WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna
Case No. D2010-0988
1. The Parties
The Complainant is Lacoste Alligator S.A. of Geneva, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are known only by their first names - Priscilla, Ranesha, Victor and Angel of Fujian, the People’s Republic of China; Jane, Selima, John, Angela, Carl, Darren, Angela, Susanna, Jonathan, Sally, Michelle, Pamela, Olivier and Matthew of United States of America; and Oiu of Egypt.
2. The Domain Names and Registrar
The disputed domain names <buylacostes.com>, <cheaperlacoste.com>, <goodlacoste.com>, <lacoste-sales.com>, <lacosteselling.com>, <lacosteshoesale.com>, <lacosteshoeshop.com>, <lacosteshoesshop.com>, <lacosteshoestore.com>, <lacosteshow.com>, <lacostessale.com>, <lacosteswear.com>, <lacostezone.com>, <selllacoste.com>, <speciallacoste.com>, <thelacostestore.com>, <weblacoste.com>, <youlacoste.com> and <yourlacoste.com> (“Disputed Domain Names”) are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2010. On June 17, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the Disputed Domain Names. On June 18, 2010, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that each Respondent is listed as the registrant of the corresponding Disputed Domain Name and providing the contact details. On June 21, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondents did not comment on the language of proceedings by the specified due date. The Complainant submitted an unsolicited amendment to the Complaint on June 21, 2010. 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 19, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 27, 2010. 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 one of the world’s leading companies in clothing and fashion accessory design and manufacture. The Complainant’s LACOSTE trademark was first used in 1933 on sportswear. The product line under the LACOSTE trademark has since expanded to cover other products which are listed on the Complainant’s website at “www.lacoste.com”.
The Complainant’s website averages over 30,000 visitors per day. The Complainant operates over 1,100 boutiques worldwide. The Complainant’s products are also offered through numerous retail outlets in 114 countries. Global wholesale turnover of products under the LACOSTE trademark was over Euro1.4 billion in 2009.
The LACOSTE trademark has been ranked among France’s 25 most valuable brands. It has been discussed in various publications. The LACOSTE trademark is registered in various countries around the world including the following:
Jurisdiction Trademark No. Registration date
WIPO (designating China) 437000 April 25, 1978
United States 1187445 January 26, 1982
United States 1947111 January 9, 1996
The Complainant also maintains 32 country-specific websites incorporating the LACOSTE trademark (e.g., “www.lacoste.com/uk”). The LACOST trademark has also been recognized as a well-known mark by prior panels (see Lacoste Alligator S.A. v. Xinpeng Liu, WIPO Case No. D2009-0629; Lacoste Alligator S.A. v. Domain Active Pty. Ltd., WIPO Case No. D2005-0673; Lacoste Alligator S.A. v. Major Shopping Network Ltd, WIPO Case No. D2006-1599).
The Respondents registered the Disputed Domain Names on the following dates:
Respondent Disputed Domain Name Registration Date
Priscilla <youlacoste.com> June 14, 2009
Ranesha <buylacostes.com> May 14, 2009
Angel <weblacoste.com> June 3, 2009
Jane <cheaperlacoste.com> August 28, 2009
Victor <speciallacoste.com> June 7, 2009
Olivier <thelacostestore.com> December 9, 2009
Carl <lacosteshoesale.com> December 8, 2009
Darren <lacosteshoeshop.com> December 8, 2009
Angela <lacosteshoestore.com> December 8, 2009
Jonathan <lacostessale.com> January 7, 2010
Michelle <lacosteswear.com> September 1, 2009
Oiu <lacostezone.com> December 8, 2009
Matthew <yourlacoste.com> September 1, 2009
Pamela <selllacoste.com> August 28, 2009
Selima <goodlacoste.com> August 28, 2009
Angela <lacosteselling.com> August 28, 2009
John <lacoste-sales.com> September 1, 2009
Sally <lacosteshow.com> September 1, 2009
Susanna <lacosteshoesshop.com> December 8, 2009
All Disputed Domain Names were registered many years after the trademark registrations for the LACOSTE trademark. All the Disputed Domain Names resolved to websites offering shoes under the LACOSTE trademark for sale online (At the time of writing this decision, none of the Disputed Domain Names resolved to any websites except <specialllacoste.com>, <youlacoste.com> and <lacosteshoesale.com> which resolved to the websites exhibited in the Complaint).
The Complainant received delivery of shoes which the Complainant purchased online from the websites resolved from <buylacostes.com> and <weblacoste.com>. Having examined these shoes, the Complainant believes that these are counterfeits.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Names are confusingly similar to the Complainant’s LACOSTE trademark. They incorporate the LACOSTE trademark it its entirety and add a generic term “you”, “your”, “special”, “cheaper”, “web”, “shoe”, “sale”, “shop”, “store”, “wear”, “zone”, “buy”, “sell”, “good”, “selling”, “sales”, “show” and “shoes” respectively. The additional suffix of an letter “s” in <buylacostes.com>, <lacostessale.com> and <lacosteswear.com> do not alleviate any confusion that arises from these Disputed Domain Names;
2) The Respondents have no legitimate interest in the Disputed Domain Names. There exists no relationship between the Respondents and the Complainant or any of its licensees or agents that would give rise to any license, permission or authorization to the Respondents to own or use the Disputed Domain Names. The Respondents are not commonly known by the Disputed Domain Names;
3) The Respondents registered and are using the Disputed Domain Names in bad faith. The Respondents are improperly commercially exploiting the Disputed Domain Names and the well-known LACOSTE trademark for their own gain. The shoes offered by the Respondents on the websites resolved from the Disputed Domain Names are counterfeit. The Respondents are profiting from the consumer confusion resulting from their misappropriation of the LACOSTE trademark. The Respondents use false contact information when registering the Disputed Domain Names.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant requests that the Disputed Domain Names be consolidated in a single Complaint. Having considered the arguments of the Complainant and the circumstances, pursuant to the powers granted to the Panel under paragraph 10(a), (c) and (e) of the Policy, it is hereby decided that the Disputed Domain Names shall be consolidated for determination by this Panel. The factors below indicate that the Respondents of the Disputed Domain Names are under common ownership and/or control:
(1). The Disputed Domain Names are all registered under fictitious details.
(a). The Respondents are only identifiable by first names;
(b). The Respondents’ addresses, telephone numbers and facsimile numbers which appeared on the WhoIs records were invalid. For example, the addresses indicate the state of “WG” in the country “US” (for all the Disputed Domain Names except for <lacostezone.com> which indicated the state of “WG” in the country “EG”). There are no states in the United States of America (i.e., “US”) or Egypt (i.e., “EG”) with the code “WG”. It was highlighted by the Complainant that the Respondents’ addresses, telephone numbers and facsimile numbers for <youlacoste.com>, <buylacostes.com> and <weblacoste.com> were subsequently changed when the Complainant reported the inaccurate WhoIs records to ICANN on April 27, 2010;
(2). All the Disputed Domain Names were registered with the same registrar;
(3). The Disputed Domain Names were registered on similar dates. For example, <cheaperlacoste.com>, <selllacoste.com>, <goodlacoste.com> and <lacosteselling.com> were all registered on August 28, 2009;
(4). The websites resolved from <youlacoste.com>, <buylacostes.com>, <weblacoste.com>, <speciallacoste.com>, <thelacostestore.com>, <lacosteshoesale.com>, <lacosteshoeshop.com>, <lacosteshoestore.com>, <lacostessale.com>, <lacostezone.com> and <lacosteshoesshop.com> contained news and blog sections which linked to nonsensical articles; and
(5). The same photographs of are found on some of the websites resolved from the Disputed Domain Names.
6.2. Language of the Proceeding
The default language of the proceeding should be Chinese because the registration agreement for the Disputed Domain Names is in Chinese. However, pursuant to paragraph 11(a) of the Rules, the Panel hereby determines that English shall be the language of the proceeding having regard to fairness to the parties and procedural cost-efficiency and expedition for the following reasons:
(1). The Complainant has requested that English be the language of the proceeding;
(2). The websites under the Disputed Domain Names are exclusively in English. The website demonstrated that the Respondents are competent in English;
(3). The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide a Chinese translation of the Complaint;
(4). The Respondents did not contest the language of the proceeding; and
(5). It serves no discernible purpose or benefit to adhere to the default language of the registration agreement in this case.
Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:
(1). The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2). The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(3). The Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s trademark registrations for LACOSTE establish the Complainant’s trademark rights for purposes of this proceeding.
All the Disputed Domain Names incorporate the entirety of the LACOSTE trademark. The only difference between the Disputed Domain Names and the LACOSTE trademark, are as follows:
Disputed Domain Name Prefix/suffix
<youlacoste.com> prefix “you”
<buylacostes.com> prefix “buy”, suffix “s”
<weblacoste.com> prefix “web”
<cheaperlacoste.com> prefix “cheaper”
<speciallacoste.com> prefix “special”
<thelacostestore.com> prefix “the”, suffix “store”
<lacosteshoesale.com> suffix “shoesale”
<lacosteshoeshop.com> suffix “shoeshop”
<lacosteshoestore.com> suffix “shoestore”
<lacostessale.com> suffix “s”, suffix “sale”
<lacosteswear.com> suffix “s”, suffix “wear”
<lacostezone.com> suffix “zone”
<yourlacoste.com> prefix “your”
<selllacoste.com> prefix “sell”
<goodlacoste.com> prefix “good”
<lacosteselling.com> suffix “selling”
<lacoste-sales.com> suffix “-sales”
<lacosteshow.com> suffix “show”
<lacosteshoesshop.com> suffix “shoes”, suffix “shop”
It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark (e.g., Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144).
The prefixes and suffixes incorporated in the Disputed Domain Names are descriptive words which are not distinctive. Used in conjunction with a well-known mark like the LACOSTE trademark further aggravates the likelihood of confusion (see Volvo Trademark Holding AB v. Uvelov, WIPO Case No. D2002-0521). Therefore, the Disputed Domain Names are confusingly similar to the LACOSTE trademark. The Panel also agrees that the addition of the letter “s” in <lacostessale.com>,<buylacostes.com> and <lacosteswear.com> does not remove any such confusing similarity (see Halcyon Yarn, Inc. v. Chan, WIPO Case No. D2004-0336; Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033). The first limb of paragraph 4(a) is accordingly satisfied for all the Disputed Domain Names.
B. Rights or Legitimate Interests
The consensus developed by past panels is that a complainant only needs to show a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name to shift the burden of proof to the respondent.
The Complainant, being the trademark owner of the LACOSTE trademark, has confirmed that it did not grant the Respondents any rights to register or use the Disputed Domain Names.
The adoption of the LACOSTE trademark on the Respondents’ websites cannot be mere coincidence. The Respondents are also not commonly known by the Disputed Domain Names. The Respondents also offer to sell shoes under the LACOSTE trademark on the websites resolved from the Disputed Domain Names. The Respondents must have been well aware of the Complainant and the Complainant’s trademark rights and the Respondents must have consciously and deliberately adopted the same in the Disputed Domain Names. The Panel has noted the Complainant’s belief that the shoes offered for sale on the websites to be counterfeit. The Respondents have neither sought to counter nor sought to advance any explanation or supporting evidence that they are engaging in legitimate reselling of the Complainant’s genuine branded products only.
In the circumstances, a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names is established. Since no Response was filed, the prima facie is not rebutted and results in the second limb of paragraph 4(a) being upheld.
C. Registered and Used in Bad Faith
Based on the evidence submitted by the Complainant, the Panel accepts that the LACOSTE trademark is well-known.
The Panel has already found above that the Respondents must have had prior knowledge of the Complainant’s trademark rights. The selection of the Disputed Domain Names by the Respondents and use of the LACOSTE trademark on the Respondents’ websites clearly exhibits a deliberate intent to associate with the LACOSTE trademark. The use of the Disputed Domain Names in such a manner indicate opportunistic bad faith registration and use which takes unfair advantage of the reputation in the Complainant’s trademarks (Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, supra; Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca, WIPO Case No. D2010-0258; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).
The Respondents’ websites offer to sell products which can only be targeted at commercial gain. The Panel determines that bad faith registration and use under paragraph 4(b)(iv) is also supported on the facts.
Further, the Complainant has alleged these products to be counterfeits. Faced with such serious allegations, the Respondents have chosen to remain silent. Such nonchalance is not a reasonable reaction from an honest trader accused of counterfeiting and can only result in an adverse inference that the Complainant’s allegations are founded and correct. This Panel does not hesitate to make such inference in the circumstances and finding the “paradigmatic bad faith” described in Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552, namely, for the selling counterfeit goods through websites resolved from the Disputed Domain Names.
In the circumstances, the Panel holds that the third limb of paragraph 4(a) is also established.
For all 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, <buylacostes.com>, <cheaperlacoste.com>, <goodlacoste.com>, <lacoste-sales.com>, <lacosteselling.com>, <lacosteshoesale.com>, <lacosteshoeshop.com>, <lacosteshoesshop.com>, <lacosteshoestore.com>, <lacosteshow.com>, <lacostessale.com>, <lacosteswear.com>, <lacostezone.com>, <selllacoste.com>, <speciallacoste.com>, <thelacostestore.com>, <weblacoste.com>, <youlacoste.com> and <yourlacoste.com>, be transferred to the Complainant.
Kar Liang Soh
Dated: August 11, 2010