The Complainant is LACOSTE of Paris, France and LACOSTE ALLIGATOR SA of Geneva, Switzerland, represented by AARPI Clairmont Avocats, France.
The Respondent is Domain Manager of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2016.
The Center appointed Isabelle Leroux as the sole panelist in this matter on December 6, 2016. 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
The Complainants are two entities of the French group Lacoste, which is one of the world’s leading companies in clothing and fashion accessory design and manufacture. The Complainants’ brand was named after one of its founders, René Lacoste, the famous tennis player, who helped introduce the Complainants’ products in the 1930s.
The Complainants commercialize their products all over the world through numerous shops and websites.
The Complainants own and use several trademarks all around the world, including the trademark LACOSTE, international trademark registration number 437000, registered on April 25, 1978, and maintain numerous domain names which incorporate “lacoste”.
The disputed domain name was registered on August 11, 2016.
The disputed domain name resolves to an active website dedicated to Lacoste consumer feedback. It also has a section with links to the official Lacoste website, Facebook, Twitter and Instagram. The official Lacoste telephone number (i.e., its contact information in New York) is indicated. This section is headed by the famous crocodile logo of the Complainants as well as their Lacoste trademark.
A disclaimer appears on the litigious website:
“Disclaimer: This site is provided to facilitate free speech regarding Lacoste. No direct endorsement or association should be conferred.”
According to the WhoIs records, the Respondent is based in France. 5. Parties’ Contentions A. Complainants
The Complainants maintain that the brand Lacoste is one of the most well-known sportswear brands in the world due to its extensive sales and public recognition by third parties, as it has been held by prior UDRP panels (Lacoste Alligator S.A. v. Domaine Active Pty. Ltd.,WIPO Case No. D2005-0673; Lacoste Alligator S.A. v. Zhang Jian, chen jianjie, Zheng Hao, Tian Ya, Li Da Mao Yi, Chen Liang, Xue Dong, xixi, Afgsd, Haosu, Yuchi, li li, Lan Tian, MeryGoce, IbryCare, China,WIPO Case No. D2012-0402).
The Complainants contend that the disputed domain name is identical to their prior LACOSTE trademarks and domain names.
The Complainants explain that the disputed domain name incorporates the LACOSTE trademarks in their entirety and that the addition of the generic suffix “.feedback” should be regarded as irrelevant regarding the examination of the identity or similarity between the distinctive trademark and the disputed domain name. The Complainants provide summaries of prior UDRP decisions which stated that the addition of a generic term is not likely to diminish the likelihood of confusion between a trademark and a domain name. But more than that, the Complainants contend that the descriptive suffix increases the confusing similarity between the two because it suggests a website for consumers to provide comments to the Lacoste companies with respect to the Lacoste goods and services.
The Complainants contend that the Respondent has no right or legitimate interest in the disputed domain name because there is no relationship of any kind between the Complainants and the Respondent.
The Complainants also submit that the Respondent registered the disputed domain name in bad faith:
(i) The visibility of the trademark LACOSTE means that the Respondent knew, or should have known the Complainants’ rights and did not register the disputed domain name fortuitously; and
(ii) The Respondent indicated as being its own postal and email addresses the postal and email addresses of the French Complainant.
In addition, the Complainants state that the Respondent is also using the disputed domain name in bad faith as it (i) extensively reproduces the LACOSTE trademarks, including the famous crocodile logo, (ii) intentionally creates confusion between it and the Complainants (notably by giving official information and links to consumers) and (iii) features non-reliable consumer reviews (selection of only favorable reviews posted on another website and identically reproduced on the litigious website except for the posting dates which have been modified).
Moreover, the Complainants assert that the disclaimer is small and useless.
For all these reasons, the Complainants request that the disputed domain name be transferred from the Respondent to them. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Under paragraph 4 of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark to which the Complainants have rights; and
(ii) the Respondent has no right or legitimate interest in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The Complainants demonstrate that they have rights in many LACOSTE trademarks and that the disputed domain name incorporates the LACOSTE trademarks in its entirety.
It has been held in numerous UDRP decisions that the addition of a generic or descriptive term to a trademark in a domain name is insufficient to avoid a finding of confusing similarity under the first element of the UDRP.
Moreover, previous UDRP panels have held that a domain name was identical to a trademark disregarding the domain “.feedback” (De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465) and that the addition of the word “feedback” tends to increase rather than diminish the confusing similarity (Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833).
Therefore, the Panel finds the disputed domain name identical to the trademarks in which the Complainants have rights.
As a result, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants have not licensed or otherwise permitted the Respondent to use their trademarks or the disputed domain name. They also state that the Respondent registered and is using the disputed domain name to attract visitors to its website by trading off the Complainants’ notoriety which harms their reputation.
The factual background, with the renown of the Complainants’ trademarks, is usually sufficient to raise a prima facie case that the Respondent does not have any right or legitimate interest.
In the present case, the apparent content of the website immediately raises the potential for the Respondent to have rights or a legitimate interest in the disputed domain name.
As noted above, the main part of the content on the website to which the disputed domain name resolves appears to be consumer reviews of services.
The fact that the Respondent creates confusion between it and the Complainants by (i) extensively reproducing the LACOSTE trademarks including the famous crocodile logo, (ii) providing links to official Lacoste website and social networks, and (iii) reproducing only the best consumer reviews copied from another website and changing the posted dates of same, supports the Complainants’ claim that this apparent usage is not a legitimate noncommercial or fair use.
The Panel notes that the appearance of the website and the consumer reviews are extremely suspicious. It provides strong support to the Complainants’ allegation.
The Complainants have provided prima facie evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the burden of production therefore shifts to the Respondent to come forward with evidence demonstrating the rights or legitimate interests it may have.
However, the Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain names.
There is no evidence in the record to indicate that the Respondent is licensed to use the Complainants’ LACOSTE trademarks, that the Respondent is associated or affiliated with the Complainants, or that the Respondent has any other rights or legitimate interests in the term LACOSTE.
The Panel, also in light of its findings below, finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The Complainants persuasively argue that the Respondent has registered and used the disputed domain name in bad faith.
Given the notoriety of the Complainant’s LACOSTE trademark, it is implausible that the Respondent was unaware of the trademark when registering the disputed domain name given that it incorporates this trademark in its entirety.
Doubts on the bad faith of the Respondent, if any, are removed by the illegitimate use of the postal and email addresses of the Complainants in the WhoIs contact information.
Furthermore, the presence of the disclaimer on the Respondent's Website does not cure bad faith, as the confusion still arises.
The Respondent has both registered and uses the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complainants have met the requirement of paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainants.
Isabelle Leroux
Sole Panelist
Date: December 20, 2016
Full & Egal Universal Law Academy