The Complainant is Lacoste Alligator S.A of Geneva, Switzerland represented by Fross Zelnick Lehrman & Zissu, P.C. of New York, United States of America.
The Respondent is bocai of Shanghai, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <lacosteshopsale.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2010. On February 25, 2010, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On February 26, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. On February 26, 2010 the Complainant requested that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 26, 2010. The Center verified that the Complaint together with the amended 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 March 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 6, 2010. 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, Lacoste Alligator S.A. (hereinafter: the “Complainant”), is a Swiss design and manufacturer of clothing and fashion accessories.
The Complainant was founded in 1933 by French Tennis player Rene Lacoste and Andre Gillier, president of a knitwear manufacturer. Since then the LACOSTE mark was continuously used in relation with the design and manufacture of the Complainant's clothing and accessories.
The Complainant expended significant resources throughout the years in promotion and advertisement worldwide. The Complainant efforts were fertile. For example, in 2001, an international survey performed in ten countries by Cofemca-Sociovision showed that 66% of respondents recognized the LACOSTE brand. As a result of extensive use and publicity, the LACOSTE trademark become widely-know and is solely associated with the Complainant.
The Complainant and its affiliated companies are the owners of multiple trademark registrations for the mark LACOSTE around the world. For example: United States trademark registration No. 0879171 – LACOSTE, with the registration date of October 21, 1969; United States trademark registration No. 1035615 – LACOSTE, with the registration date of March 16, 1967; United States trademark registration No. 1187445 – LACOSTE, with the registration date of January 26, 1982; United States trademark registration No. 1218448 – LACOSTE, with the registration date of November 30, 1982; Community trademark registration No. 002979524 – LACOSTE, with the filing date of December 17, 2002; Community trademark registration No. 004104626 – LACOSTE logo, with the filing date of November 2, 2004; and others.
The Complainant has also developed a formidable presence on the Internet and is the owner of the following domain names, which contain the names “lacoste”: <www.lacoste.com>, <www.lacoste.com/uk>, <www.lacoste.com/nl>, www.lacoste.com.de>, <www.lacoste.com/france>, <www.lacoste.com/es> and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name <lacosteshopsale.com> on November 24, 2009.
The disputed domain name resolves to an on-line marketplace, offering various goods for sale, including clothing and accessories which appear to carry the LACOSTE mark.
5. Parties' Contentions
A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the LACOSTE trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the LACOSTE trademark and that this trademark is widely recognized with the Complainant and, and with its operation. Furthermore, the Complainant argues that it did not have a relationship with the Respondent nor has it licensed or permitted the Respondent to use the LACOSTE mark.
The Complainant further argues that the Respondent is not making a legitimate non-commercial use of the LACOSTE mark. The Complainant further argues that the Respondent has not used the disputed domain name for a bona fide offering of goods.
The Complainant further argues that the Responded is using the website for the sale of counterfeit goods, which carry the LACOSTE mark. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent registered and acquired the disputed domain name with knowledge of the Complainant and the Complainant's operation and with intention to imitate the Complainant's goods. The Complainant argues that this is evidence of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The LACOSTE trademark is registered in multiple territories around the world. For example: United States trademark registration No. 0879171 – LACOSTE, with the registration date of October 21, 1969; United States trademark registration No. 1035615 – LACOSTE, with the registration date of March 16, 1967; United States trademark registration No. 1187445 – LACOSTE, with the registration date of January 26, 1982; United States trademark registration No. 1218448 – LACOSTE, with the registration date of November 30, 1982; Community trademark registration No. 002979524 – LACOSTE, with the filing date of December 17, 2002; Community trademark registration No. 004104626 – LACOSTE logo, with the filing date of November 2, 2004; and others.
The disputed domain name <lacosteshopsale.com> differs from the registered LACOSTE trademark by the additional words “shop” and “sale”, and the gTLD “.com”.
The dominant element in the disputed domain name is the Complainant's LACOSTE trademark, which is incorporated in its entirety. The words “shop” and "sale" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's LACOSTE trademark, especially as they represent services regularly rendered by the Complainant.
Previous UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (BritanniaBuilding Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,
WIPO Case No. D2006-0909).
Further, previous UDRP panels have asserted that “the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,
WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LACOSTE trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant, along its affiliated companies, own registrations for the LACOSTE trademark since the year 1969. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,
WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name lead Internet users to a website, which promotes the sale of clothing and accessories under the LACOSTE mark. The Respondent's use of the name “lacoste” to promote similar or counterfeit goods to the good being sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark LACOSTE and subsequent intent to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,
WIPO Case No. D2005-0765, stating that “[t]he registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for quasi identical goods to the ones the Complainant manufacture and markets (as well as Complainant's counterfeit's good) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
Further, the disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant's distinctive registered trademark and the Respondent's use of the domain name, the Panel finds that the registration of the disputed domain name that is confusingly similar name to the Complainant's mark shows the Respondent intent to operate a website offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either associate affiliated by the Complainant.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith.
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 <lacosteshopsale.com> be transferred to the Complainant.
Jonathan Agmon Sole Panelist
Dated: April 19, 2010
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