WIPO Domain Name Decision D2012-1282 for lesportsac1974.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LeSportsac, Inc. v. Whois Privacy Protection Service/ liyanghua Case No. D2012-1282 1. The Parties

Complainant is LeSportsac, Inc. of Reno, Nevada, United States of America, represented by Edwards Wildman Palmer LLP, United States of America.

Respondent is Whois Privacy Protection Service / liyanghua of Xiamen, Fujian, China. 2. The Domain Name and Registrar

The disputed domain name is registered with B, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2012. The amended Complaint was filed with the Center on June 23, 2012. On June 22, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On June 27, 2012, B, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 29, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On June 30, 2012, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 30, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on August 27, 2012. 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.

The Panel notes the Registrar confirmed “Whois Privacy Protection Service” as the registrant of the disputed domain name, however, the WhoIs information disclosed “liyanghua” as the registrant. On September 20, 2012, the Panel issued the Administrative Panel Procedural Order No.1, in which the Panel invited the Complainant to file an amendment to the Complaint, instructed the Center to re-notify the Complaint to the Respondent, and allowed the Respondent a further period of 20 days to submit any Response.

As requested, the Complainant submitted the amended Complaint on September 25, 2012. The Center re-notified the Complaint and the amended Complaint to the Respondent on September 26, 2012. The Response due date was October 17, 2012. Respondent did not submit any response. 4. Factual Background

Complainant, LeSportsac, Inc, is a company incorporated in Reno, Nevada, United States of America (“United States”). Complainant is the owner of LESPORTSAC and other LESPORTSAC related trademark in over ninety (90) countries throughout the world, including the United States (1979) and China (since 1996). (Annex C to the Complaint). Since 1974, Complainant has used LESPORTSAC mark to brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories. In the past four years, its worldwide sales for each year were approximately USD 300,000,000.

Respondent is liyanghua of Xiamen, Fujian, China. The disputed domain name was registered by Respondent on July 6, 2011, long after the LESPORTSAC mark became internationally famous. 5. Parties’ Contentions A. Complainant

(a) The Disputed Domain Name is Confusingly Similar to the LESPORTSAC Marks in Which Complainant Has Well-Established Rights; Complainant owns and has extremely well-established rights in the LESPORTSAC Marks, under which it has provided goods since 1974.

The disputed domain name is identical or confusingly similar to Complainant’s LESPORTSAC trademark, with the only differences being that the term “LeSportsac” is followed by “1974” and the generic top-level domain (gTLD) “.com.”

UDRP panels have consistently held that disputed domain names are confusingly similar to established marks if they incorporate the mark or a variation of the mark. The addition of a gTLD to a trademark to create a domain name is irrelevant when considering the similarity of a domain name to the trademark.

Respondent’s second level domain merely adds the year “1974,” which is a descriptive term in that 1974 was the year that the Complainant was founded, to the LESPORTSAC trademark.

As such, consumers are likely to be attracted to such a website based on the mistaken belief that it is an authorized site where they can enter into transactions for Complainant’s goods or with third-parties affiliated with Complainant.

The added number (1974) has relevance to Complainant or one of its products, there is an even stronger argument that the disputed domain name is confusingly similar to Complainant’s mark.

(b) Respondent Has No Rights or Legitimate Interests in Respect of the Disputed Domain Name;

Respondent has never been authorized by Complainant to use any of the LESPORTSAC Marks or any mark confusingly similar thereto as a mark or as part of a domain name.

Respondent has never made any use of, or demonstrable preparations to use, the disputed Domain Name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

A respondent’s use of a domain name to intentionally trade on the well-known marks of another to lure Internet users to respondent’s website that offers goods or services that are competitive with those of the trademark owner cannot and does not constitute a bona fide offering of goods or services. Knowing adoption of infringing domain names does not constitute a bona fide offering and cannot establish legitimate interests in the domain name.

Respondent is not merely using the disputed domain name to lure Internet users to Respondent’s website to purchase goods, but also is using the disputed domain name to sell counterfeit copies of Complainant’s Lesportsac branded goods.

Respondent has never been commonly known by the disputed domain name.

Respondent’s use of the disputed domain name misdirects potential visitors seeking Complainant’s website to the website of Respondent, which offers counterfeit merchandise for sale, presumably for profit. This does not constitute a legitimate noncommercial or fair use of the disputed domain name under the Policy.

Respondent has appropriated elements of Complainant’s website. This circumstance further supports the conclusion that Respondent cannot show a right or legitimate interest in the use of the disputed domain name.

(c) The domain name was registered and is being used in bad faith.

The only evident reason for Respondent to have registered the disputed domain name for a website was to attract Internet users interested in Complainant’s LESPORTSAC products for Respondent’s commercial gain.

Under the Policy, registration and use of a domain name in order to misdirect potential visitors to a respondent’s website that displays banner advertisements or links to third-party commercial websites or subjects users to unsolicited popup advertisements, for monetary gain, is evidence of bad faith.

Respondent’s use of the disputed domain name is not merely generating click-per-view revenue or misdirecting visitors to a third party’s website, but also is for selling counterfeit copies of Complainant’s Lesportsac goods.

Respondent’s use of the disputed domain name is not merely generating click-per-view revenue or misdirecting visitors to a third party’s website, but also for selling counterfeit copies of Complainant’s Lesportsac goods.

Respondent’s prominent use of logos that are identical to Complainant’s LESPORTSAC and design trademark throughout its website and its adoption of other elements of Complainant’s trade dress for its website are designed to mislead Internet users into believing they have reached Complainant’s website.

In light of Complainant’s well-established rights in the LESPORTSAC Marks, there is no conceivable way that Respondent could use the disputed domain name in good faith.

The selection of the disputed domain name to sell counterfeit Lesportsac products evidences that, prior to registration of the disputed domain name, Respondent had knowledge of Complainant’s rights in its LESPORTSAC Marks.

The gap of twenty-eight years between the initial registration of the LESPORTSAC Marks and Respondent’s registration of the disputed domain name is also an indication of bad faith. B. Respondent

Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. 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. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) As shown by the representative screen shots, the website is entirely in English.

(b) The site offers a “Live Chat” via a telephone number with an area code for the State of Utah in the United States.

(c) The advertised counterfeit products are shipped to the United States, with packaging written in English.

(d) Nothing in Respondent’s use of the disputed domain name suggests that Respondent has familiarity with any language other than English. Respondent is conversant and proficient in English.

(e) All of the communications from the Center to the parties will be transmitted both in Chinese and English. If this proceeding is conducted in English, the prejudice to Respondent, if any at all, from reading and potentially writing in a language which Respondent fully understands and operates its business would be minimal.

(f) Complainant is a United States company with United States counsel. All of Complainant’s exhibits are in English. If the language of this proceeding were in English, Complainant would be unduly disadvantaged as it would need to incur significant expense to engage a qualified translator to translate its Complaint and exhibits from English to Chinese.

(g) Requiring a translation from English to Chinese would likely delay the proceeding because the translation would be time-consuming.

(h) The circumstances of this case as described above are similar to other cases where the language of the registration agreement was Chinese, but the panel determined that the proceeding should proceed in English.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the United States, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “lesportsac” and the number “1974” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex D to the Complaint); (c) the Website appears to have been directed to Internet users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the LESPORTSAC Mark acquired through registration. The LESPORTSAC Mark has been registered worldwide including in the United States and China, and Complainant has a widespread reputation in producing LESPORTSAC brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories.

The disputed domain name comprises the LESPORTSAC Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the suffix “1974” to the mark LESPORTSAC. This does not seem to eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous WIPO UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive term “1974” as a suffix to Complainant’s mark fails to distinguish the disputed domain name from Complainant’s mark. By contrast, it may increase the likelihood of confusion. The added number (1974) has relevance to Complainant. 1974 was the year that Complainant was founded. Consumers who visit the website at the disputed domain name are likely to be confused and may falsely believe that the disputed domain name is an official website operated or authorized by Complainant for selling LESPORTSAC-branded products.

Thus, the Panel finds that the suffix “1974” is not sufficient to negate the confusing similarity between the disputed domain name and the LESPORTSAC Mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the LESPORTSAC Mark in over ninety (90) countries throughout the world, including the United States since 1979 and China since 1996 (Annex C to the Complaint) which long precedes Respondent’s registration of the disputed domain name (July 6, 2011). According to Complainant, since 1974, Complainant has used LESPORTSAC mark to brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories. In the past four years, its worldwide sales for each year were approximately USD 300,000,000.

Moreover, Respondent is not an authorized dealer of LESPORTSAC branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “lesportsac” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the LESPORTSAC Mark or to apply for or use any domain name incorporating the LESPORTSAC Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on July 6, 2011. The disputed domain name is identical or confusingly similar to Complainant’s LESPORTSAC Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported LESPORTSAC products on the website at the disputed domain name (Annex D to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

Complainant claimed that Respondent’s use of the disputed domain name is not merely generating click-per-view revenue or misdirecting visitors to a third party’s website, but also is for selling counterfeit copies of Complainant’s Lesportsac goods. Based on the information provided by Complainant, it does not seem to this Panel that Respondent is selling “counterfeit” Lesportsac branded products (Annex E to the Complaint). However, whether the goods sold on the website are counterfeit or not, does not influence the Panel’s overall finding in this proceeding as further discussed below.

The Panel finds that Complainant has a widespread reputation in the LESPORTSAC Mark with regard to its products. Complainant has registered its LESPORTSAC Marks internationally, including the United States registration since 1979 and China registration since 1996. As such, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name (in 2011). The Panel therefore finds that the LESPORTSAC Mark is not one that Respondent could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s LESPORTSAC branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s LESPORTSAC branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the LESPORTSAC Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (Annex D to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the LESPORTSAC Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website at the disputed domain name is either Complainant’s site or the site of an official authorized partner of Complainant, which it is not the case. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 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 disputed domain name be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: October 29, 2012

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