WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S.A.S. Jean Cassegrain v. Spiral Matrix
Case No. D2006-0838
1. The Parties
The Complainant is S.A.S. Jean Cassegrain, France, represented by Gottlieb, Rackman & Reisman, United States of America.
The Respondent is Spiral Matrix, Kenya .
2. The Domain Name and Registrar
The disputed domain name <longchamppurses.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2006. On July 3, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On July 3, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on July 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2006.
The Center appointed John Lambert as the sole panelist in this matter on August 9, 2006. 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 Complainant is the holding company of a group of companies which make and sell high quality handbags, luggage and related products under the sign LONGCHAMP. The group’s products are on sale in over 80 countries, including France, Germany, Japan, United Kingdom and the United States, and also over the internet from its website at “www.longchamp.com”. Its sales at wholesale level exceeded US $200 million in 2005 and its expenditure on advertising and promotion US $7 million.
The Complainant has registered LONGCHAMP as a mark for various goods in a large number of countries. Just one example is registration number 2,733,821 for umbrellas, handbags, luggage and small wallets made of fabric in class 16, cell phone cases made of fabric and material in class 9 and picture frames in class 20 in the United States dated July 8 2003. Further, as a result of its sales and advertising, the LONGCHAMP mark distinguishes the Complainant’s handbags, luggage and other products from those of all others in the minds of consumers around the world.
The disputed domain name is the URL for a website that offers links to various other websites some of which appear to sell handbags. At 2:43 pm British Standard Time on August 20, 2006 (when the Panel visited the site) there were references to “Fendi”, “Prada”, “Louis Vuitton”, “Louis Vuitton Replica” and various other handbags but none specifically to the Complainant’s. However, the Complainant, has produced a printout from that site that shows references to Longchamp products on June 27, 2006. It has also lodged a printout showing that the disputed domain name was available for sale from “www.kenyatech.com” that same day.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the ground that all three elements of paragraph 4(a) of the Policy are present.
As to the first element, the Complainant argues that it has been established in such cases as Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409 (December 9, 2000), Homer TLC, Inc. v. Kevin Daste, NAF Case No. FA0604000675788 (May 24, 2006) and CSAV, Inc. v. Jucco Holdings c/o Admin, NAF Case No. FA6030000662211 (May 5, 2006) that where a domain name incorporates the entirety of a mark plus an ordinary descriptive word, the domain name and mark are identical or sufficiently similar to render them confusingly similar. In this case, the disputed domain name incorporates the distinctive LONGCHAMP mark in its entirety and combines that mark with the ordinary descriptive word “purses”. Accordingly, there is sufficient similarity to find LONGCHAMP and <longchamppurses.com> identical or confusingly similar. The Complainant adds that the fact that the LONGCHAMP mark and the disputed domain name are both used in connection with providing handbags, luggage, accessory and other “fashion” items, increases the likelihood of confusion. The presence of “.com” in <longchamppurses.com> does not sufficiently distinguish the domain name in a manner that would eliminate or reduce confusion between LONGCHAMP and <longchamppurses.com> among consumers.
As to the second element, the Complainant says that the Respondent has never been known by the domain name <longchamppurses.com>. It is not authorized to sell the Complainant’s products or otherwise to use the LONCHAMP mark.
As to the third element, the Complainant makes four points. First, it says that the Respondent registered and used the disputed domain name in bad faith in that it is intentionally using that domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s mark. Secondly, it relies on a “history and pattern” of registering domain names that are similar to well-known marks. As at the date of the Complaint, there had been at least 18 UDRP decisions in which the Respondent was found to have registered one or more domain names in bad faith. Thirdly, it alleges that the Respondent registered and uses the disputed domain name primarily to disrupt Longchamp’s business because it is using that domain name in connection with a website offering links relating to goods that directly compete with those offered by the Complainant. Fourthly, it has offered the disputed domain name for sale.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4a of the Policy requires a complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the disputed domain name has been registered and is being used in bad faith.
In the administrative proceedings, each and every one of those three elements must be present.
A. Identical or Confusingly Similar
The disputed domain name may not be identical to the LONGCHAMP mark but it is certainly similar. The only question is whether it is confusingly similar to the Complainant’s mark. The goods for which that sign is registered in the United States under registration number 2,733,821 include handbags and small wallets. A consumer in that country is likely to conclude from the combination of the noun PURSE with the brand LONGCHAMP that the disputed domain name will lead him or her to a website exhibiting or offering the Complainant’s products for sale. That impression is likely to be reinforced by the fact that “handbags are sometimes called “purses” in the United States. That would amount to “confusing similarity” for the purpose of paragraph 4(a) (i). Accordingly, the first requirement is satisfied.
B. Rights or Legitimate Interests
Paragraph 4c of the Policy sets out a number of circumstances in which a respondent can demonstrate rights or legitimate interests in a domain name for the purposes of 4a (ii). These include:
(i) 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 before the Respondent has any notice of a dispute,
(ii) the Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is 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.
None of those circumstances applies to this case. The second clearly does not because the Respondent is known as Spiral Matrix. Nor does the third apply since the URL is likely to divert the Complainant’s customers or potential customers to sites offering competing goods. That also means that the first circumstance cannot apply because offering competing goods is far from “use in connection with a bona fide offering of goods or services”.
In the absence of any evidence of rights or legitimate interests the Panel holds that the second requirement is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4b of the Policy provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location.
There is abundant evidence that the fourth of those circumstances applies. It has already been found that the disputed domain name is likely to induce the Complainant’s customers to visit the Respondent’s site in the belief that it is connected with the Complainant. At least some of those customers will be diverted to sites offering handbags for sale for which it is reasonable to infer that the Respondent has received, or expects to receive payment. Because of the prestige of the Complainant’s brand, it is reasonable to infer that such diversion was intentional and that such intention was formed at the time of registration as well as at the time the Respondent received notice of this dispute.
Because the disputed domain name has been offered for sale on “www.kenyatech.com” and the conduct of the Respondent recorded in previous disputes there is evidence that the circumstances referred to in paragraph 4(b) (i) and (ii) may apply too. However, since there is more than enough evidence of bad faith under 4b(iv), it is unnecessary to make a finding under those heads. For the above reasons, the Panel holds that the domain name was registered and used in bad faith.
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 name <longchamppurses.com> be transferred to the Complainant.
Dated: August 20, 2006