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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Balenciaga S.A. v. Samir Kumar

Case No. D2009-0758

1. The Parties

The Complainant is Balenciaga S.A. of Paris, France, represented by IP Twins S.A.S., France.

The Respondent is Samir Kumar of Bangalore, India.

2. The Domain Name and Registrar

The disputed domain name <balenciagahandbags.com> is registered with Galcomm, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2009. On June 10, 2009, the Center transmitted by email to Galcomm, Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2009, Galcomm, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on July 8, 2009.

The Center appointed Adam Samuel as the sole panelist in this matter on July 21, 2009. 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 owns trademark registrations for BALENCIAGA in a number of different countries. These include France (No. 1218946, registered on December 5, 1972 and the United States of America, (No. 1018311, registered on August 12, 1975. The Complainant designs and manufactures women`s and men`s clothes, shoes and accessories, including handbags. The business was founded in 1918. The Complainant also owns a number of domain names incorporating the name BALENCIAGA, the earliest of which dates back to 1999. The disputed domain name was registered on June 12, 2008.

5. Parties` Contentions

A. Complainant

The Complainant submits that it owns numerous trademark registrations worldwide for BALENCIAGA and domain names incorporating that name and pre-dating significantly the registration of the disputed domain name. The disputed domain name reproduces the Complainant`s trademark with the addition only of the common term "handbags" which describes one of the Complainant`s products and the generic top level domain ".com".

It is highly likely that the Respondent does not own any trademark rights in BALENCIAGA or rights to any such trade or company name. The Complainant asserts it has not licensed the Respondent to use its trademark. The Respondent has not made any use or demonstrable preparation of use of the domain name or provided any goods or services in connection with the disputed domain name. The domain name simply resolves to a page of commercial links of the "pay per click" type. This ultimately leads users to links resolving to the Complainant`s competitors` websites.

The website to which the disputed domain name resolves is for sale which leads one to think that the Respondent registered the domain name in a speculative manner. It is submitted that the Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.

The Complainant`s trademark is a family name that is not a common word. The choice of the disputed domain name by the Respondent is only motivated by the will to create an illegitimate association with the Complainant and to divert consumers or tarnish the trademark at issue. The association of the Complainant`s trademark with the term "handbags" which describes the main products sold under the Complainant`s trademark is evidence that the Respondent knew of the Complainant`s activity when he registered the disputed domain name and registered it in an attempt to attract for commercial gain Internet users to the Respondent`s website or other on-line locations.

The Respondent has been involved in other UDRP decisions in which he has been found to have acted in bad faith.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

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

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

A. Identical or Confusingly Similar

The disputed domain name consists of a trademark which the Complainant has owned since 1972, the generic word "handbags" which describes a product of the Complainant and the generic top level domain ".com". The trademark is a family name with no general common meaning away from the context of the Complainant`s business and mark.

In Kate Spade LLC v. Karen Vog, WIPO Case No. D2005-0284, the word "handbag" and a hyphen was added to the complainant`s trademark. The panel said:

"The only difference between Complainant`s trademark KATE SPADE and the Domain Name is the addition of a hyphen and the generic word "handbag" to the Domain Name. ….The Domain Name entirely incorporates Complainant`s trademark KATE SPADE. Rather than distinguish the Domain Name from the trademark, the addition of the word "handbag" to the Domain Name actually creates greater confusion and similarity between the Domain Name and Complainant`s trademark.

The Panel finds that the Domain Name is confusingly similar to Complainant`s trademark KATE SPADE."

For the same reasons, the Panel concludes here that the disputed domain name is confusingly similar to the Complainant`s trademark. The addition of a generic word, particularly one reflecting a product sold using the trademark concerned, does not remove the confusing similarity between the domain name and the Complainant`s highly distinctive trademark.

B. Rights or Legitimate Interests

The Respondent is not called "Balenciaga" or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name or replied to the Complainant`s correspondence on the subject. For these reasons, and on the basis of the available record, notably the absence of a Response, the Panel 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 disputed domain name is essentially a combination of the Complainant`s distinctive trademark and one of its principal products. This is persuasive evidence that the Respondent registered it knowing all about the Complainant, its business and its trademarks.

In this Panel`s view, it is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the domain name in issue other than to attract business or Internet users to its site who were looking for a site connected to the Complainant`s trademark or business.

The only explanation of what has happened seems to be that the Respondent`s motive in registering and using the site is simply to disrupt the Complainant`s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the domain name from him for an amount in excess of the Respondent`s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith: paragraph 4(b)(i), (ii) and (iii) of the Policy.

The disputed domain name currently resolves to a website providing links to the Complainant`s competitors. This is further evidence of bad faith.

As the Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, said:

"The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant`s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) "50% of all revenues generated from searches, popunders, popups, and exit popups" in respect of users directed to its website through the participants domain name.

This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant`s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent`s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent`s website generates revenue for the Respondent in that manner."

For similar reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue in bad faith.

The Complainant has raised further points about the domain name being for sale and the prior record in UDRP cases of the Respondent. However, in the light of the Panel`s findings of bad faith registration and use, it is unnecessary to deal with these further allegations on the same subject.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <balenciagahandbags.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: July 30, 2009