WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lacoste Alligator S.A. v. China Bizseas Case No. D2009-0493 1. The Parties
The Complainant is Lacoste Alligator S.A. of Geneva, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC of United States of America.
The Respondent is China Bizseas, of Putian, Fujian province, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd., d/b/a . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2009. On April 17, 2009, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba a request for registrar verification in connection with the disputed domain name. On April 20, 2009, Beijing Innovative Linkage Technology Ltd. dba 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 April 21, 2009. The Center verified that the Complaint together with the amendment to 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 April 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 22, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on June 8, 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. Language of Proceeding
On April 21, 2009, the Center transmitted an email to the parties concerning the Language of Proceeding in Chinese and in English. The Complainant submitted a request that English be the Language of Proceeding on the same day. The Respondent did not comment on the Language of Proceeding by the due date. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise, with regard to the circumstances of the case.
In the present case, the registration agreement for the disputed domain name was made in the Chinese language. However, looking at the website that the domain name is linked to, the Panel recognizes that the Respondent should have the capability of understanding the English language because said website is a pure English language site. The fact itself suggests that the owner of the domain name is clearly inviting English communications.
On the other hand, the Complainant is not able to communicate in Chinese and therefore, if it were required to submit all documents in Chinese, the administrative proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. This is not the purpose of the UDRP proceeding. Therefore, the Panel decides that English shall be the language of the administrative proceeding. 4. Factual Background
The Complainant is Lacoste Alligator, S.A., which is a Swiss Societe Anonyme (similar to an incorporated membership association) and is the registered trademark owner of LACOSTE around the world, including in China. The Complainant provided printouts showing some of the Complainant's registrations for LACOSTE and trademarks incorporating LACOSTE in the world. These trademark registrations predate the Respondent's registration of the Domain Name dated April 2, 2008.
The Respondent did not respond therefore is not participating in the proceeding. 5. Parties' Contentions A. The Complainant Identical or Confusingly Similar
The Complainant contends that the domain name (the “Domain Name”) is confusingly similar to the Complainant's LACOSTE trademark (the “Trademark”), because it incorporates the Complainant's famous Trademark in its entirety. The generic term “shopping” does nothing to distinguish the Domain Name from the Trademark, See Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615 (domain name that wholly incorporates registered trademark establishes confusing similarity); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (domain name with addition of generic term found legally identical to the trademark).
The Complainant further contends that, given the reputation and renown of the Trademark, it is probable that a majority of Internet users who see the Domain Name will immediately recognize the Trademark, and assume that the Domain Name is owned, controlled or endorsed by the Complainant. In addition, consumers and other third parties who search the Internet for legitimate retailers of the Complainant's goods may be directed to the websites linked to the Domain Name, as a result of confusion. The Complainant quoted GA Modefine S.A. v. Mark O'Flynn,WIPO Case No. D2000-1424; and Volvo Trademark Holding AB v. Uvelov, WIPO Case No. D2002-0521. Rights or Legitimate Interests
The Complainant contends that, the Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. The Complainant further contends that, the Respondent registered the Domain Name on April 2, 2008, long after the Complainant had established rights in its LACOSTE Trademark through extensive use over the last 75 years.
The Complainant contends that where the Trademark is very well known and recognized, there can be no legitimate use by the Respondent. Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The Complainant contends that there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the Domain Name, which is identical with or confusingly similar to the Trademark. The Complainant further contends that the Respondent is not commonly known by the Domain Name, as shown by their registration information.
The Complainant contends that, since the Trademark is so well-known and the Respondent has no rights therein, the only reason that the Respondent could have sought to register and use the Domain Name consisting of the Trademark plus the generic word “shopping” is that it knew of the Trademark and wanted to use it in the Domain Name for the purpose of selling counterfeit LACOSTE merchandise, or otherwise profiting from the consumer confusion that is the inevitable result of the Respondent's misappropriation of the Trademark Registered and Used in Bad Faith
The Complainant contends that, the Respondent is commercially exploiting the Domain Name and the famous LACOSTE Trademark for its own gain. The Complainant asserts that, the Domain Name takes users to a site selling dozens of varieties of counterfeit LACOSTE merchandise, which is to be supported by the below information on the Respondent's website:
- In the “News” section of the website, the Respondent explicitly admits that the goods it is offering for sale are counterfeit.
- In an article entitled “Is it a knock-off that you are wearing?” The Respondent appears to brag about the fact that companies such as the Complainant are unable to stop counterfeit manufacturers and sellers.
The Complainant further contends that, upon information and belief, the Respondent earns revenue directly by drawing consumers to its site through its unauthorized use of the Trademark in its Domain Name. See, e.g., Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248 (“it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person's trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name”); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide' offering of goods or services”).
The Complainant asserts that, on January 12, 2009, it sent a demand letter to the Respondent requesting that the sale of counterfeit LACOSTE merchandise at mentioned website linked to the Domain Name stop immediately and that the Respondent agree to transfer the infringing Domain Name to the Complainant. The Respondent failed to respond in any way to this letter.
The Complainant is therefore of the opinion that the Respondent is using the goodwill and fame of the Trademark in bad faith in order to unfairly benefit the Respondent financially. Moreover, these activities demonstrate bad faith registration and use of the Domain Name and are in violation of the Policy as set forth in paragraphs 4(b)(i) and 4(b)(ii). B. The Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the Trademark LACOSTE in numerous jurisdictions, including in China where both the Registrar and the Respondent are located. Compared to the Trademark, the Domain Name completely reproduces the former with the only difference being the mere addition of the generic term “shopping” and the generic top-level term “.com”. However, neither of these two terms is sufficient to differentiate the disputed domain name from the Trademark. Instead, the addition of the generic term “shopping” is more likely to mislead Internet users into believing that the sites linked to the Domain Name are the official sites of the Complainant or in some way associated with the Complainant, when in fact this is not.
The Domain Name is therefore confusingly similar to the Complainant's Trademark and the Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie case showing the Respondent's lack of rights or legitimate interest in the Domain Name. The Respondent does not appear to be known by the Domain Name nor is authorised to use the Trademark in any manner. Therefore, the burden shifts to the Respondent to prove otherwise, but the Respondent keeps silent to the Complainant's contentions.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances it believes the Respondent does not have right or legitimate interests in the Domain Name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The files on record have shown that:
- The Complainant is a leading player in the field of clothing and accessory industry,
- The Trademark is extensively registered and used, therefore has obtained a reputation in the industry around the world;
- The Domain Name entirely reproduces the Trademark;
- The Respondent is silent about the Complainant's contention that it does not have rights or legitimate interests; and
- The Domain Name had been linked to a website which allegedly offers for sale counterfeit clothing merchandise bearing the Trademark.
These circumstances lead the Panel to conclude that the Respondent's use and registration of the Domain Name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(b)(iv), i.e.,
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(iii). 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 be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: June 22, 2009
Full & Egal Universal Law Academy