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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lacoste Alligator S.A. v. Major Shopping Network Ltd

Case No. D2006-1599

 

1. The Parties

Complainant is Lacoste Alligator S.A. of Geneva, Switzerland, represented by Fross Zelnick Lehrman & Zissu, P.C. of New York, United States of America.

Respondent is Major Shopping Network Ltd of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names <lacosteshoes.com> and <lacostetrainers.com> are registered with Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2006. On December 19, 2006, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain names at issue. On December 19, 2006, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 27, 2006. 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”), 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 December 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2007.

The Center appointed Torsten Bettinger as the sole panelist in this matter on January 29, 2007. 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 is one of the world’s leading companies in clothing and fashion accessory design and manufacture. The mark LACOSTE has been in use for over 70 years and was introduced in 1933, when French tennis star Renй Lacoste collaborated with a French knitwear manufacturer to set up a company for the production of logo-embroidered shirts.

Complainant operates 870 boutiques worldwide and offers its products for sale through numerous additional retail outlets in over 110 countries.

Complainant is the registered proprietor of numerous trademark registrations in respect of the mark LACOSTE in many countries of the world. Complainant maintains an Internet website at “www.lacoste.com” and country specific websites including the United Kingdom, The Netherlands, Germany, France, Spain, Australia, Thailand, India, China, Turkey and Canada.

The domain names <lacosteshoes.com> and <lacostetrainers.com> were registered on October 4, 2004 and July 18, 2004 respectively.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues:

- that the domain names incorporate Complainant’s famous marks in their entirety and that the words “shoes” and “trainers” are descriptive and therefore do not distinguish the domain names from Complainant’s LACOSTE marks.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends

- that Respondent has no authorization or license to use the LACOSTE marks in its domain name and that Respondent is not commonly known by the domain names.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant contends:

- Respondent was aware of Complainant’s marks at the time it registered the disputed domain names because it has registered more than one domain name that is confusingly similar to Complainant’s marks;

- Respondent is using the domain names to redirect Internet users to a website identifying PB Footwear USA, Inc. on its store locator page, as well as other legitimate licensees and boutiques in the US, the UK, France and the Netherlands;

- the information provided on Respondent’s website creates the false and misleading impression that the goods offered for sale at Respondent’s website are authentic and/or authorized for sale by Complainant;

- Respondent earns revenue directly by drawing consumers to its website; and

- by using LACOSTE, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).

The disputed domain names wholly incorporate Complainant’s famous trademark LACOSTE, used in connection with shoes. The fact that the words “shoes” and “trainers” are added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain name, as “shoes” and “trainers” are describing the type of product Complainant sells under the name LACOSTE and are descriptive components of the domain names. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain names <lacosteshoes.com> and <lacostetrainers.com> are confusingly similar to the LACOSTE marks in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The fact that Respondent has chosen not to submit a Response is particularly relevant to the issue of whether Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Administrative Panel finds no exceptional circumstances for Respondent’s failure to submit a Response.

Nevertheless, the Panel still has the responsibility of determining which of Complainant’s assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts (See, Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438).

The case before the Panel raises the question whether an unauthorized dealer of shoes has a legitimate interest to use the manufacturer’s trademark with the addition of descriptive elements as domain name.

Paragraph 4(c)(i) of the Policy provides that a use of a domain name is legitimate if, prior to commencement of the dispute, the respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

The Panel observes that there are different views as regards the question of the conditions under which authorized or non-authorized resellers or distributors have a legitimate interest to use as domain name the manufacturer’s trademark in identical form or with the addition of descriptive elements.

Three views can be distinguished in the previous WIPO UDRP decisions:

(1) At one end of the spectrum, it is argued that the authorization to market the products under the trade name does not as a matter of principle constitute an authorization to use the manufacturer’s trademark as a domain name or as part of a domain name. If the use of the domain name is not expressly granted, the right to market the trademark holder’s products under the complainant’s trademark merely establishes a right to use the trademark for the marketing of the trademark holder’s products but not a more extensive right to use the trademark as a domain name (See Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101, finding that a licensed reseller could only have a right to a domain name which included the trademark NOKIA if the trademark owner has specifically granted that right; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292, finding that the manufacturer of “unoriginal” spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but that this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name).

(2) The contrary opinion was upheld in a dispute between Milwaukee Electric Tool Corporation and one of its resellers concerning the domain name <milwaukeetool.com> (Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002–0774). The panel pointed out that it did not suggest a general rule regarding relationships between trademark holders and authorized distributors, but in the specific case held that a reseller who was entitled by contract to use the complainant’s trademark in his advertising and had lawfully marketed the trademark holder’s products over many years had a legitimate interest in the domain name and in any event was not using it in bad faith. Similar reasoning was applied in the Daimler Chrysler A.G. v. Donald Drummonds decision (WIPO Case No. D2001-0160, with dissenting opinion), in which the holder of the domain name <mercedesshop.com> was admittedly not acting as a reseller but marketed spare parts and accessories on the Internet using a disclaimer, and for this reason was regarded by the panel as a legitimate user of the domain name. Similar views have also been upheld by other UDRP panels. (See Draw-Tite Inc. v. Plattsburg Spring Inc., WIPO Case No. D2000-0017; Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187).

(3) The majority view lying between these two was first put forward in the case of Oki Data Americas, Inc. v. ASD, Inc., a conflict between a US manufacturer of computer accessories and an authorized reseller (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903). In the panel’s view, the use of a manufacturer’s trademark as a domain name by an authorized dealer or reseller is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels (See Ferrari S.P.A., Fila Sport S.P.A. v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).

This Panel follows the majority view put forward in the Oki Data case that a reseller or other sales agent can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements. The Panel also holds the view that the Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized the respondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent.

However, in the case before the Panel, Respondent’s conduct does not meet all the OKI Data criteria.

It is undeniable that Respondent was aware of Complainant’s famous marks prior to the registration of the disputed domain names and the establishment of Respondent’s website. This fact alone, however, according to the Oki Data criteria, is not determinative on the issue, whether Respondent uses the domain names in connection with a bona fide offering of goods or services.

Respondent has not presented evidence that it has used the domain name to sell the trademarked goods.

The Panel has visited Respondent’s websites on various occasions and noticed that not even one of the links to the products offered on the websites is active. The Panel therefore concludes that the Respondent is not offering any of Complainant’s goods and that the sole purpose of the websites is to create the false impression that the disputed domain names are used in connection with a bona fide offering of goods and services.

Moreover, Respondent’s default in this proceeding reinforces this conclusion. If Respondent had arguments that it has a legitimate interest in the disputed domain names it should have asserted them.

The Panel therefore finds that Respondent has no rights or legitimate interest in the domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.

Complainant’s LACOSTE marks are known world wide. It is therefore inconceivable that Respondent registered the domain names unaware of Complainant’s rights in its famous LACOSTE marks.

Respondent registered domain names which are except for the descriptive terms “shoes” and “trainers” identical to Complainant’s trademark. That and the fact that Respondent does not actively use the domain names in order to sell any of Complainant’s products is a clear indication of bad faith.

Moreover, Respondent’s default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith and had good faith bases for using the domain name, it should have asserted them.

Accordingly, the Panel concludes that Respondent registered and used the domain names <lacosteshoes.com> and <lacostetrainers.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.

 

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 domain names <lacosteshoes.com> and <lacostetrainers.com> be transferred to Complainant.

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Torsten Bettinger
Sole Panelist

Dated: February 26, 2007