The Complainant is Louis Vuitton Malletier of Paris, France, represented by Hayabusa Asuka Law Offices of Japan.
The Respondent is Luo Cheng of Guang Zhou, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <go-vuitton.com> is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2009. On November 11, 2009, the Center transmitted by email to Bizcn.com, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On November 12, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 18, 2009. On November 13, 2009, the Center transmitted an email to the parties in both Chinese and English with respect to the language of proceedings. On November 18, 2009, the Complainant submitted a request that English be the language of proceedings while the Respondent did not comment on the language of proceedings by the due date of November 20, 2009. The Center verified that the Complaint together with the amendment to the Complaint had 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 November 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 14, 2009.
The Center appointed C. K. Kwong as the sole panelist in this matter on December 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 is the owner of numerous trade marks consisting of the words VUITTON and LOUIS VUITTON. These registrations include the following:
(a) Japanese trade mark registrations for the mark VUITTON under registration:
(i) No. 1562005 granted on January 28, 1983 in respect of certain goods and services under Classes 14 and 25;
(ii) No. 1599538 granted on June 30, 1983 in respect of certain services under Class 34;
(iii) No. 1753370 granted on March 25, 1985 in respect of certain goods under Class 16;
(iv) No. 1923073 granted on December 24, 1986 in respect of certain goods under Classes, 9, 18, 20, 25, 27 and 28;
(v) No. 1971863 granted on July 23, 1987 in respect of certain goods under Classes 6, 14 and 18;
(vi) No. 2006643 granted on December 18, 1987 in respect of certain goods under Classes 24 and 25;
(vii) No. 2144007 granted on May 30, 1989 in respect of certain goods under Classes 9 and 14;
(viii) No. 4837164 granted on February 24, 2005 in respect of certain goods and services under Classes 14, 18, 25 and 38.
(b) Japanese trade mark registrations for the mark LOUIS VUITTON under registration:
(i) No. 1502683 granted on February 26, 1982 in respect of certain goods under Class 3;
(ii) No. 1971864 granted on July 23, 1987 in respect of certain goods under Classes 6, 14 and 18;
(iii) No. 1437849 granted on September 29, 1980 in respect of certain goods under Class 16;
(iv) No. 1374707 granted on February 27, 1979 in respect of certain goods under Classes 24 and 25;
(v) No. 1760173 granted on April 23, 1985 in respect of certain goods under Classes 4, 5, 6, 8, 10, 11, 14, 16, 18, 19, 20, 21, 24, 26, 27 and 28;
(vi) No. 1686686 granted on May 29, 1984 in respect of certain goods under Classes 14, 20 and 24;
(vii) No. 1392721 granted on September 28, 1979 in respect of certain goods under Class 21;
(viii) No. 1602524 granted on July 28, 1983 in respect of certain goods under Classes 18 and 25;
(ix) No. 1632782 granted on November 25, 1983 in respect of certain goods under Classes 9 and 14;
(x) No. 2195981 granted on December 25, 1989 in respect of certain goods under Class 24;
(xi) No. 1753372 granted on March 25, 1985 in respect of certain goods under Class 16;
(xii) No. 1599711 granted on July 28, 1983 in respect of certain goods and services under Classes 14 and 34;
(xiii) No. 4123462 granted on March 13, 1998 in respect of certain goods under Class 9;
(xiv) No. 1602641 granted on July 28, 1983 in respect of certain goods under Class 22;
(xv) No. 1774913 granted on May 30, 1985 in respect of certain goods under Classes 6, 9, 16, 19 and 20;
(xvi) No. 4443097 granted on January 5, 2001 in respect of certain goods under Class 24.
According to information provided by Wikipedia as described in Annex 8 to the Complaint, the Complainant also operates a website at “www.louisvuitton.com”.
The uncontradicted evidence produced by the Complainant shows that the use and/or registrations of its VUITTON and LOUIS VUITTON trade marks aforesaid occurred before the registration of the disputed domain name <go-vuitton.com> on September 30, 2007.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant of the WhoIs database searches (as provided in Annex 2 to the Complaint) and the fact that the disputed domain name is apparently used by a party which has described itself as K.K.Go-Vuitton with a representative known as Masaki Iida (Japanese name) with an address of G450-302 shop at the Landmark, Central, Hong Kong (as described in Annex 10 to the Complaint), there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties' Contentions
A. Complainant
The Complainant has made the following contentions:
The Complainant has rights in the trade marks VUITTON and LOUIS VUITTON. Furthermore, the disputed domain name <go-vuitton.com> with its distinctive feature being the word “vuitton” having the same spelling as the mark VUITTON and the second part of the mark LOUIS VUITTON, is identical or confusingly similar to its said trade marks.
The Complainant's trade marks consisting of VUITTON and LOUIS VUITTON have earned worldwide recognition and fame with a history of over 150 years dating back to 1854. It is one of the top fashion brands in the world.
Because of the fame of the Complainant's trade marks, the Complainant must be aware of the Complainant and its well known trade marks at the time of registration of the domain name in dispute on September 30, 2007. The Complainant claims that the Respondent is using the disputed domain name for an Internet shopping website in Japanese called “Go-Vuitton” with its host being a party known as K.K.Go-Vuitton having Masako Iida (Japanese name) as its representative and an address of G450-302 shop at the Landmark, Central, Hong Kong selling inferior dead copies of various brand products including those of the Complainant in violation of its intellectual property rights.
The Complainant has no business relationship with the Respondent and has never granted the Respondent any right to use its trade marks or the disputed domain name. Unless the Respondent can establish that it has legitimate reasons for the registration and use of the disputed domain name, such use must be taken as for fraudulent purposes. The Complainant claims that it will suffer serious damages or injury by the Respondent's use of the disputed domain name which constitutes intentional bad faith abuse of the Complainant's good name in its products and trade marks.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 2 to the Complaint which was filed on November 11, 2009 and the WhoIs search result updated to November 11, 2009 as provided by the Center.
Such contact details also agree with those provided by the Registrar to the Center on November 12, 2009.
On November 23, 2009, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by courier, facsimile and e-mail with copies to the Registrar.
Although there were included in the case bundle supplied by the Center (a) undeliverable e-mail notices indicating that the e-mails sent to the Registrant's given e-mail address were unsuccessful (b) fax transmission reports showing that the fax communications were unsuccessful and also (c) a UPS track shipment report indicating that the delivery by courier might also be unsuccessful, all these are due to no fault or omission on the part of the Center.
It is noted that there was no undeliverable e-mail notice shown in the relation to the Center's Notification of Respondent Default dated December 14, 2009.
The Panel is entitled to undertake limited factual research into matters of public record. Societe des Produits Nestlé SA v. Telmere Management Services,
WIPO Case No. D2002-0070. The Panel notes that the Terms and Conditions of Services of the Registrar as incorporated in the Registration Agreement as shown in the Registrar's website contain
(a) a representation given by the user when registering the domain name with the Registrar, to the effect that the User guarantees that the data provided by it in the domain name registration application shall be true, accurate and complete, and contain no misleading or false statements…... User agrees to be legally bound by these terms and conditions just like the written terms agreed and sealed by it in person.”
(b) Article 10.4 was to the effect that if either party changes its address for notices or communications or other contact method, such change should be notified to the other party, otherwise the party making such change shall be responsible for all the consequences arising.
In the circumstances, the Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar as reflected in the database records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center's notification in English and Chinese of November 13, 2009 to both parties on the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on November 18, 2009.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has inter alia argued that:
(a) The Complainant is a French company using French as its main language. The Respondent is located in a Chinese speaking country. The website using the domain name in dispute is in Japanese. These proceedings involve 3 different languages;
(b) It is fair to both parties to use English, a universal language, instead of choosing one of the said 3 languages. The use of English will ensure the smooth conduct of these proceedings and facilitate negotiations between the Complainant, Respondent and other interested parties outside of the proceedings;
(c) The Complainant will suffer extreme difficulty to understand documents written in Chinese which may include the Response. It would involve tremendous efforts, costs and time on the part of the Complainant one-sidedly.
The Panel has taken into consideration the above submissions, the fact that the disputed domain name consists of English alphabets and the Respondent has provided contact details to the Registrar in English.
In exercising its discretion to use the language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl,
WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default as aforesaid, the Panel is satisfied that if there is any prejudice or unfairness to the Respondent at all for these proceedings to be conducted in English and for its decision to be rendered in English, it is negligible and immaterial. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna King,
WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,
WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trade marks VUITTON and LOUIS VUITTON by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trade marks VUITTON and LOUIS VUITTON despite the addition of the word “go” and the generic top-level domain “.com”.
The distinctive feature of the disputed domain name is “vuitton”, being also the distinctive features of the Complainant's trade marks. The verb “go” and the hyphen are indistinctive elements although they may suggest or invite the reader to go to the website with the word “vuitton”. After removing the generic top-level domain, only the word “vuitton” is left in its entirety.
It is well established practice to disregard the top-level part of the domain names, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,
WIPO Case No. D2008-0416.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trade marks VUITTON and LOUIS VUITTON prior to the Respondent's registration of the domain name <go-vuitton.com> on September 30, 2007. Further, the Panel notes that the names of the Respondent and the Respondent organization do not correspond in anyway with the domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as “go-vuitton.com”. There is also no evidence available to demonstrate the legitimate non-commercial or fair use of the disputed domain name by the Respondent. The Complainant has confirmed that it has not licensed or otherwise authorised the Respondent to use any of its trade marks whether by incorporation in a domain name or otherwise.
The Panel sees no plausible explanation as to why it was necessary for the Respondent to adopt the word “vuitton” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
The Complainant has sought to adopt the summary produced by Wikipedia on its own history and business activities in support of the claim that its trade marks and products have won worldwide recognition and fame as per Annex 8 of the Complaint. Although this is only a report or summary by Wikipedia and not by the Complainant itself directly, in the absence of objections raised by the Respondent, the Panel is entitled to take the contents of Annex 8 into account. This document refers to the opening of the Complainant's first shop at the Palace Hotel in Beijing in 1992 and its first global store in Shanghai in 2004. Together with the earlier registrations of the trade marks VUITTON and LOUIS VUITTON as indicated by the Japanese registrations described in Section 4 above as well as the other advertising efforts and sales described in Annex 8, the Panel is satisfied that at the time when the Respondent registered the disputed domain name (seemingly on or around September 30, 2007, a date much later than the Complainant's acquiring of its registered trade mark rights) it was done in bad faith with knowledge of the Complainant's business and Complainant's use of the VUITTON and LOUIS VUITTON trade marks.
The disputed domain name resolves to the “www.go-vuitton.com” website where goods bearing the Complainant's LOUIS VUITTON trade mark are offer for sale or sold. It is the Complainant's uncontradicted claims that (a) it has no business relationship with the Respondent (b) it has never granted the Respondent the right to use its trade marks and (c) goods of the same types marketed by the Complainant appearing in the website of K.K.Go-Vuitton are unauthorized copies of the Complainant's products which result in the public being misled into believing that such products, which are of questionable quality, are associated or otherwise connected with the Complainant resulting in serious damage and injury to them. The Respondent has registered the domain name and allowed K.K.Go-Vuitton to use it primarily for the purpose of operating a website selling goods in a way which disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the domain name by K.K.Go-Vuitton in the manner described above, the Registrant intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <go-vuitton.com> be transferred to the Complainant.
C. K. Kwong Sole Panelist
Dated: December 30, 2009
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