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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lacoste Alligator S.A. v. Xinpeng Liu

Case No. D2009-0629

1. The Parties

The Complainant is Lacoste Alligator S.A. of Geneva, Switzerland.

The Respondent is Xinpeng Liu of Xiamen, Fujian Province, People`s Republic of China.

2. The Disputed domain name and Registrar

The disputed domain name <lacostepolowholesaler.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2009. On May 12, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On May 13, 2009, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain name and providing the contact details for the disputed domain name. On June 3, 2009, the Center transmitted an email to the Complainant seeking clarification regarding the Complainant`s appropriate submission to a mutual jurisdiction for the proceeding. The Complainant clarified the issue of mutual jurisdiction on the same day. On June 3, 2009, the Center also transmitted an email to the parties in English and Chinese concerning the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on the same day. The Respondent did not submit any comments with respect to the language of the proceeding by the due date.

The Center has verified that the Complaint satisfies the formal requirements of the Uniform Disputed domain name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Disputed domain name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Disputed domain name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 2, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent`s default on July 3, 2009.

The Center appointed Sebastian Hughes as the sole panelist in this matter on July 9, 2009. 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

A. The Complainant

The Complainant is a Swiss Societe Anonyme and the owner of numerous registrations for the LACOSTE trade mark around the world, including in China, where the Respondent is based.

The Complainant also maintains thirty-two (32) country-specific websites around the world. These websites all use the trade mark LACOSTE in their disputed domain names. All of these sites are owned and operated by La Chemise Lacoste, an affiliate of the Complainant. These include:

"www.lacoste.com/uk" (United Kingdom);

"www.lacoste.com/nl" (Netherlands);

"www.lacoste.com/de" (Germany);

"www.lacoste.com/france" (France);

"www.lacoste.com/es" (Spain);

"www.lacoste.com/au" (Australia);

"www.lacoste.com/th" (Thailand);

"www.lacoste.com/india" (India);

"www.lacoste.com/china" (China);

"www.lacoste.com/tr" (Turkey);

"www.lacoste.com/tr" (Turkey);

"www.lacoste.com/ca" (Canada).

B. The Respondent

The Respondent is an individual apparently with an address in China.

The disputed domain name was registered on April 15, 2008.

5. Parties` Contentions

A. The Complainant

The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.

The Complainant is one of the world`s leading companies in clothing and fashion accessory design and manufacture. The Complainant`s marks have been in use for over 75 years. The LACOSTE mark was introduced in 1933 when French tennis star René Lacoste collaborated with André Gillier, president of France`s largest knitwear manufacturer, to set up a company for the production of logo-embroidered shirts. The shirts were originally intended for wear during tennis, golf and sailing, making LACOSTE one of the earliest sportswear brands in history.

In the years since the company`s founding, the variety of products has multiplied and a wide assortment of clothing styles, as well as items such as shoes, watches, home textiles, eyeglasses, and perfumes, now bear the LACOSTE mark.

The Complainant has extensively used and is commonly referred to by the trade and consumers by the identifier, name and mark LACOSTE.

(1) The Disputed Domain Name is Confusingly Similar to the Complainant`s Mark

The disputed domain name is confusingly similar to the Complainant`s mark, as it incorporates the Complainant`s famous mark in its entirety. The generic terms "polo" and "wholesaler" do nothing to distinguish the disputed domain name from the Complainant`s mark. Instead, "polo" and "wholesaler" merely describe the Complainant`s best known product and create the false impression that the Respondent is authorized to sell the Complainant`s merchandise, or that the merchandise being sold by the Respondent is authentic and not, in fact, counterfeit.

Given the reputation and renown of the Complainant`s mark, it is probable that a majority of Internet users who see the disputed domain name will immediately recognize the Complainant`s mark, and assume that the disputed domain name is owned, controlled or endorsed by the Complainant. In addition, consumers and other third parties who search the Internet for legitimate retailers of the Complainant`s goods may be directed to the disputed domain name, creating a probability of confusion.

(2) The Registrant has no Rights or Legitimate Interests in the Disputed Domain Name

The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Respondent registered the disputed domain name on April 15, 2008, long after the Complainant had established rights in its LACOSTE mark through extensive use over the last 75 years. Whereas the Complainant`s mark is very well-known and recognized, there can be no legitimate use by the Respondent.

There exists no relationship between the Complainant and the Respondent that would give rise to any licence, permission, or authorization by which the Respondent could own or use the disputed domain name, which is identical or confusingly similar to the Complainant`s mark. The Respondent is not commonly known by the disputed domain name, as shown by its registration information.

Since the Complainant`s mark is so well-known and the Respondent has no rights therein, the only reason that the Respondent could have sought to register and use the disputed domain name consisting of the LACOSTE mark plus the generic words "polo" and "wholesaler" is that it knew of the Complainant`s Mark and wanted to use it in the disputed domain name for the purpose of selling counterfeit LACOSTE merchandise, or otherwise profiting from the consumer confusion that is the inevitable result of the Respondent`s misappropriation of the Complainant`s mark.

(3) The Registrant Registered and is Using the Disputed Domain Name in Bad Faith

The Respondent is also commercially exploiting the disputed domain name and the famous LACOSTE mark for its own gain. The website to which the disputed domain name was previously linked offered for sale counterfeit Lacoste goods. As no legitimate Lacoste merchandise was being offered for sale at this website, the Respondent`s use of the disputed domain name to sell counterfeit Lacoste merchandise was clearly in bad faith.

In addition, the Respondent currently earns revenue directly by drawing consumers to its site by its unauthorized use of the Complainant`s LACOSTE mark in the disputed domain name.

On February 9, 2009, the Complainant sent a demand letter to the Respondent requesting that the sale of counterfeit Lacoste merchandise at the website to which the disputed domain name was at that time resolved end immediately and that the Respondent agree to transfer the disputed domain name to the Complainant. The Respondent failed to respond to this letter.

The Complainant sent a follow-up demand letter to the Respondent on April 14, 2009. The Respondent sent an email to the Complainant in response on April 15th simply asking "So Todd Martin: What can we do?" The Complainant then provided instructions for transfer of the disputed domain name by email on April 16, 2009. The Respondent has not replied to the April 16th message providing instructions for transfer of the disputed domain name.

The facts set forth above make it clear that the Respondent is using the goodwill and fame of the Complainant`s mark in bad faith in order to improperly benefit the Respondent financially in violation of applicable trade mark and unfair competition laws. Moreover, these activities demonstrate bad faith registration and use of the disputed domain name in violation of the Policy as set forth in paragraphs 4(b)(i) and 4(b)(ii).

B. The Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving disputed domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui`erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) The Registration Agreement for HiChina is published in both English and Chinese;

(2) Given the fact that the agreement is published in English, the circumstances warrant that the proceedings be conducted in English;

(3) The disputed domain name is in the English language and the contents of the website at the infringing disputed domain name are entirely in English;

(4) These circumstances present strong evidence that the Respondent is conversant and proficient in the English language.

The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

On May 13, 2009, HiChina Zhicheng Technology Ltd transmitted by email to the Center its verification response confirming that the language of the registration agreement is Chinese.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties` ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding.

Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding.

6.2 Decision

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(1) The domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and

(3) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trade mark LACOSTE ("the Trade Mark") acquired through use and registration.

The disputed domain name comprises the Trade Mark in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of generic terms to the domain name in dispute has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

The Panel finds that the word "lacoste" is the distinctive part of the disputed domain name and the additional terms "polo" and "wholesaler" do not diminish the similarity between the disputed domain name and the Trade Mark. The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent`s registration of the disputed domain name by over 75 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

The Complainant has asserted that the website to which the disputed domain name was previously resolved was used by the Respondent to market unauthorized, counterfeit goods. There can be no legitimate interest in the sale of counterfeits (Lily ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).

Following receipt of the first letter of demand from the Complainant`s attorneys on February 9, 2009, the Respondent changed the website to which the disputed domain name is linked to a commercial link farm website or domain parking service (Owens Corning v. NA, WIPO Case No. D2007-1143). By providing links to other websites, the Respondent has intentionally or knowingly attempted to attract, for commercial gain, Internet users to the website, by creating the likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the website, the hyperlinked websites or products or services on such sites (Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd., WIPO Case No. D2004-0554).

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

"By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Complainant`s website to which the disputed domain name is resolved.

The website to which the disputed domain name was previously resolved offered for sale counterfeit goods under the Trade Mark. This is strong evidence of bad faith. (Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).

The disputed domain name is currently resolved to a link farm or domain name parking service. The Panel finds this also amounts to bad faith.

The Panel therefore concludes that the Respondent`s registration and use of the disputed domain name falls under paragraph 4(b)(iv).

The failure of the Respondent to adequately respond to the Complainant`s cease and desist letters or to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

At some stage after receipt of the first letter of demand from the Complainant`s attorneys, the Respondent changed the website to which the disputed domain is resolved from a website offering for sale counterfeit products under the Trade Mark to a link farm or domain parking service. The Panel finds this conduct in the present circumstances provides further evidence of bad faith.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, <lacostepolowholesaler.com>, be transferred to the Complainant.

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Sebastian Hughes
Sole Panelist

Dated: July 24, 2009