A. Identical or confusingly similar with Complainant’s trademark
The Complainant owns “BALENCIAGA” trademark registrations effective in various jurisdictions.
As confirmed by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see paragraph 1.2.1: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The disputed domain name fully incorporates the Complainant’s trademark without any alterations or additions and is identical with the “BALENCIAGA” trademark.
The .fun domain zone shall be disregarded under the identity or the confusing similarity test as it does not add anything to the distinctiveness of the disputed domain name.
The Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
The general rule is the following:
(i) a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name; and
(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
If the respondent fails to do so, the second element of the Policy is satisfied (see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and CAC Case No. 101284).
The Respondent did not respond.
While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows all reasonable inferences of fact in the allegations of the complaint to be deemed true (see paragraph 14(b) of the Rules and FORUM Case No. FA0006000095095, Vertical Solutions Management, Inc. v. webnet-marketing, inc.).
The Complainant has made a prima facie case in respect of Respondent’s lack of rights or legitimate interests, in particular absence of any affiliation or any authorization from the Complainant to use its trademark in the disputed domain name, no business connection that may justify an interest in the disputed domain name and the fact that the Respondent is not known by the disputed domain name. The Respondent is an individual from Russia who does not have any apparent connection with the Complainant and there is no evidence of any rights or legitimate interests of the Respondent available in this case.
Therefore the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered in deciding whether the disputed domain name is registered and used in bad faith.
The Complainant claims that the disputed domain name was offered for sale to the highest bidder and has provided evidence to support its claim (a screenshot of the English language version of the web site). In such circumstances Respondent’s conduct may fall under paragraph 4(b) (i) of the Policy.
The disputed domain name on the date of the decision is offered sale and brokerage services are also offered. The disputed domain name was registered on January 6, 2020.
UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor) (see paragraph 3.1.1 of WIPO Overview 3.0).
Circumstances indicating that a domain name was registered for the bad-faith purpose can be highly fact-specific; the nature of the domain name (e.g., whether a typo of a famous mark, a domain name wholly incorporating the relevant mark plus a geographic term or one related to the complainant’s area of commercial activity, or a pure dictionary term) and the distinctiveness of trademark at issue, among other factors, are relevant to this inquiry.
The Panel finds that the following circumstances of the present case indicate bad faith of the Respondent:
1) The nature of the disputed domain name that is identical with the Complainant’s distinctive trademark and
2) The distinctiveness of the trademark at issue – the “BALENCIAGA” trademark is highly distinctive and the Complainant’s BALENCIAGA brand has a long history and is popular in many countries including Russia. The Complainant has been a party to numerous UDRP proceedings and its “BALENCIAGA” trademark has been frequently targeted by bad faith registrants (see e.g. Balenciaga v. Zhifeng Rao, WIPO Case No. D2013-0575; Balenciaga v. Rudy Gay, WIPO Case No. D2012-2299; Balenciaga v. Xin Tong, WIPO Case No. D2012-2298 – “The Panel accepts that the trademark BALENCIAGA is well-known”; Balenciaga v. Zhihu Fan, WIPO Case No. D2010-2083 – “Given the fame of the Complainant’s marks…” and Balenciaga v. Domain Admin, PrivacyProtect.org / Registrant ID: DI_11510492 Wan Hao, Danshi, WIPO Case No. D2010-2082 – “the long standing renown of the BALENCIAGA mark and brand…”).
Taking into account all of the above and in the absence of any explanations of the Respondent, all the circumstances and evidence indicate that the Respondent has targeted the Complainant and registered the disputed domain name to take advantage of Complainant’s trademark, its reputation and fame.
The Respondent in these circumstances cannot credibly claim to have been unaware of the Complainant’s mark.
Based on the above, the Panel holds that the third requirement of the Policy has been satisfied.
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