WIPO Domain Name Decision D2009-1341 for lacostebuy.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lacoste Alligator S.A. v. Liu Dong Ping Case No. D2009-1341 1. The Parties

The Complainant is Lacoste Alligator S.A. of Geneva, Switzerland, represented by Fross Zelnick Lehrman & Zissu of New York, United States of America.

The Respondent is Liu Dong Ping of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with HiChina Zhicheng Technology Limited (the “Registrar”). 3. Procedural History

3.1 The Complaint has been rather comparatively rather poorly presented and was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2009 electronically. On October 12, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 14, 2009, the Registrar transmitted by email to the Center confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 On October 19, 2009, the Center informed the Complainant that the Registrar had confirmed that the Registrant of the Domain Name is Liu Dongping, which was not correctly reflected in the Complaint. The Complainant was asked to send an amendment to reflect the relevant Registrant's information. The Center also asked the Complainant to confirm an issue under the Mutual Jurisdiction paragraph in the Complaint. The confirmation was sought that in accordance with paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the Domain Name that is the subject of this Complaint, to the jurisdiction of the location of the principal office of the concerned Registrar. The Amendment to the Complaint was filed with the Center on October 19, 2009.

3.3 On October 19, 2009, the Center transmitted an email to the parties in both Chinese and English with respect to the language of proceedings. The Complainant confirmed its request that English be the language of proceedings while the Respondent did not comment on the language of the proceedings by the due date.

3.4 The Center verified that the Complaint with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”). , the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2009.

3.4. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally transmitted a copy of the Complaint and the Amendment to the Complaint both filed in English to the Respondent, providing the Notification of Complaint and Commencement of Administrative Proceeding in both the Chinese and English languages. The Complaint has been submitted in English. However, the registration agreement for the Domain Name is made in Chinese. It does not appear that the Complainant has given detailed explanation for its request in the Complaint that English (and not Chinese) be the language of proceedings. It would have been useful if this had been done, as the absence of such explanation have been done as it is more difficult for the Panel to make a determination on the filing language unless submissions are given by the parties. However, the Respondent did not comment on the language of the proceedings by the due date. These arguments will be dealt with in detail later in this decision under the language sub-heading. The Center appointed a panel familiar with both languages mentioned and left the issue of the language of the proceedings to be determined by this Panel.

3.5 In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2009.

3.6 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on November 23, 2009. The Panel finds that it was properly constituted. It 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

4.1 The Complainant has stated that in 1933, the LACOSTE mark was first introduced and a company was set up for the production of logo-embroidered shirts. The Complainant provided evidence in the form of well publicized press reports to show that the LACOSTE brand was one of the earliest sportswear brands in history and started out in logo-embroidered shirts wear for tennis, golf and sailing. Further evidence taken from print outs from the “” website was provided to the Panel. The print outs show that the company that is still operated by the Lacoste family has expanded its Lacoste product line to include a wide assortment of clothing styles, as well as items such as shoes, watches, home textiles, eyeglasses, and perfumes, which all bear the LACOSTE mark.

The Complainant had alleged, without providing any hard evidence, that the Complainant's “” website had 1.4 million unique visitors in 2007 and that at present, the Complainant allegedly operates more than 1,050 boutiques worldwide and has offered its products for sale through numerous additional retail outlets in over 113 countries.

Again without supporting evidence it was also alleged that in 2008, global wholesale turnover of Lacoste products was over EURO1.5 billion (USD2.185 billion) with two Lacoste-branded items sold every second of the year.

The Complainant claims in its Complaint that it has extensively used and is commonly referred to by the trade and consumers by the identifier, name and mark LACOSTE. Furthermore, the fame of the LACOSTE mark has been established and discussed in a variety of publications.

Time magazine article notes that the Lacoste polo shirt was “the first time a logo was used on the outside of a shirt.” The Complainant has also alleged that the LACOSTE name and marks and this name has become famous throughout the world and that it and its American licensees currently spend over USD15 million annually in the United States alone for advertisement and promotion of its services under its LACOSTE and LACOSTE-related marks. However, no evidence at all was shown on this issue of advertisement expenditure.

4.2 However, what is more persuasive to the Panel is the fact that the Complainant has annexed to its Complaint a long list of the websites operated by the Complainant, which include the following (all of which appear to be simple word marks):

- /uk (United Kingdom),

- /nl (Netherlands),

- /de (Germany),

- /france (France),

- /es (Spain),

- /au (Australia),

- /th (Thailand),

- /india (India),

- /china (china),

- /tr (turkey), and

- /ca (Canada). 5. Parties' Contentions A. Complainant

5.1 The Complainant contends that the Domain Name is identical or at least confusingly similar to the Complainant's trademarks. It complains that the Domain Name incorporates the Complainant's trademarks in its entirety.

(i) The generic term “buy” does nothing to distinguish the Domain Name from Complainant's mark. Instead, the term “buy” have given the false impression that consumers visiting the website associated with the Domain Name are able to purchase or “buy” authentic Lacoste merchandise from “www.”, rather than the counterfeit goods that are actually being sold by the Respondent.

(ii) The Complainant has submitted that visitors to the website associated with the Domain Name are likely to be left with the false impression that the Respondent is authorized to sell the Complainant's merchandise, and/or that the merchandise being sold by the Respondent is authentic and counterfeit.

(iii) The Complainant has also cited a previous WIPO decision of Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521 to support its contention that consumers and other third parties who search the Internet for legitimate retailers of the Complainant's goods may be directed to the Internet address incorporating the Domain Name, creating a probability of confusion.

5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:

(i) The Respondent is unable to demonstrate or establish any legitimate interest in the Domain Name. The Respondent registered the Domain Name on March 15, 2009, long after the Complainant had established rights in its LACOSTE mark through extensive use over the last 75 years.

(ii) Previous UDRP decisions such as Lacoste Alligator S.A. v. Domain Active Pty. Ltd., WIPO Case No. D2005-0673 has recognized that the LACOSTE is such a famous mark, so that its inclusion in another party's domain name is of illegitimate purposes.

(iii) There exists no relationship between the Respondent and the Complainant or any of its licensees or agents that would give rise to any license, permission, or authorization by which the Respondent could own or use the Domain Name.

(iv) The Respondent wanted to trade on the Complainant's renown to lure consumers to its site for the purpose of selling what is believed to be counterfeit Lacoste merchandise, or otherwise profiting from the consumer confusion.

5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:

(i) No legitimate Lacoste merchandise is being offered for sale at the disputed website and the Respondent's use of the Domain Name to sell counterfeit Lacoste merchandise is clearly in bad faith.

(ii) The Respondent currently earns revenue directly by drawing consumers to its site by its unauthorized use of the Complainant's LACOSTE mark in its Domain Name.

(iii) That there was a lack of response to the Complainant's cease-and-desist letter dated September 14, 2009.

The Complainant requests a decision that the Domain Name be transferred to the Complainant. B. Respondent

5.4 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language

6.1 The Complaint was filed in the English language. On October 19, 2009, the Center sent a notification to the parties concerning the language of proceeding in both Chinese and English. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the registrar concerned that the language of the registration agreement for the disputed domain name is Chinese. Pursuant to paragraph 11(a) of the Rules, the default language of the proceeding would typically be Chinese, as this is the language of the Domain Name Registration and Service Agreement and also in consideration of the fact that there is no express agreement to the contrary by the parties.

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. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

While the Complaint was submitted to the Respondent in the English language, there was neither a response nor any objection made by the Respondent. Although the Chinese language is the language of the registration agreement for the Domain Name, and the Complainant has in its Complaint requested that English be the language of proceedings, the Complainant has not provided extensive reasons as to why the English language should be the language of the proceeding.

Unfortunately, the cease and desist letter that had been sent on September 14, 2009 was also in the English language when it should have been in the Chinese language.

In the present case, the Respondent has not objected to English as the language of this proceeding. Although in this Panel's view the inability of the Complainant to communicate efficiently in the Chinese language is not of itself a sufficient basis for determining the language of proceedings, the Panel views that it is rather significant that there has not been any objection made by the Respondent at all on the issue of language. The Panel considered this issue carefully bearing in mind its broad powers given it by paragraph 11 (a) of the Rules. The Panel has noted that proper notification had been sent by the Center to the Respondent and the notification has also been sent in the Chinese language. As such, the Respondent has had proper notice and knowledge that these proceedings have been brought against it.

The Respondent chose to stay completely silent and has not protested to the choice of English language. Therefore, in consideration of all the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. Additionally, based on the Panel's discretion, along with the English language documents all Chinese language documents that have been submitted have also been reviewed by the Panel.

The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.

6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.3 This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the Complainant must prove that:

“(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 interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.”

6.5 Under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., / Titan Net/ NOLDC, Inc,WIPO Case No. D2006-0808). B. Identical or Confusingly Similar

6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

6.7 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the Domain Name's use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.8 The Complainant has appended to the Complaint a long list of registered trademarks and registered domain names that incorporate the word “lacoste”. It is quite clear that the Complainant is the owner of a large number of trademarks as well as registered domain names in various jurisdictions that comprise the word “lacoste”. Given this, the Panel has little difficulty in concluding that the Domain Name which fully incorporates the Complainant's trademark and the term “buy” and is confusing similar to a number of trademarks in which the Complainant has rights.

6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests

6.10 The Panel is satisfied that the Complainant has provided evidence showing that the trademarks for LACOSTE are widely known throughout the world, registered and is present in many countries, including China, where the Respondent is located.

At the heart of the Complaint is the Complainant's contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to its website, where it offers the same or similar services as those offered by the Complainant. The Panel accepts that such activity does not provide the Respondent with a right or legitimate interest in the Domain Name. Furthermore, the Respondent is wrongly trading on the Complainant's good name and is allegedly trading exclusively in counterfeited Lacoste products.

6.11 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name.

Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.

6.12 The Panel takes strong note of the fact that the Respondent has never used the term “lacoste” in any way before or after the Complainant registered its trademarks 75 years ago. The Respondent also knew or should have known of the registration of the many LACOSTE trademarks as well as registered domain names including the LACOSTE trademark which had preceded the registration of the Domain Name. As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).

6.13 As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name in such circumstances as the present, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).

6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent has made noncommercial or fair use of the name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services. The Respondent is in fact also allegedly trading in counterfeited goods and passing them off as genuine Lacoste products. The Panel thus finds that the Complainant has made a an unrebutted prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant's mark.

6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. D. Registered and Used in Bad Faith

6.16 The Panel accepts the Complainant's contention that the Respondent registered the Domain Name in the knowledge of the Complainant's business and its use of the LACOSTE trademark. This is inherently probable given the fact that the Complainant has demonstrated its widespread worldwide usage of the LACOSTE trademark all over the world, including China where the Respondent is based.

6.17 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the Domain Name with a view to intentionally create a likelihood of confusion with the Complainant's trademark, corporate name and domain name as to the source, sponsorship, affiliation and/or endorsement on its website, in all likelihood, for its own commercial gain.

6.18 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant to the source of a website.

6.19 Given that the Respondent has failed to show (for the reasons set out under the heading 6.B. Rights and Legitimate Interests above) that it was using the Domain Name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The Panel has no doubt that the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent's website. Furthermore, the fact that the address provided by the Respondent at the time he registered was insufficient is also an indication of the Respondent's bad faith. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.20. The Panel comes to the conclusion that the Respondent has very most likely registered the Domain Name in order to prevent the Complainant from adopting the trademark in a corresponding domain name. This has been done in bad faith as the Respondent knew or would have been well aware of the fact that the Respondent's choice to add “buy” to the term “lacoste” indicates the Respondent's knowledge of the Complainant's trademark when he registered the Domain Name as he likely knew that France is the location of the Complainant head office.

6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add one further point before drawing this decision to a close.

6.22 In coming to its decision the Panel has not given any weight to the Complainant's contention that the failure on the part of the Respondent to respond to its “cease and desist letter” and reminder letters in English language is also evidence of bad faith. The Panel accepts that the decision of the panel in America Online Inc. v. Viper,WIPO Case No. D2000-1198 suggests that this was one of a number of factors that was taken into account on the issue of bad faith registration and use in that case. Nevertheless, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. Also at all times it must be remembered that a respondent is under no obligation to respond to such a letter. It is always open to a respondent to sit back and make a complainant prove its case. (See Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, WIPO Case No. D2007-1918).

Furthermore, the fact that the Notice letter was not sent in the Chinese language further weakens the Complainant's case in this specific aspect. The Complainant ought to have at least sent such a cease and desist letter in the Chinese language, which is also the language in which the Domain Name has been registered. Nevertheless and notwithstanding the fact that the presentation of the Complainant and evidence to be found wanting in certain aspects, the Panel has been able to come to a conclusion on a clear balance of probabilities that the Respondent registered and used the Domain Name in bad faith for the other reasons given above without any reliance on the “cease and desist letter”. 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.

Dr Colin Yen Cheng Ong
Sole Panelist

Dated: December 19, 2009

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