ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Louis Vuitton Malletier v. Niko Porikos Case No. D2022-4097 1. The Parties The Complainant is Louis Vuitton Malletier, France, represented by Studio Barbero, Italy. The Respondent is Niko Porikos, United States of America ("United States"), represented by William Farah, Esq., United States. 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2022. On October 31, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent ("Contact Privacy Inc. Customer 7151571251") and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 4, 2022. The Center verified that the Complaint together with the amendment to 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 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2022. The Respondent obtained an extension of time to file a response until December 5, 2022 and submitted a Response on December 6, 2022. The Center appointed John Swinson as the sole panelist in this matter on December 19, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Since the 1850s, the Complainant and its predecessors have operated the well-known fashion brand "Louis Vuitton". The Complainant's website is located at "www.louisvuitton.com". The Complainant owns many trademarks worldwide for LOUIS VUITTON, including United States Trademark Registration No. 1045932, filed on August 13, 1975, registered on August 10, 1976, in class 18. According to the Complaint, in August 2021, Louis Vuitton entered into the metaverse, launching an adventure-based game called "Louis the Game" - also connected to 30 non-fungible tokens ("NFT") - to celebrate the Complainant's 200th anniversary and commemorate the founder. This role-playing game is centered around the life of Louis Vuitton. Vivienne, a wooden doll mascot, runs around six different whimsical worlds recreating the journey of Louis Vuitton. Players can dress Vivienne with various Louis Vuitton accessories which are collected throughout the game. The Respondent filed a short response but provided little detail about the Respondent. According to the Registrar's records, the Respondent has an address in the United States. According to the Response, the Respondent has launched numerous projects in the NFT space under legitimate licenses with large corporations and has consulted for multiple notable blockchain based companies on web3 IP applications and NFT projects for teams in the National Football League and National Hockey League. The disputed domain name was registered on March 8, 2021. As of November 11, 2022, the disputed domain name resolved to an error page. At the date of decision (January 1, 2023), the disputed domain name redirected to which appears to be a website for an online advertising agency in Michigan, United States. The Complainant sent a demand letter (and several follow up reminders) to the Respondent. The Respondent did not reply to this correspondence. 5. Parties' Contentions A. Complainant In summary, the Complainant makes the following submissions: The Complainant owns many trademark registrations for LOUIS VUITTON. The LOUIS VUITTON trademark has thus been used by the Complainant for more than 165 years in connection with luxury leather goods, products of the high-fashion, accessories as well as fragrances and cosmetics. The disputed domain name entirely reproduces the LOUIS VUITTON trademark with the sole addition of the term "nft", which is clearly the acronym of "non-fungible token" and does not prevent a finding of confusing similarity. The Respondent registered the disputed domain name without authorization of the Respondent. page 3 The Respondent is not a licensee, authorized agent of Complainant or in any other way authorized to use the Complainant's trademark. The Complainant is not in possession of, nor is aware of, the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization. At the date that the Complaint was filed, the disputed domain name did not resolve to an active website. There is no evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before or after any notice of the present dispute. On April 27, 2022, the Complainant's representative sent a Cease and Desist letter to the Respondent, requesting transfer of the disputed domain name to the Complainant. Reminders were also sent, but no response was received. In light of the fact that the LOUIS VUITTON trademark is well-known and has been used extensively since 1850s in many countries of the world, and considering that the Complainant's LOUIS VUITTON trademark and products are also promoted and offered for sale by the Complainant online via its website at "www.louisvuitton.com", the Respondent was undoubtedly aware of the existence of the Complainant's trademark and of the fact that the disputed domain name was confusingly similar to such trademark at the time of the registration of the disputed domain name. It is inconceivable that the Respondent was not well aware of the Complainant's trademark rights at the time of the registration of the disputed domain name. Given the distinctiveness and reputation of the Complainant's trademark, the Respondent clearly acted in opportunistic bad faith, by registering the disputed domain name with full knowledge of the Complainant's trademark for the purpose of taking some advantage of the same. The inclusion of the term "NFTs," an acronym for "non-fungible tokens," exacerbates the risk of consumer confusion due to the rising popularity of NFTs and the Complainant's online presence in the digital fashion space. B. Respondent The Respondent filed a Response that was in the nature of a United States court pleading or defense, for example, admitting or denying statements made in the Complaint. There were no substantive matters set out in the Response, other than the following statement: "No action taken by the Respondent was in bad faith and Respondent vehemently denies such libelous claims." Within the Response, the Respondent requests another extension "to investigate this matter further and to discuss a potential resolution with Complainant's counsel." The Panel notes the composition of the disputed domain name, and its similarity with the Complainant's trademark, that the Respondent has had sufficient opportunities as contemplated under the Rules to submit a full Response, and that the Complainant has not indicated any willingness to settle this proceeding. Therefore, the Panel will proceed with issuing its decision. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: page 4 (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. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns trademark registrations for LOUIS VUITTON. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371; and Captain Fin Co. LLC v. Private Registration, NameBrightPrivacy.com / Adam Grunwerg, WIPO Case No. D2021-3279. The disputed domain name includes LOUIS VUITTON in its entirety, and adds "nft" at the end of the disputed domain name. The addition of terms in the disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the Complainant's trademark under the Policy. The Panel concludes that the disputed domain name is confusingly similar to the Complainant's LOUIS VUITTON trademark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests The Complainant's allegations to support the Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A. The Complainant has rights in its trademark which precedes the Respondent's registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or that the disputed domain name has been used in any legitimate way. The Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent had the opportunity to come forward and present evidence that he has rights or legitimate interests in the disputed domain name. He did not do so. While the Respondent may have an interest in launching NFT projects, the Panel notes that in itself is not sufficient for the purposes of the Policy to give rise to rights or legitimate interests in the registration of a domain name reproducing a well-known trademark. page 5 The Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant and its trademark. The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by the complainant. Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Case No. D2014-1747. The Complainant's LOUIS VUITTON trademark is extremely well-known. The disputed domain name currently redirects to a digital advertising business website that appears to be associated with the Respondent. At the time of the submission of the Complaint, the disputed domain name did not resolve to an active website. The Panel finds that the Respondent more likely than not registered the disputed domain name to attract Internet users to the Respondent's website for commercial gain or to take an unfair advantage of the similarity between the disputed domain name and the Complainant's trademark. It strains credulity to believe that the Respondent was unaware of the Complainant's LOUIS VUITTON trademark and composed the disputed domain name by adding "NFT" to the end of the Complainant's famous trademark in good faith. The LOUIS VUITTON trademark is sufficiently distinctive and well-known such that, noting the composition of the disputed domain name, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant's consent that would not involve bad faith. Compare Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds that the Respondent registered and used the disputed domain name in bad faith. The Complainant succeeds on the third element 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 Complainant. /John Swinson/ John Swinson Sole Panelist Date: January 2, 2023
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