Complainant is Jean Cassegrain S.A.S. of Paris, France, represented by Reed Smith LLP, China.
Respondent is Abel Magee of Fuzhou, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2011. On September 19, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On September 19, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 regarding the file size of the annexes to the Complaint, Complainant filed an amended Complaint on September 27, 2011.
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 Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on November 10, 2011. 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
Complainant is a French firm founded in 1948 and incorporated in 1958. Complainant manufactures and sells around the world handbags, clothing, footwear, headgear, traveling bags and wallets, etc.
In 2001 Complainant was accepted as a member of the Comité Colbert, a group of French companies known by the excellence and quality of their products and brands. Membership means being one of the manufacturers of famous French quality products.
Complainant owns numerous registrations for the mark LONGCHAMP in various countries, including China, the country of residence of Respondent. Complainant’s LONGCHAMP trademark registrations in China include, inter alia, Reg. No. 7103273, Reg. Date June 13, 2010, covering leather, unworked or semi-worked; imitations of leather, animal skins, hides; trunks (luggage) and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, handbags, wallets, purses, key-bags (of leather), shopping bags, school bag, briefcases, fur, rucksacks (for mountaineering or traveling), suitcases, garment bags for travel; leather sheet, attaché cases, card cases made of leather, cheque book cover made of leather, credit card cases (pocket book) made of leather, key cases (leatherware), passport holders (made of leather), luggage, multi-use cases/bags made of leather, of International Class 18.
The disputed domain names and were registered on June 10, 2011. The disputed domain name was registered on June 20, 2011. The disputed domain names , , and were registered on June 29, 2011. The disputed domain names , and were registered on July 12, 2011. The disputed domain name was registered on July 18, 2011. The disputed domain name was registered on August 8, 2011.
On November 23, 2011 the Panel conducted an independent visit to the websites to which the disputed domain names resolve. Therein, Complainant is clearly impersonated, texts in French with numerous syntactical and orthographic mistakes are posted, and Longchamp bags are offered for sale. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends the following:
The disputed domain names reproduce Complainant's LONGCHAMP mark. The additional elements (“sac”/ “bags”/ “bag”/ “handbags”) are all descriptive. “Sac” is a French word meaning “bag”. Hence the disputed domain names are identical and/or confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not affiliated with Complainant, is not a licensee of Complainant and is not authorized by Complainant to use the LONGCHAMP mark or any similar marks as a domain name or otherwise. Upon browsing the disputed domain names, Internet users are being redirected to Respondent’s websites containing numerous references to Complainant's LONGCHAMP mark and where pictures of bags together with references to this mark are shown. It is apparent that Respondent is trying to present its websites as an authorized LONGCHAMP retail outlet, which it is not. All the bags posted on Respondent's websites are being offered for sale at a price substantially lower than the official price of genuine products. Such bags are not likely to be Complainant's genuine bags. All Complainant’s genuine products are sold through authorized sellers. It is impossible for Respondent to possess such number of genuine Longchamp bags of different sizes and colors for sale, as it claims. Respondent has registered the disputed domain names for the purpose of operating its websites offering counterfeit LONGCHAMP bags and other products for sale.
Having regard to the contentions above, the fact that the disputed domain names comprise the term “longchamp” and that the corresponding websites are being used to offer counterfeit Longchamp bags for sale, suggests that the disputed domain names have been registered in bad faith and demonstrates that Respondent has tried to benefit unfairly from the reputation of Complainant’s mark and bags. Respondent's use of the disputed domain names creates a likelihood of confusion with Complainant's LONGCHAMP mark as to the source, sponsorship, affiliation or endorsement of the websites accessible under the disputed domain names and also the counterfeit Longchamp bags being offered therein. Respondent registered the disputed domain names solely for the purpose of diverting attention and Internet traffic to Respondent's websites so as to promote sales of its counterfeit Longchamp bags. B. Respondent
Respondent did not reply to Complainant’s contentions, and is in default. 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has shown that it owns trademark rights in the LONGCHAMP mark registered in China and elsewhere.
The disputed domain names , , and incorporate the LONGCHAMP mark in its entirety, adding only the descriptive term “sac” (French for “bag”) and the gTLD. The disputed domain names , , , , , , , , also incorporate Complainant's LONGCHAMP mark in its entirety, adding only the descriptive terms “bag” or “bags” and the gTLD.
It is well established that the addition in a domain name of descriptive or generic terms or of gTLDs to a mark is generally inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9:
“Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark? […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name […].”
Moreover, in the present case the addition of the descriptive terms “sac” and “bag” (or “bags”) in the disputed domain names rather reinforce the association of Complainant's LONGCHAMP mark with products precisely protected by the mark. The addition of the letter “s” to the mark in three of the disputed domain names also is inapt to dispel an impression of confusion with Complainant's mark.
The Panel concludes that the disputed domain names are confusingly similar to Complainant's LONGCHAMP mark. The first element of the Policy, paragraph 4(a) is thus met. B. Rights or Legitimate Interests
Complainant contends that Respondent is not affiliated with Complainant, that it is not a licensee of Complainant and that it is not authorized by Complainant to use the LONGCHAMP mark or any similar marks as a domain name or otherwise. Complainant adds that upon browsing the disputed domain names, Internet users are being redirected to Respondent’s websites, which contain numerous references to Complainant's LONGCHAMP mark and where pictures of bags are shown Complainant also contends that Respondent is trying to present its websites as an authorized Longchamp retail outlet, which it is not. Further, all the bags posted on Respondent's websites are offered in large numbers and are being offered for sale at a price substantially lower than the official price of genuine Longchamp bags. Accordingly, such bags are not likely to be Complainant's genuine bags because all Complainants’ genuine products are sold through authorized sellers. It is impossible for Respondent to possess large numbers of genuine Longchamp bags of different sizes and colors for sale, as it claims. Therefore Respondent has registered the disputed domain names for the purpose of operating its websites offering counterfeit Longchamp bags and other products for sale.
Considered together, Complainant’s contentions and supporting evidence, including the printouts of Respondent’s websites at the disputed domain names, are sufficient to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel agrees with Complainant that given that the bags shown in Respondent’s sites are offered in large numbers and at prices substantially lower than those of genuine Longchamp bags, the goods offered by Respondent are most likely counterfeit.
An offer of counterfeit goods for sale cannot be a legitimate use of the disputed domain names. See Cartier International, N.V. , Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758 (“The Respondent is using the disputed domain name to offer for sale counterfeit imitations of the Complainant's branded products. This is not a legitimate use of the domain name.”); see also Guccio Gucci S.p.A. v. Edardy Ou,WIPO Case No. D2011-1028 (“Use of a trade mark to sell what appears to be counterfeit goods using the Complainant’s Gucci brand and other well-known brands is clearly not a bona fide use in relation to goods or fair use and is not non-commercial.”)
Since Respondent has failed to come forward with any elements in its own favor, the Panel finds that it lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Complainant has shown that it regularly sells its Longchamp goods in China and that the LONGCHAMP mark was registered in China, where Respondent resides, before the registration of the disputed domain names. Moreover, Complainant's LONGCHAMP mark is famous. See S.A.S. Jean Cassegrain v. Yeon-Gu Kim,WIPO Case No. D2005-0275 (finding that Complainant's LONGCHAMP trademark is famous worldwide). From this the Panel infers that Respondent registered the disputed domain names, incorporating Complainant’s LONGCHAMP mark in its entirety, with Complainant's mark and products in mind. Since Respondent is selling presumably counterfeit goods under the LONGCHAMP mark, it necessarily must have known Complainant and its products at the time of the registration of the disputed domain names. Therefore the Panel concludes that the registration of the disputed domain names was made in bad faith.
As seen above, Respondent apparently is using the disputed domain names to redirect users to websites where presumably counterfeit goods under the LONGCHAMP mark are being offered for sale. This is evidence of bad faith use of the disputed domain names. See Moncler S.r.l. v. Daniel Park,WIPO Case No. D2011-0488 (“Respondent used Complainant’s known trademark to attract users to websites offering counterfeited MONCLER products and to a parking page. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.”) This is a circumstance of bad faith registration and use of the domain name pursuant to Policy, paragraph 4(b)(iv).
The Panel concludes that the disputed domain names were registered and are being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , , , , , , , , and be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Dated: November 23, 2011
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