BALENCIAGA SA v. xinqian Tyndall
Claim Number: FA1807001797465
Complainant is BALENCIAGA SA (“Complainant”), represented by Joanna Joanna Kalnik of INSIDERS, France. Respondent is xinqian Tyndall (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <balenciagatriples.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2018; the Forum received payment on July 19, 2018.
On July 19, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <balenciagatriples.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@balenciagatriples.com. Also on July 19, 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 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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’s contentions are reproduced verbatim:
The word BALENCIAGA is registered in several different goods classes (including class 25) as an international trademark (registration number: 397506). The trademark BALENCIAGA is also registered in China (the country where the Respondent resides, according to the whois information) under the number 598321 (clothes, including shoes). The Complainant, BALENCIAGA SA, is the rights holder for all of the above.
The domain name contains in its entirety the word BALENCIAGA, identical to the registered BALENCIAGA word marks. BALENCIAGA is followed by “triples” which is the name of one of BALENCIAGA’s sneakers models (“Triple S”). This simple addition does not allow a clear distinction between the registered trademark and the domain name in question, but merely indicates the type of products presented on the website and creates a strong likelihood of confusion.
The Respondent is not affiliated with the Complainant in any way and was not authorized by BALENCIAGA SA to use the registered BALENCIAGA trademark. The Respondent has no legitimate interest in the domain name in question, since the whois records show no business name that may justify an interest in the <balenciagatriples.com> domain. The Respondent is also not an authorized BALENCIAGA retailer, nor is he commonly known by the disputed domain name.
BALENCIAGA SA is a well-known company existing since June 25, 1937, present in over 90 countries all over the world, where it promotes and offers for sale its products under the trademark BALENCIAGA in both physical boutiques and on the website balenciaga.com.
The domain name in question has been both acquired and is being used in bad faith. The Respondent knows BALENCIAGA brand and its products. The website is designed to create an appearance of connection with BALENCIAGA, therefore the Respondent intentionally attracts potential BALENCIAGA clients by creating a likelihood of confusion with the brand BALENCIAGA: the websites display BALENCIAGA products and logo (as favicon), and BALENCIAGA clients are aware that the brand’s products can be bought online. The Respondent has therefore put himself in a perfect position to exploit BALENCIAGA’s popularity and renown for his own gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BALANCIAGSA and uses it to market a range of fashion products, including shoes called “Triple S”.
Complainant’s rights in its mark date back to at least 1973.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a web site that displays Complainant’s mark and purports to offer for sale unauthorized versions of Complainant’s products; in addition, the resolving web site offers for sale products that compete with those of 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 provides evidence of the registration of its mark in France in 1973 and in China in 1992. The disputed 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 the term “triples” which refers to one of Complainant’s product lines (a type of shoe); the term is thus related to Complainant’s business and describes one of its product lines. Additions to a complainant’s mark such as a term related to its business not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Churchill Insurance Co. Ltd. v. James Sutherland, FA1006001328073 (Forum July 13, 201) (The alteration of Complainant’s mark with the addition of a phrase comprised of terms descriptive of Complainant’s business fails to create a distinct domain name that avoids confusing similarity); see also Bittrex, Inc. v. Neusa ibrahim abdul pereira sultan, FA1807001796329 (Forum Aug. 7, 2018); see also Bloomberg Finance L.P. v. Gabriel Rodriguez, FA1807001796534 (Forum Aug. 6, 2018). Therefore, the Panel finds that the <balenciagatriples.com> domain name is confusingly similar to the BALENCIAGA mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use its mark in any way. 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).”). Here, the WHOIS information of record lists the registrant as “xinqian Tyndall.” The Panel therefore finds that Respondent has not been commonly known by the disputed domain name domain name under Policy ¶ 4(c)(ii).
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a web site offering for sale unauthorized versions of Complainant’s products as well as competing products, in particular competing shoes. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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 also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 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 as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). The Panel finds that Respondent is not using the disputed domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Further, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s web site to sell unauthorized versions of Complainant’s products. This demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, the resolving web site offers for sale products that compete with those of Complainant. Panels have found bad faith under Policy ¶ 4(b)(iii) where a respondent used a confusingly similar domain name to resolve to a website displaying links that compete with a complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) on this ground also.
Finally, Respondent had actual knowledge of Complainant’s rights in the BALANCIAGA mark, as shown by the fact that the resolving website displays Complainant’s mark and products that are purported to be those of Complainant. While constructive knowledge is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark may indicate bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Therefore, the Panel finds that Respondent demonstrated bad faith per Policy ¶ 4(a)(iii) on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <balenciagatriples.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 13, 2018
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