Complainant is LeSportsac, Inc. of Reno, Nevada, United States of America, represented by Kenyon & Kenyon LLP, United States of America.
Respondent is Kathy Clapp of Phoenix, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 January 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 30, 2013.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 8, 2013. 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 owns the trademark LESPORTSAC. Complainant has registered the mark in over ninety countries throughout the world, including the United States and Australia. Since 1974, Complainant has continuously used and widely promoted LESPORTSAC as its principal trademark for soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories.
In each of the four years prior to the registration date of the Domain Name, Complainant spent approximately USD14,000,000 to advertise and promote its business and goods worldwide under the LESPORTSAC mark.
According to the publicly available WhoIs information, Respondent registered the Domain Name on August 21, 2012. 5. Parties’ Contentions A. Complainant
Complainant states that Respondent registered the Domain Name without the authorization, knowledge or consent of Complainant. Respondent is not an authorized dealer of LeSportsac goods, nor is Respondent a licensee of Complainant or authorized to use the LESPORTSAC mark. Complainant has never authorized Respondent to manufacture or promote any LeSportsac goods or services.
Complainant asserts that the Domain Name currently hosts a website that purports to sell genuine LeSportsac goods. Customers are deceived into believing that the merchandise offered for sale is authentic LeSportsac merchandise, but it is, in fact, counterfeit, infringing or stolen. Complainant’s marks are featured prominently throughout the website linked to the Domain Name, including as part of the name of specific products and in photographs of the products offered for sale. In addition to selling purportedly authentic LeSportsac bags, the website appears to be selling bags bearing other marks that incorporate the entirety of the LeSportsac Ellipse logo. Rather than bearing an authentic LeSportsac mark, such bags bear either the term “Sport” alone or a name comprised of Chinese characters (which are not the equivalent of the Chinese translation of any LeSportsac mark), in conjunction with the LeSportsac Ellipse Logo. In addition, the website appears to be selling bags that are purportedly authentic LeSportsac backpacks and laptop bags, but which clearly are not, as demonstrated by the lack of any branding whatsoever on these products. All authentic LeSportsac backpacks and laptop bags bear a LeSportsac mark. None of the bags on the website are manufactured by or under the control of Complainant. Even though many of the bags on the website prominently display the LeSportsac mark, such use of the mark is unauthorized and without Complainant’s permission. In addition, the print in several of Respondent’s bags infringes upon Complainant’s copyrighted prints.
Complainant alleges that through Respondent’s website, it offers for sale purported LeSportsac bags at less than fifty percent of the price at which authentic LeSportsac bags are offered for sale at retail. For example, some of the purported LeSportsac coin bags on the site are priced between USD 7.36 and USD 9.46 per bag, whereas authentic LeSportsac coin bags are priced at retail between USD 16 and USD 25 per bag. This discrepancy in price cannot be explained by differences in exchange rates. Accordingly, the bags on the website are not “grey market” goods. The only conceivable explanation is that the bags are counterfeit, infringing or stolen.
Respondent’s site shares many of the distinctelements of the “look and feel” of Complainant’s website, including the prominent use of the LESPORTSAC mark at the top left and a vertical column on the left side of the home page in which LeSportsac products are divided by category. The website also uses on its home page, without authorization, original advertisements for authentic LeSportsac products. i) Identical and Confusingly Similar to the LESPORTSAC Mark
Complainant contends that it has well-established rights in the LESPORTSAC mark, which date from as early as 1974. The Domain Name is almost identical to Complainant’s mark, with the only difference being that the term “LeSportsac” is followed by “Australia” and the generic top-level domain “.com.” Respondent’s second-level Domain Name merely adds to the LESPORTSAC mark the geographic designation “Australia.” This designation merely describes the fact that Australia is a country in which LeSportsac goods are sold and in which Complainant holds exclusive rights to the LESPORTSAC marks. Where an added geographic designation has relevance to a complainant or one of its products, there is an even stronger argument that a domain name is confusingly similar to the complainant’s mark.
Moreover, Complainant contends that even if Australia did not have significance vis-à-vis Complainant, the Domain Name would still be confusingly similar to Complainant’s LESPORTSAC mark because “Australia” does not differentiate the Domain Name from the trademark. For these reasons, the Domain Name is almost identical, and certainly confusingly similar, to Complainant’s well-known LESPORTSAC trademark. ii) No Rights or Legitimate Interests
Complainant states that Respondent has never been authorized by Complainant to use the LESPORTSAC mark on the website linked to the Domain Name, or to use the LESPORTSAC mark as part of a trademark or in the Domain Name itself. Moreover, Respondent, Kathy Clapp, is not and has never been commonly known by the Domain Name or by “LeSportsac”. Moreover, even if, through use of the Domain Name, Respondent has become known as “LeSportsacAustralia,” Respondent still would not be able to show any rights or legitimate interests in the Domain Name, since Respondent only began using the Domain Name well after establishment of Complainant’s mark. This is prima facie evidence that Respondent has no rights or any legitimate interests in the Domain Name.
Moreover, Complainant alleges that Respondent cannot establish any rights or legitimate interests in the Domain Name since Respondent has never made use of the Domain Name in connection with a bona fide offering of goods or services. In this case, Respondent not only uses the Domain Name to lure Internet users to Respondent’s website, but more egregiously, uses it to sell counterfeit, infringing or stolen LeSportsac products. Use of a domain name for purposes of trading on the goodwill of a well-known mark does not constitute a bona fide offering of goods and services. Accordingly, Respondent cannot show that it has used, or has prepared to use, the Domain Name in connection with a bona fide offering of goods or services. Furthermore, Respondent’s use of the Domain Name cannot qualify as a legitimate noncommercial or fair use of the Domain Name.
For all of these reasons, Complainant contends that Respondent cannot establish that it has any rights or legitimate interests in the Domain Name. iii) Registered and Used in Bad Faith
Complainant alleges that Respondent registered the Domain Name to misdirect Internet users interested in Complainant’s LeSportsac products to the Domain Name’s website by creating a likelihood of confusion with Complainant’s LESPORTSAC trademark. This is done for Respondent’s own commercial gain and clearly evidences bad faith. Moreover, Respondent’s registration and use of the Domain Name is more egregious than merely generating click-per-view revenue or misdirecting Internet users to third party website. Complainant is claiming that Respondent registered and uses the Domain Name to sell counterfeit, infringing or stolen LeSportsac products. In order to mislead consumers into believing that Respondent is an authorized dealer, Respondent purposely mimics the distinctive elements of Complainant’s website. Such illegal and confusingly deceptive activity is strong evidence that Respondent registered and uses the Domain Name in bad faith.
Complainant submits that prior UDRP panels have held that registering and using the famous LESPORTSAC trademark as part of a domain name that hosts a website selling counterfeit LeSportsac products may be further evidence of bad faith. Further, the Policy states that the circumstances which support a finding of bad faith are “without limitation.” (See Policy at paragraph 4(b)). Here, Complainant contends that in light of (i) Complainant’s well-established rights in the LESPORTSAC mark, (ii) the extent to and duration in which Complainant has promoted its trademark, (iii) the fact that the Domain Name includes the Complainant’s LESPORTSAC mark in its entirety, (iv) the fact that Respondent sells counterfeit, infringing or stolen LeSportsac goods on its website, and (v) the fact that Respondent has never been authorized to sell LeSportsac products, Respondent cannot conceivably be using the Domain Name in good faith.
Complainant has promoted its LESPORTSAC mark and related products for almost forty years. At no time has Respondent ever been known as the name “LeSportsac”, been affiliated with Complainant, or been authorized to sell products under the LESPORTSAC mark. Yet on August 21, 2012, Respondent chose to register as the Domain Name for a website selling counterfeit, infringing or stolen LeSportsac goods. Complainant asserts therefore that, at the time of registration of the Domain Name, Respondent knew of Complainant and its LESPORTSAC mark. The gap of over thirty years between the initial registration of the LESPORTSAC mark and Respondent’s registration of the Domain Name supports a finding of bad faith by foreclosing any possibility that Respondent registered the Domain Name without knowledge of Complainant’s rights
For all of these reasons, Complainant contends there is no doubt that Respondent registered, and uses, the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the 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 to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its LESPORTSAC trademark, just as previous WIPO UDRP panels have found that Complainant has rights in this mark and that it has achieved widespread reputation in producing LESPORTSAC brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories. See LeSportsac, Inc. v. Whois Privacy ProtectionService/liyanghua,WIPO Case No. D2012-1282; LeSportsac, Inc. v. Jiamin Zhang a.k.a. hangjizmin z,WIPO Case No. D2012-1542; LeSportsac, Inc. v. DomainAdministrator,WIPO Case No. D2010-2071.
Further, the Panel finds that the Domain Name is confusingly similar to Complainant’s mark, incorporating Complainant’s LESPORTSAC mark entirely while adding the geographic designation “Australia.” The country designation, Australia, does not serve to distinguish the Domain name, particularly as Complainant has registered its trademark also in Australia and markets its products there.
Because the Domain Name is confusingly similar to Complainant’s LESPORTSAC mark, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with Complainant. However, it is well established 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein.
Here, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption. Respondent, however, failed to submit a Response.
Complainant has shown that it has well-established rights in its LESPORTSAC mark, which has been registered in over ninety countries throughout the world, including the United States since 1979 and Australia since 1980. Both of these trademark registrations long precede Respondent’s registration of the Domain Name in August 2012. Moreover, Respondent is not an authorized dealer of LeSportsac products; there has been no evidence adduced to show that Respondent is using the Domain Name in connection with a bona fide offering of goods or services; there is no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the LESPORTSAC mark; there is no evidence to show that Respondent has been commonly known by the Domain Name; and there is no evidence to show that Respondent is making a legitimate noncommercial or fair use of the Domain Name. By contrast, according to the information provided by Complainant, which is not refuted by Respondent, Respondent has been using the Domain Name in connection with a website selling what appears to be counterfeit, infringing or stolen Complainant’s goods and competitors’ products.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. According, the Panel decides that Complainant meets the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Complainant has a widespread reputation in its LESPORTSAC mark. Complainant has registered the mark internationally, including in the United States (where Respondent is located) and Australia (the market apparently targeted by Respondent’s website), and promoted it for over 30 years. Moreover, the Domain Name currently hosts a website that purports to sell genuine LeSportsac goods. As such, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark at the time of registration of the Domain Name in August 2012. Instead, the Panel concludes that the Domain Name was registered in bad faith with the intent to create an impression of an association with Complainant’s Lesportsac branded products. See Benetton Group S.p.A. v. Azra Khan,WIPO Case No. D2002-0810 (“Given the Complainant’s numerous trademark registrations and its wide reputation with connection with the mark United Colors of Benetton, it is also hard to conceive that the Respondent could legitimately use the Domain Name.”).
Further, given the widespread reputation of the LESPORTSAC mark, the Panel finds that the public is likely to be confused into thinking that the Domain Name has a connection with Complainant. Respondent has, through the use of the confusingly similar Domain Name and webpage contents, created a likelihood of confusion with the LESPORTSAC mark. According to the information provided by Complainant, Respondent has been using the Domain Name in connection with a website which appears to be selling counterfeit, infringing or stolen LeSportsac goods and competitors’ products. Accordingly, the Panel concludes that the Domain Name is being used by Respondent in bad faith. See Bank of Nova Scotia v. Domain Administration Limited,WIPO Case No. D2007-0883 (finding bad faith on the ground that respondent “ha[d] chosen to register Complainant’s mark as a domain name in order to divert Internet traffic away from Complainant’s website for the purpose of disrupting Complainant’s business for monetarygain”); Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512 (“Respondents sought to trade on the good will and reputation of the Complainant by incorporating the entirety of the DELL mark into the disputed domain name, and then using the disputed domain name to direct Internet users to the Respondents’ website . . . . [W]hen a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith.’”).
In summary, Respondent by choosing to register and use the Domain Name, which is confusingly similar to Complainant’s LESPORTSAC mark, intended to ride on the goodwill of Complainant’s mark. It did so in an attempt to exploit, for commercial gain, Internet users looking for Complainant’s LeSportsac goods. In the absence of evidence to the contrary and any rebuttal from Respondent, the choice of the Domain Name and the conduct of Respondent on the website to which it resolves is indicative of registration and use of the Domain Name in bad faith.
The Panel therefore determines that the Domain Name was registered and is being used in bad faith and therefore, Complainant has met the third condition of paragraph 4(a) of the Policy. 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 Name, , be transferred to the Complainant.
Christopher S. Gibson
Sole Panelist
Date: March 3, 2013
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