ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Louis Vuitton Malletier v. Jester Freak, Jest Inc. Case No. D2024-2531 1. The Parties The Complainant is Louis Vuitton Malletier, France, represented by Studio Barbero S.p.A., Italy. The Respondent is Jester Freak, Jest Inc., American Samoa, United States of America (“United States”). 2. The Domain Names and Registrar The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2024. On June 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 24, 2024, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2024. The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on July 31, 2024. 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.
page 2 4. Factual Background Complainant is a French fashion house and part of the multinational luxury goods conglomerate LVMH Moët Hennessy Louis Vuitton, known as LVMH. This entity has been using and promoting the famous trademark “LOUIS VUITTON”. Among others, Complainant is the holder of the trademarks: - International Trademark Registration No. 416052 for LOUIS VUITTON, registered on June 19, 1975, and duly renewed, in classes 3, 6, 8, 13, 14, 16, 18, 20, 21, 24, 25, 28, and 34; - International Trademark Registration No. 1096591 for LOUIS VUITTON, registered on April 6, 2011, and duly renewed, in classes 35, 38, and 41, designating, amongst others, United States; - European Union Trade Mark No. 000015610 for LOUIS VUITTON, filed on April 1, 1996, registered on March 16, 1998 and duly renewed, in classes 16, 18, and 25; - United States Registration No. 1045932 for LOUIS VUITTON, filed on August 13, 1975, claiming first use as of 1875, registered on August 10, 1976, and duly renewed, in International Class 18; - United States Registration No. 3904444 for LOUIS VUITTON, filed on June 17, 2010, claiming first use as of 1854, registered on January 11, 2011, and duly renewed, in International Class 35. The abovementioned trademarks were duly registered before the disputed domain names in reference. The abovementioned trademarks of Complainant will be referred to as “LOUIS VUITTON Trademarks”. Besides the traditional advertising channels, LOUIS VUITTON currently is also widely promoted via the Internet, in particular with a strong presence online through popular social medias, e.g. Facebook, Twitter, Instagram, YouTube, Pinterest and LinkedIn. Complainant operates the website “www.louisvuitton.com” as its primary web portal for global promotion of the LOUIS VUITTON trademark and products as well as its official online store. Respondent registered the disputed domain names on May 12, 2024, which resolves to inactive websites. On June 5, 2024, Complainant’s representative sent a cease-and-desist letter to Respondent – addressing it to the email address disclosed in the WhoIs records of the disputed domain names - demanding Respondent to cease any possible use of, and transfer, the disputed domain names to Complainant. Complainant sent reminders on June 12 and 18, 2024 and Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, Complainant contends that: - The disputed domain names registered by Respondent are confusingly similar to the LOUIS VUITTON Trademarks in which Complainant has rights, as per copies of the trademark registrations provided.
page 3 - The disputed domain names incorporate the whole of Complainant’s LOUIS VUITTON Trademarks and the fact that they differ from Complainant’s trademark by the addition of the non-distinctive elements “sso” and “corp”, and a hyphen, does not affect the confusing similarity. - It is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that it may also contain a descriptive or generic term. - The disputed domain names are to be considered confusingly similar to the prior registered LOUIS VUITTON Trademarks in which Complainant has rights according to paragraph 4(a)(i) of the Policy. - The burden of proving the absence of Respondent’s rights or legitimate interests in respect of the disputed domain names lies with Complainant. It is nevertheless a well-settled principle that satisfying this burden is unduly onerous, since proving a negative fact is logically less feasible than establishing a positive. Accordingly, it is sufficient for Complainant to produce prima facie evidence in order to shift the burden of production to Respondent. - Respondent is not a licensee, authorized agent of Complainant or in any other way authorized to use LOUIS VUITTON Trademarks. It is well-established that typically in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. - Complainant is not in possession of, nor is aware of, the existence of any evidence demonstrating that Respondent – whose name, according to the information indicated in the public WhoIs database, is Jester Freak, jest inc – might be commonly known by a name corresponding to the disputed domain names as an individual, business, or other organization. Moreover, according to the searches performed by Complainant’s representative, Respondent does not own any trademark registration for “louis vuitton”. - Respondent has not provided Complainant with any evidence of use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before or after any notice of the dispute herein. - Respondent registered the disputed domain names on May 12, 2024, without authorization of Complainant and said disputed domain names have been redirected to webpages identified as dangerous and potentially used for scam or phishing purposes. By clicking on “Details” and “Visit this unsafe site”, Internet users are then redirected to inactive websites. - The disputed domain names consist of Complainant’s registered and well-known LOUIS VUITTON Trademarks with the mere addition of the generic terms “sso” and “corp”, and a hyphen, the disputed domain names are inherently misleading, carrying a high risk of implied affiliation with Complainant. - Respondent did not reply to the cease-and-desist letter sent by the authorized representative of Complainant. - The misappropriation of a well-known trademark as a domain name by itself creates a presumption of bad faith registration for the purposes of the Policy. - Respondent cannot credibly claim to have been unaware of the existence of the LOUIS VUITTON Trademarks. That is, Respondent registered the disputed domain names with Complainant’s famous trademark in mind. B. Respondent Respondent did not reply to Complainant’s contentions.
page 4 6. Discussion and Findings To succeed, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the LOUIS VUITTON Trademarks are recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of other terms here, “corp” and “sso”, along with a hyphen, would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Since Respondent is in default, the Respondent has failed to advance any arguments or evidence supporting any potential rights or legitimate interests in the disputed domain names. See Samsung Eletrônica da Amazônia Ltda. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018-2708. Moreover, the composition of the disputed domain names, incorporating the Complainant’s well-known trademark with descriptive terms, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established.
page 5 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondent: - should have been aware of the existence of the long standing LOUIS VUITTON Trademarks and their fame; - received a cease-and-desist letter from Complainant, and two reminders, and never replied; - did not file a response to the Complaint; - registered the disputed domain names without authorization of Complainant to take advantage of the fame of LOUIS VUITTON Trademarks. All these circumstances point to the fact that the disputed domain names were registered and are used in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s LOUIS VUITTON Trademarks, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel also notes that the disputed domain names resolve to Internet browser warnings that the disputed domain names may resolve to dangerous websites, which suggest a risk of bad faith use. Panels have held that the use of a domain name for illegal activity, such as scam or phishing purposes, constitutes bad faith. WIPO Overview 3.0, section 3.4. The Panel finds that Complainant has established 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 names and be transferred to Complainant. /Enrique Ochoa de González Argüelles/ Enrique Ochoa de González Argüelles Sole Panelist Date: August 14, 2024
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