The Complainant is Lacoste Alligator S.A. of Geneva, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is LaCoste Healing Jewelry of Marshfield, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lacostejewelers.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2009. On May 29, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 29, 2009, Tucows 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 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 26, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 2, 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
According to the Complainant, it is one of the world's leading companies in clothing and fashion accessory design and manufacture. The trademark LACOSTE has been in use for over 75 years. The Complainant is well known, advertises extensively, and its history has been well publicised in the press. The Complainant operates more than 1,100 boutiques worldwide and its products are offered for sale through numerous additional retail outlets in over 112 countries. The scale of its revenue in 2007 was over €1.557 billion.
The Complainant is the owner of the following specimen trademark:
Word mark LACOSTE, United States Patent and Trademark Office (USPTO), filed January 16, 1992, registered January 9, 1996, Registration No. 1947111.
In addition the Complainant has registered numerous trademarks world wide incorporating the word LACOSTE and uses the trademark in a number of domain names.
The Respondent LaCoste Healing Jewelry is a business name that has been used by Audrey LaCoste, the two entities giving the same address.
The disputed domain name < lacostejewelers.com > was registered by the Respondent on September, 2007.
5. Parties' Contentions
A. Complainant
The Complainant submits a copy of the registration document for its current USPTO trademark Registration No. 1947111 LACOSTE in support of its claim to have rights in the trademark. Some 60 pages of listings are submitted for the Complainant's trademarks, many of them for the word LACOSTE, registered in numerous countries.
The Complainant sets out its history since the trademark LACOSTE was introduced in 1933, deriving from the name of the French tennis star René Lacoste. It is contended that the company is well known for sportswear and other clothing, watches, shoes, home textiles, eyeglasses, perfumes and other products. Expenditure on advertising and promotion has been over US$15 million annually in the United States alone. The Complainant's trademark has become recognized internationally as identifying its high-quality products.
The Complainant contends that the disputed domain name is confusingly similar to its trademark. The generic term “jeweler” is merely descriptive and does not distinguish the disputed domain name from the Complainant's trademark. Given the reputation and renown of the Complainant's trademark, it is probable that a majority of Internet users would assume that the disputed domain name is owned, controlled or endorsed by the Complainant. Persons who search the Internet for legitimate retailers of the Complainant's goods may be directed to the disputed domain name by confusion.
The Complainant further contends that the Respondent cannot claim any legitimate interest in the disputed domain name. The registration date of the disputed domain name was September 15, 2007, long after the Complainant acquired rights in the trademark LACOSTE. The Complainant's trademark is very well known and there can be no legitimate use by the Respondent (citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163).
The Complainant contends that upon information and belief there is no bona fide offering of goods through the disputed domain name. The Respondent does not intend to be commonly known by the disputed domain name and has not been making a legitimate noncommercial or fair use of it, at least since October 15, 2008.
It is contended that if the Respondent were to claim a legitimate interest in the disputed domain name then it would need to provide sufficient evidence of actual use to convince the Panel that Internet users would probably associate the disputed domain name with the Respondent rather than Complainant.
The Complainant further contends that the Respondent is using the disputed domain name in bad faith. Where the Complainant's trademark is very well known and there can be no legitimate use by the Respondent, there is evidence of bad faith (Veuve Cliquot, cited previously).
The Complainant provides documentary evidence of having sent a cease, desist and transfer letter to the Respondent on October 8, 2008, and relates a protracted sequence of ensuing communications between the Complainant and the Respondent. In summary, it is contended that Ms. LaCoste, for the Respondent, initially agreed to transfer the disputed domain name and to change the Respondent's business name. Correspondence continued and on February 2, 2009, Ms. LaCoste informed the Complainant that the Company name was being changed from “LaCoste Healing Jewelry” to “Sterling Identity.” There were more telephone communications until April 13, 2009, but the Respondent has yet to release the disputed domain name for transfer. The Complainant believes that this is because it would not reimburse the Respondent for any costs in excess of those incurred to register the disputed domain name.
The Complainant says that the Respondent allowed its registration of the domain name <lacostehealingjewelry.com> to expire on August 18, 2008, despite it being identical to the Respondent's name, but has maintained and renewed the registration for the currently disputed domain name <lacostejewelers.com>. The Respondent appears to be trading on the fame of the Complainant's trademark by maintaining the registration of a domain name comprising LACOSTE and a generic modifier that is only likely to add to the confusion with Complainant's trademark. The Complainant says that before the corresponding website was removed by the Respondent, it was in use to sell goods similar to those covered by the Complainant's trademark registrations. The Respondent is using the goodwill and fame of the Complainant's trademark in bad faith in order to benefit the Respondent financially, demonstrating bad faith registration and use of the disputed domain name.
The Complainant has referred to a number of previous UDRP decisions that it considers should be treated as precedent.
The Complainant requests the transfer of the disputed domain name to the Complainant.
B. Respondent
The Respondent did not provide a formal Response to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The omission by the Respondent to submit a formal Response does not lead to a finding for the Complainant by default. The Policy under paragraph 4(a) requires the Complainant to prove its case under all three of paragraphs 4(a)(i), (ii) and (iii). The Panel is required to ensure that the Parties are treated with equality (paragraph 10(b) of the Rules).
Whilst not providing a formal Response, the Respondent did not ignore the Complainant's concerns. In the lead-up to the lodgment of the Complaint there were informal negotiations by way of telephone and email communications that will be referred to below.
A. Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark to which the disputed domain name is confusingly similar.
The Panel is satisfied on the basis of the documentary evidence submitted that the Complainant has held the trademark for the word LACOSTE registered at the USPTO since January 9, 1996. It is further noted that the Complainant has submitted an extensive list of trademark registrations world wide for the word LACOSTE.
The disputed domain name is <lacostejewelers.com>. The gTLD domain identifier “.com”, being a technical component of the disputed domain name, may be disregarded in the determination of confusing similarity. The component “lacoste” is identical to the Complainant's trademark LACOSTE. In so far as the disputed domain name incorporates the Complainant's trademark LACOSTE, it is similar to it. The question is whether it is confusingly similar.
It may be argued, from the Complainant's position, that confusing similarity is to be decided narrowly on a comparison of its trademark with the disputed domain name. Conversely it could be argued that confusing similarity requires both similarity and the potential for confusion, which is a matter of the facts.
It is not uncommon in cases of abusive registration for a registrant to take a trademark in which it has no legitimate interest and to attach a synergistic word in order to create a confusingly similar domain name. In the present instance it might be argued that the added word “jewelers” could have the converse effect of introducing a distinction between the Complainant's trademark, which appears to be known principally in the field of clothing, sportswear and accoutrements, and the Respondent's business in the field of healing jewelry. On the other hand the Complainant's expansive business includes a small line of watches that might not unreasonably be classed as jewelry.
The Panel considers these matters to be more appropriately discussed under the second and third elements of the Policy and, since these were ultimately decided against the Complainant, makes no finding in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has stated a prima facie case to this effect and it is noted that the disputed domain name was registered recently and long after the Complainant's trademark. The Complainant says inter alia that the Respondent is not making a bona fide offering of goods through the disputed domain name, the Respondent does not intend to be known commonly by the disputed domain name, and the Respondent has not been making a legitimate noncommercial or fair use of it.
The Complainant also submits that if the Respondent were to claim a legitimate interest in the disputed domain name, then it would need to provide evidence of actual use sufficient to convince the Panel that Internet users would probably associate the disputed domain name with the Respondent rather than Complainant.
The foregoing is in accordance with the procedure generally adopted under paragraph 4(a)(ii) of the Policy. Since it is difficult for the Complainant to prove the negative case that the Respondent does not have rights or legitimate interests, a prima facie case is stated that the Respondent may refute in the terms of paragraph 4(c) of the Policy or otherwise. Nevertheless, the Respondent is not obliged to reply (and has not done so) and the onus remains upon the Complainant to prove its case.
Paragraph 4(c) of the Policy reads as follows (where “you” and “your” refer to the Respondent):
[4(c)] How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Words corresponding to trademarks may be capable of innocent usage on the Internet, particularly since domain names are devoid of logos, punctuation, capitalisation, special colours or other associations possible in ordinary print. The word “lacoste” is a recognised surname and a French place name. The word is capable of innocent usage by, at the very least, people named “LaCoste” (or “Lacoste”) and by businesses, associations, societies, utilities and other entities associated with the place. Unless a domain name containing the component “lacoste” has been registered and used with abusive intent against a trademark holder, there may not be grounds for complaint.
The disputed domain name is registered in the name “LaCoste Healing Jewelry”, with the administrative contact given as Audrey LaCoste of the same physical address. In the exercise of its powers to “undertake limited factual research into matters of public record” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5) the Panel has checked the telephone directory and without difficulty has verified the name Audrey Lacoste and the exact contact details provided in the registration.
There is no evidence or suggestion by the Complainant that the Respondent's address is unreal. Similarly there is no evidence or suggestion that the proprietor's reflection of her name in what may be an embryonic business selling healing jewelry, is insincere. The screenshot of the Respondent's website submitted in evidence, skeletal as it was, mentioned crystals, silver and the like. Nothing in the evidence leads the Panel to conclude that the business name LaCoste Healing Jewelry and associated domain name <lacostejewelers.com> have been created with other than good intent, even though the website projected a tentative impression rather than the image of a formally incorporated or comprehensive concern.
Whilst there is a distinction between an individual and their company, even if wholly-owned, in this case the difference may be moot. The Panel concludes from the available facts that in practical terms Audrey LaCoste has reflected the name by which she is commonly known, and in which she would have certain rights, in a domain name related to her activities. Irrespective of the lack of a formal Response, the Panel is not satisfied that the Complainant has established on the balance of probabilities that the Respondent is without rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Relevant to paragraph 4(b)(i) of the Policy above, the Complainant has implied that the Respondent's inclination to transfer the disputed domain name hinged upon the amount of compensation. The Complainant stated: “Upon information and belief, Respondent ceased to respond to emails or phone calls from Complainant's attorney when it became clear that Complainant would not reimburse Respondent for any costs in excess of those incurred to register the Domain Name”.
No evidence has been submitted in support of this assertion. The exchange of written correspondence in evidence begins on October 8, 2008 with a strongly worded cease and desist letter from the Complainant to the Respondent with references to “Infringing Domain Names” and potentially heavy penalties under the law. There appear to have been telephone conversations in the interim in which, the Complainant says, by February 9, 2009 the Respondent had offered to change its business name, yet on February 16, 2009 the Respondent was still writing to the Complainant, “Hi Todd, Why do we have to transfer the names if we are not using them? Is this really an issue? Audrey”.
To the Panel, that does not imply a meeting of minds between the Complainant and the Respondent. The Panel has seen no evidence that the Respondent was willing to part with the disputed domain name at all, and none to the effect that any particular compensation was ever debated.
The Panel is not satisfied that in the terms of paragraph 4(b)(i) of the Policy there is evidence of the Respondent having registered and used the disputed domain name other than in good faith. Specifically in the terms of paragraphs 4(b)(ii), (iii) and (iv) of the Policy the Panel can find no realistic evidence that the Respondent made a blocking registration (and has, as would be required, engaged in a pattern of such conduct), or intended to disrupt the business of a competitor, or intended to divert the Complainant's customers to its website. The Respondent did not ignore the Complainant's cease and desist letter but appears to have responded in a conciliatory manner.
Accordingly the Panel finds for the Respondent in the terms of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman Sole Panelist
Dated: July 16, 2009
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