong
Claim Number: FA1807001797466
Complainant is BALENCIAGA SA (“Complainant”), represented by Mathieu Lamotte of INSIDERS, France. Respondent is Song LiHong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <balenciaga-sneakers.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2018; the Forum received payment on July 19, 2018.
On July 24, 2018, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <balenciaga-sneakers.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the name. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., Ltd. 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 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2018 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-sneakers.com. Also on July 26, 2018, 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 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese (Simplified) language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese (Simplified) language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese (Simplified) language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “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 ability to articulate the arguments for the case.”).
Complainant contends that Respondent is perfectly capable of understanding English since the entire website under the disputed domain name is in English, and additionally, it targets, among others, English- speaking clientele, as shown on the website of the disputed domain name.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant, BALENCIAGA SA, is a well-known company that is present in over 90 countries all over the world. Complainant uses its BALENCIAGA mark in connection with its products that are available for purchase at physical boutiques and on its website, <balenciaga.com>. Complainant has rights in the BALENCIAGA mark based on its registration with France’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 397,506, registered May 4, 1973) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 598,321, registered June 10, 1992). See Compl. Annexes 5 & 6. Respondent’s <balenciaga-sneakers.com> domain name is confusingly similar to Complainant’s BALENCIAGA mark as it incorporates the mark in its entirety and is differentiated only by the addition of a hyphen and the generic and/or descriptive term “sneakers.”
ii) Respondent does not have rights or legitimate interests in the <balenciaga-sneakers.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its BALENCIAGA mark in any fashion and is not commonly known by the disputed domain name.
iii) Respondent registered and is using the <balenciaga-sneakers.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website by passing off as Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name <balenciaga-sneakers.com> was registered on February 1, 2018.
2. Complainant established rights in the BALENCIAGA mark based upon registration of the mark (e.g., Reg. No. 397,506, registered May 4, 1973) with the NIIP (France’s National Institute of Industrial Property) and registration of the mark (e.g. Reg. No. 598,321, registered June 10, 1992) with the SAIC (China’s State Administration for Industry and Commerce).
3. The disputed domain name’s resolving webpage displays Complainant’s mark and appears to be affiliated with Complainant.
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 claims rights in the BALENCIAGA mark based upon registration of the mark with the NIIP and the SAIC. Registration of a mark with multiple governmental authorities, including the NIIP and SAIC, is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Les Echos v. Zhao Zhong Xian, FA 1716753 (Forum Mar. 30, 2017) (concluding rights in the LES ECHO mark exist because “Panels have established that registration of a mark with the NIIP sufficiently recognizes a registrant’s rights in a mark.”); see also Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (“Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”). Complainant provides a copy of its NIIP (e.g., Reg. No. 397,506, registered May 4, 1973) and SAIC (e.g. Reg. No. 598,321, registered June 10, 1992) registrations for the BALENCIAGA mark. See Compl. Annexes 5 & 6. Therefore, the Panel holds that Complainant’s registration of the BALENCIAGA mark with the NIIP and/or SAIC is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <balenciaga-sneakers.com> domain name is confusingly similar to Complainant’s BALENCIAGA mark as it incorporates the mark in its entirety and is differentiated only by the addition of a hyphen and the generic and/or descriptive term “sneakers.” Although not mentioned in Complainant’s contentions, a “.com” generic top-level domain name (“gTLD”) is also added to the mark. Additions to a complainant’s mark such as a hyphen, generic and/or descriptive term, and a gTLD do no negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Therefore, the Panel determines the <balenciaga-sneakers.com> domain name is confusingly similar to the BALENCIAGA mark per Policy ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <balenciaga-sneakers.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <balenciaga-sneakers.com> domain name lists the registrant as “Song LiHong,” and no information on the record indicates that Respondent is authorized or licensed to use the BALENCIAGA mark. See Compl. Annex 4. The Panel therefore finds that Respondent has not been commonly known by the <balenciaga-sneakers.com> domain name under Policy ¶ 4(c)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims Respondent registered and uses the <balenciaga-sneakers.com> domain name in bad faith. Specifically, Complainant argues Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website by passing off as Complainant. Use of a domain name to attempt to attract, for commercial gain, users to a disputed domain name’s website by passing off as Complainant can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving webpage which displays Complainant’s mark and appears to be affiliated with Complainant. See Amend. Compl. Annex 9. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <balenciaga-sneakers.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 22, 2018
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