World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LeSportsac, Inc. v. Domain Administrator

Case No. D2010-2071

1. The Parties

The Complainant is LeSportsac, Inc. of Reno Nevada, United States of America, represented by Hughes, Hubbard & Reed, LLP of United States of America.

The Respondent is Domain Administrator of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lesportsacstore.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 December 1, 2010. On December 2, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On December 3, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the 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”).

On December 6, 2010, the Center sent an email communication in English and Chinese to the parties in relation to the language of the proceedings. On the same day, the Complainant requested that English be the language of the proceedings. The Respondent did not submit any comment in this regard.

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 December 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. The Respondent sent an email communication to the Center on December 21, 2010 regarding this matter.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 7, 2011. 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, LeSportsac, Inc. is an American company which business consists of design and sale of bags and accessories, which are sold worldwide.

The Complainant was established in 1974 by Melvin and Sandy Schifter. Since its establishment, the Complainant has been using the LESPORTSAC mark in connection with its goods.

The Complainant’s goods are sold in over 20 countries worldwide including the United States, Canada, Italy, Mexico, Unite Kingdom, France, Sweden, Japan, Hong Kong SAR of China, Republic of Korea, Taiwan Province of China, Malaysia, Singapore, Australia, Costa Rica, Colombia and Saudi Arabia. The Complainant distributes its’ goods in the United States, mainly through company-owned stores and the “www.lesportsac.com” website. The Complainant’s goods can also be found in some department stores.

The Complainant is the owner of multiple trademark registrations for the mark LESPORTSAC around the world. For example: Chinese trademark registration No. 1106166 – LESPORTSAC, with the application date of February 7, 1996; Chinese trademark registration No. 1520870 – LESPORTSAC, with the application date of November 11, 1999; United States trademark registration No. 1269197 – LESPORTSAC (logo), with the registration date of March 6, 1984; United States trademark registration No. 1430245 – LESPORTSAC (logo), with the registration date of February 24, 1987; United States trademark registration No. 2827370 – LESPORTSAC, with the registration date of March 30, 2004, and others.

The Complainant also developed its presence on the Internet, and is the owner of domain names, which contain the mark LESPORTSAC. For example: <lesportsac.com> and <lesportsac.net>.

The Complainant has made the following contentions regarding the registration of the disputed domain name which were not contested by the Respondent. The disputed domain name was registered on September 12, 2004 with the registrar GoDaddy.com. On June 10, 2010, Respondent made a domain name transfer from GoDaddy.com to Dotster, but continued to use GoDaddy.com to host its website. On September 2, 2010, the Complainant sent a notice with GoDaddy.com and Dotster, requesting that Respondent’s Website be taken down. GodDaddy.com responded by redirecting Respondent’s Website so that it was unavailable on the Internet, and by notifying the Respondent of the Complainant’s notice. On September 13, 2010, the Respondent transferred the disputed domain name to the registrar HiChina.

Currently, the disputed domain name resolves to an error page, which displays the following announcement: “The requested URL could not be retrieved”.

Until recently, the disputed domain name <lesportsacstore.com> led Internet users to websites that offered for sale, among others, replicas of Lesportsac handbags, while using the Complainant’s LESPORTSAC mark.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the LESPORTSAC trademark, in which the Complainant has rights, seeing that it incorporates the LESPORTSAC trademark as a whole.

The Complainant further argues that the addition of the descriptive word “store” is insufficient to avoid confusing similarity between the LESPORTSAC trademark and the disputed domain name.

The Complainant further argues that the addition of the descriptive word “store” is actually likely to increase the amount of consumer confusion, as it indicates an establishment where genuine Lesportsac products are sold.

The Complainant further argues that the Respondent does not make legitimate use of the disputed domain name.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its LESPORTSAC trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the term “lesportsac”.

The Complainant further argues that registering the disputed domain name by using false contact information and referring consumers to a false address that is a location in the proximity of the Complainant’s licensee’s address, is further evidence of the Respondent’s bad faith.

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the LESPORTSAC trademark and products at the time he registered the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent argues that it filed for a trademark application in the Chinese Trademarks office for the mark “Lesportsacstore” and it is currently pending.

The Respondent further argues that it was unaware of the Complainant and its trademark and has never heard of it prior to receiving the Complaint.

The Respondent further argues that the Complainant filed no evidence demonstrating use of its trademark in China and it also that the Complainant does not have a trademark registration in China.

The Respondent further argues that the disputed domain name is currently not being used and it redirects to a blank page. Therefore, it is not used illegally.

For all of the above reasons, the Respondent objects the transfer of the disputed domain name

6. Discussion and Findings

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain name <lesportsacstore.com> consists of Latin letters, rather than Chinese letters;

b) The disputed domain name <lesportsacstore.com> includes a word in the English language, namely “store”;

c) The website associated with the disputed domain name was operated in Chinese and English.

d) Confirmations of purchase were sent from the website associated with the disputed domain name in English.

e) The website, to which the disputed domain name used to resolve, displayed goods while using the English language;

f) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark. For example: Chinese trademark registration No. 1106166 – LESPORTSAC, with the application date of February 7, 1996; Chinese trademark registration No. 1520870 – LESPORTSAC, with the application date of November 11, 1999; United States trademark registration No. 1269197 – LESPORTSAC (logo), with the registration date of March 6, 1984; United States trademark registration No. 1430245 – LESPORTSAC (logo), with the registration date of February 24, 1987; United States trademark registration No. 2827370 – LESPORTSAC, with the registration date of March 30, 2004, and others.

The disputed domain name <lesportsacstore.com> differs from the registered LESPORTSAC trademark by the additional word “store” and the additional gTLD “.com”.

The disputed domain name integrates the Complainant’s LESPORTSAC trademark in its entirety, as a dominant element.

The additional word “store” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s LESPORTSAC trademark, as it is a descriptive element that refers to the selling and marketing of products, and as such is insignificant.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent alleged that it filed for a trademark application in the Chinese Trademarks office for the mark LESPORTSACSTORE and it is currently pending. However, the Respondent failed to produce supporting evidence in this regard.

According to a trademark search performed by the Panel, the Complainant owns numerous trademark registrations for the mark LESPORTSAC also in China. For example: Chinese trademark registration No. 1106166 – LESPORTSAC, with the application date of February 7, 1996 and Chinese trademark registration No. 1520870 – LESPORTSAC, with the application date of November 11, 1999. The Panel could not find any trademark application filed by the Respondent.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its LESPORTSAC trademark or a variation of it. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the LESPORTSAC (logo) trademark since the year 1984. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The Respondent alleged that it was unaware of the Complainant and its trademark and has never heard of it prior to receiving the Complaint.

However, as is clear by evidence provided by the Complainant, the disputed domain name used to lead Internet users to a website that engaged in marketing handbags, which were displayed along with the Complainant’s LESPORTSAC mark and the Complainant’s LESPORTSAC logo without its authorization. The Respondent’s prior use of the Complainant’s mark to promote similar or identical goods to the goods being offered by the Complainant is clear evidence in the Panel’s view that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its widely known LESPORTSAC trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent makes of the disputed domain name to offer quasi-identical and counterfeiting goods to the ones being offered by the Complainant constitutes bad faith on behalf of the Respondent (See: Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Another indication of the Respondent’s bad faith in registering the disputed domain name arises of the fact that the Respondent has registered the disputed domain name using what appears to be false contact information. It was decided by previous UDRP panels that the use of false registration details like these may constitute, in appropriate circumstances further evidence of bad faith (See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 disputed domain name <lesportsacstore.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: January 21, 2011

 

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