WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Louis Vuitton Malletier v. Somsak Sooksripanich
Case N� D2000-0866
1. The Parties
A. The Complainant is Louis Vuitton Malletier, 2 rue du Pont Neuf, 75034 Paris Cedex 01, France (Vuitton).
B. The Respondent is Somsak Sooksripanich, 3272/119 ladpraw 130rd, Bangkapi, Bangkok, 1040 Thailand.
2. The Domain Name and Registrar
The domain names in issue are :
(1)
(2)
(3)
(4) louisevuitton
(5)
(6)
(7)
(8)
(9)
(10)
(11)
(12)
(13)
(14)
(15)
(16)
(17)
(18)
(19)
(20)
(21)
(22)
(23)
(24)
(25)
(26)
(27)
(28) L ,
(29)
(30)
(31)
(32)
(33)
(34)
(35)
(36)
(37)
(38)
(39)
(40)
(41)
(42)
(43)
(44)
(45)
(46)
(47)
(48)
(49)
(50)
(51)
(52)
(53)
(54)
(55)
(56)
(57) hennessyvuitton
(58)
(59)
(60)
The Registrar is Network Solutions, Inc.
3 Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint on July 25, 2000 (electronic version) and July 28, 2000(hardcopy). On July 31, 2000 the Center issued a complaint deficiency notification and the Center received the first amendment to complaint on August 1, 2000 (electronic version) and August 3, 2000 (hardcopy). On August 4, 2000 the Center received the Registrar�s verification response. A second complaint deficiency notification was issued on August 10, 2000. On the same day two new domain names were added to the disputed domain name list. The second amendment to complaint was received on August 11 and August 14 (e-mail/hardcopy). On August 28, 2000 the Center received the Registrar�s verification for the two new domain names and the misspelled one. The third amendment to complaint was received on September 1, 2000 and September 18, 2000 (e-mail/hardcopy). The notification of complaint was issued on September 19, 2000. The notification of Respondent's default was issued on October 10, 2000.
4. Factual Background
A. The Trademark
The complaint is based on the trademark Louis Vuitton. The Complainant is the owner of the following registered trademark:
In France LOUIS VUITTON, registration number 1 627 892, November 16, 1990.
In the U.S.A. LOUIS VUITTON, N� 1990760, August 6, 1996.
The international trademark LOUIS VUITTON, N� R416052, since 1968, and renewed for the last time on June 19, 1995.
In the European Community, LOUIS VUITTON, N� 15610, April 1, 1996.
In Italy LOUIS VUITTON, N� 165162, February 18, 1982 and EPI, N� 2900, on October 27, 1994.
In addition the Complainant owns the following domain names : , , , , louis, , louis, louis-.
B. The Complaint
The grounds for the complaint are:
That the domain names (3) Dior and (57) hennessy are formed by merging the Complainant�s trademark Vuitton to other well known trademarks.
That the domain name (14) repeats the verbal sign EPI which was filed as a trademark in Italy.
That the other domain names are almost all faithful reproductions of the LOUIS VUITTON trademark.
That the Respondent does not have any right over the trademarks involved and has no lawful interest relating to them.
That the domain names are to be considered to have been registered and used in bad faith as the Respondent registration of these 60 domain names can only be explained by his intention to sell them. This intention of his is clearly shown by his offer to sell the site for the sum of US $ 1000.
In its complaint the Complainant requests that the domain names (3) Dior and (57) hennessy be cancelled and that the other domain names be transferred to him.
C. The Respondent
The Respondent has not submitted any response. Two e-mail concerning the present proceeding were received: "what I have to do ?" and "please explain clearly what I have to do? I register domain for my client in Thailand. if they claim it why do not register for themselves. When I register. They will claim later".
5. Discussion and Findings
A. Identical or Confusingly Similar Domain Name
The domain names containing mainly the name Vuitton as characteristic element are all confusingly similar to the trademarks and the domain name Louis Vuitton. Such is the case for domain names (2) , (4) louisevuitton, (5) , (7) , (8) , (9) , (10) , (11) , (12) , (13) , (16) , (17) , (18) , (19) , (20) , (21) , (22) , (23) , (24) , (25) , (26) , (27) , (28) L, (29) , (30) , (31) , (32) , (33) , (35) , (36) , (37) , (38) , (39) , (42) , (43) , (44) , (45) , (46), (47) , (48) , (49) , (50) , (51) , (53) , (54) , (55) , (59) , (60) .
Some combinations embody a well-known trademark beside Vuitton. This is the case of (3) and (57) hennessyvuitton.
Some combination do not add a distinctive feature, such are (1) , (6) , (15) , (34) , (40) , (41) , (52) , (56) .
The only difference between domain name (58) and the Complainant�s trademark is the change of the letter "o" to "a" at the end of the word. This small difference is not perceptible and the way to pronounce those words would be identical or almost identical in many languages. Most search engines would lead to louis as well as . The panel therefore decides that the domain name is confusingly similar to the Complainant�s trademark.
Finally the domain name (14) refers to a trademark belonging to the Complainant but registered in Italy only. The catalogue of Vuitton Malletier evidences that the EPI leather line of product is well introduced, apparently since 1885 (exhibit M, last sentence). Nevertheless, it is not possible to see in EPI a well-known trademark within the ambit of art. 6bis of the Paris Convention for the Protection of Industrial Property and art. 16 par. 2 of the TRIPS Agreement. A striking fact is that only an Italian trademark has been registered. Further the panel knows of two other EPI denominations (for Experts Polytechniciens Internationaux and Experts de Propri�t� Industrielle), which shows that the Complainant may have to show cause in an ordinary court of law why it could enjoy the exclusive domain name epi or epileather.
B. Rights or Legitimate Interests of Respondent
Respondent is defaulting. Therefore it is not possible to find which legitimate interests it may have to the domain name in issue.
C. Domain Name Registered and Used in Bad Faith
The list of domain name registered by the Respondent is prima facie evidence of a registration in bad faith.
Further one will note the Respondent�s message of August 10, 2000 stating "if you want to take over those domain name you have to pay substitute for me 70$ and expense +30$". If it should be understood for each and every domain names, as there are 60 domain names at issue, this offer would amount to US $ 6000.
Therefore the intent to pressure the Complainant into buying back the domain names is obvious, which in itself is a reason to find bad faith, absent exceptional circumstances.
6. Decision
As to domain names (1) , (2) , (3) , (4) louisevuitton, (5) , (6) , (7) , (8) , (9) , (10) , (11) , (12) , (13) , (15) , (16) , (17) , (18) , (19) , (20) , (21) , (22) , (23) , (24) , (25) , (26) , (27) , (28) L, (29) , (30) , (31) , (32) , (33) , (34) , (35) , (36) , (37) , (38) , (39) , (40) , (41) , (42) , (43) , (44) , (45) , (46) , (47) , (48) , (49) , (50) , (51) , (52) , (53) , (54) , (55) , (56) , (57) hennessyvuitton, (58) , (59) , (60) :
In the light of the foregoing, the panel decides that the domain names registered by the Respondent are identical or confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no legitimate interests in respect of those domain names and that the domain names in issue have been registered and are being used in bad faith by the Respondent.
Accordingly the panel requires that the registration of those domain names be transferred to the Complainant.
As to domain name (14) : the panel rejects the Complainant�s request.
François Dessemontet,
Sole Panelist
Dated: November 3, 2000
Full & Egal Universal Law Academy