National Arbitration Forum

DECISION

Givenchy S. A. v. International Domain Registry

Claim Number: FA0801001130485

PARTIES

Complainant is Givenchy S.A. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is International Domain Registry (“Respondent”), New South Wales, Australia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <givenchydesign.com>, registered with GoDaddy.com, Inc.

PANEL

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.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 15, 2008.

On January 15, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <givenchydesign.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 7, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@givenchydesign.com by e-mail.

A timely Response was received on February 7, 2008. However, the Response was not received in hard copy and thus is deficient under ICANN Rule 5.

A timely Additional Submission was received from Complainant on February 12, 2008 in accordance with the Forum’s Supplemental Rule 7.

On February 15, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends, among other things, that:

Complainant is an internationally recognized producer of high-fashion apparel, accessories, and quality perfume.

In association with its activities, Complainant owns rights in a variety of trademarks registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 831095, issued on June 27, 1967), as well as in other countries, notably Australia (Trade Mark 209143, issued on March 31, 1967).

Complainant has not authorized Respondent to use the trademark GIVENCHY or to seek the registration of any domain names incorporating the trademark.

The domain name is confusingly similar to the trademark because it incorporates the trademark in its entirety with only the addition of the generic word “design.”

Respondent uses the domain name to link to a commercial website that offers services not approved or licensed by the Complainant, and Respondent profits from this link by means of click-through-fees.

Respondent is attempting, for commercial gain, to attract Internet users who may be confused as to the source of the disputed domain name or Complainant’s possible affiliation with the corresponding website.

Respondent has no legitimate right to or interest in the disputed domain name.

Respondent’s use of the domain name does not constitute a bona fide offering of goods or services.

Respondent is not and has not been commonly known by the domain name.

Previously, the domain name was used by Respondent to resolve to a parked website that provided sponsored links to sites offering for sale the products of Complainant’s competitors.

Respondent now directs the domain name to a site offering unrelated services.

Respondent’s registration and use of the domain name is in bad faith.

The GIVENCHY trademark is so internationally distinctive and famous that Respondent must have had actual, or at least constructive, knowledge of the trademark prior to the domain name’s registration.

B. Respondent

Respondent contends, among other things, that:

“[W]e have a client Mr Givenchy who has a registered business here in Australia in that name. He wants to have this as his web site name as he is in interior design.”

C. Additional Submissions

Complainant’s Additional Submission asserts, inter alia, that:

Although Respondent asserts that he has a “client” named “Mr. Givenchy” with a “registered business” in interior design, it has failed to adduce any evidence in support of these contentions.

The disputed domain name is not registered to any purported “Mr. Givenchy.”

Respondent has been demonstrated to have engaged in a practice of registering domain names incorporating the generic word “design” and the names of famous designers such as YVES ST LAURENT and PIERRE CARDIN, among others.

Australian business records evidence no business associated with Respondent operating under the name GIVENCHY.

Respondent is a cyber-squatter, which appears from public records to be the registrant of more than 1,000 domain names.

FINDINGS

(1) the domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights;

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

(3) the same domain name was registered and is being used by Respondent in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Preliminary Procedural Issue: Respondent’s Deficient Response

We first take note of the fact that, although Respondent’s submission was received in electronic form by the Response deadline, it was not received in hard copy. Accordingly, it is deficient under ICANN Rule 5. Therefore we have discretion both as to whether to accept this submission and as to the weight that might be given to it. In our judgment, consideration of the Response, notwithstanding its evident deficiency, will best serve the interests of justice. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time:

[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight.

See also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (deciding to consider a respondent’s response even though it was deficient because it provided useful information to the panel in making its decision).

Identical and/or Confusingly Similar

Our first substantive inquiry must be as to whether Complainant has rights in the GIVENCHY mark sufficient for purposes of the Policy. On this point, Complainant asserts rights in the mark through its registration with the United States Patent and Trademark Office (Reg. No. 831,095 issued June 27, 1967) and with IP Australia (Reg. No. 209,143 issued March 31, 1967). These registrations sufficiently establish Complainant’s rights in the GIVENCHY mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

We next examine the question of confusing similarity as between the mark and competing domain name. Complainant argues that the contested domain name is confusingly similar to its GIVENCHY mark because the domain name simply adds the generic term “design” and the generic top-level domain “.com” to the mark. Previous panels have found, and we agree, that the addition of a generic term to a mark does not render a disputed domain name distinct from the mark for purposes of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the identical mark of a complainant combined with a generic term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combined a complainant’s mark with a generic term that had an obvious relationship to that complainant’s business). Likewise, inasmuch as a top-level domain is required of all domain names, Respondent’s domain name is confusingly similar to Complainant’s GIVENCHY mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):

[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .

We are constrained to find, therefore, that Complainant has met its evidentiary burden under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Under this head, Complainant must first make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in its domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

Complainant’s submissions meet its initial burden. It falls then to Respondent to assume the obligation of demonstrating that, Complainant’s submissions notwithstanding, Respondent has such rights to or interests in its domain name to meet the requirements of the Policy. This we do by reference to the guidance offered in Policy ¶ 4(c), which has three subparts.

We begin with the observation that Complainant contends that Respondent is not commonly known by the <givenchydesign.com> domain name. Respondent does not deny this. We also see that there is nothing in Respondent’s WHOIS information or any other evidence in the record to suggest otherwise. Moreover, Complainant asserts that it has never given Respondent permission to use its GIVENCHY mark. This combination of factors permits us to conclude that Respondent is not commonly known by the <givenchydesign.com> domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use the trademarked name).

Complainant also contends that Respondent’s domain name previously resolved to a website featuring links to fashion-related websites in competition with the business of Complainant, and now resolves to a website displaying links to third-party websites unrelated to Complainant’s business. Complainant further asserts, and Respondent does not deny, that Respondent profits when Internet users click on these links. We conclude that neither Respondent’s previous use, nor its current use, of the <givenchydesign.com> domain name constitutes 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

See also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which were tied to that complainant’s competitors, was not a bona fide offering of goods or services).

Finally, Respondent asserts that it intends to use the <givenchydesign.com> domain name as an interior design website for a client. However, as Complainant points out, Respondent provides no support for this position. We are therefore forced to conclude that Respondent has not shown demonstrable preparations to use the disputed domain name, which further indicates a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that a respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that a respondent did not establish rights or legitimate interests in a domain name where that respondent said that it had a business plan for a website at the time of registration but did not furnish any evidence in support of this claim).

We thus find that Complainant has met its evidentiary burden under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

On the facts before us, there is no dispute that Respondent’s previous and current uses of the <givenchydesign.com> domain name indicate that Respondent is attempting to attract, for commercial gain, Internet users who may be confused as to the source of the disputed domain name or Complainant’s affiliation with the corresponding website. This is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):

Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.

Furthermore, Complainant argues, and Respondent does not deny, that Respondent had actual or constructive notice of Complainant’s rights in the GIVENCHY mark when it registered the <givenchydesgin.com> domain name, owing to the longstanding and worldwide fame of the mark. This is a further indication of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):

[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.