World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lacoste Alligator S.A. v. Zhang Jian, chen jianjie, Zheng Hao, Tian Ya, Li Da Mao Yi, Chen Liang, Xue Dong, xixi, Afgsd, Haosu, Yuchi, li li, Lan Tian, MeryGoce, IbryCare, China

Case No. D2012-0402

1. The Parties

The Complainant is Lacoste Alligator S.A. of Genève, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondents are Zhang Jian, chen jianjie, Zheng Hao, Tian Ya, Li Da Mao Yi, Chen Liang, Xue Dong, xixi, Afgsd, Haosu, Yuchi, li li, Lan Tian, MeryGoce, IbryCare, China, of China.

2. The Domain Names and Registrars

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

The disputed domain name <lacostetrainersale.net> is registered with Shanghai Yovole Networks, Inc.

The disputed domain name <lacoste-trainers.net> is registered with GoDaddy.com, LLC.

The disputed domain names <lacoste-trainerss-uk.net> and <lacoste-trainersuk.net> are registered with Chengdu West Dimension Digital Technology Co., Ltd.

The disputed domain names <lacoste-trainers-uk.com>, <lacoste-trainers-uk.net> and <lacostetrainers-uk.org> are registered with Xin Net Technology Corp.

The disputed domain names <buylacostetrainers.com>, <buylacostetrainersuk.com>, <lacosteshoescanada.com>, <lacosteshoescanada.net>, <lacoste-shoes-online.com>, <lacoste-trainersuk.com>, <lacostetrainers-uk.com>, <lacostetrainers-uk.net>, <lacostetrainersukonline.com>, <lacoste-trainers-uk.org> and <lacoste-trainersuk.org> are registered with Jiangsu Bangning Science & technology Co. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 29, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd., HiChina Zhicheng Technology Ltd., Shanghai Yovole Networks, Inc., GoDaddy.com, LLC, Chengdu West Dimension Digital Technology Co., Ltd., and Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On February 29, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response indicating the disputed domain name <lacoste-trainers.net> is currently part of an active court case. On March 1, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 1, 2012, Xin Net Technology transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 1, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants in some of the disputed domain names and providing the contact details, and for the disputed domain names <buylacostetrainersuk.com>, <lacosteshoescanada.net>, and <lacostetrainersukonline.com>, the registrant and contact information are differed from the named Respondents and contact information in the Complaint. On March 6, 2012, Shanghai Yovole Networks, Inc. and Chengdu West Dimension Digital Technology Co., Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent a Notification of Complaint Deficiency to Complainant on March 13, 2012 providing the registrant and contact information provided by the Registrar. In response to the notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 30, 2012.

On April 2, 2012, the Center transmitted an email to the Parties in both the Chinese and English lagnaueg regarding the language of the proceeding. On April 2, 2012, Complainant confirms its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 3, 2012.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 18, 2012. 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 a Swiss company which specializes in clothing and fashion accessories which are branded with its LACOSTE trademark. Complainant’s brand was named after one of its founders, Renee Lacoste, which helped introduce Complainant’s products in the 1930s. Complainant and its goods have been featured in multiple third party press articles and features, and these articles and features have referred to Complainant by using Complainant’s LACOSTE trademark. Goods offered by Complainant under its LACOSTE mark on its website include clothing, watches, glasses, fragrances, shoes, and housewares. In addition to its website, Complainant advertises and sells goods bearing its LACOSTE mark in boutiques in multiple countries.

Complainant owns trademark registration for its LACOSTE trademark in multiple jurisdictions. It also maintains numerous domain names which incorporate “lacoste” which are visited by over 2 million people per year.

The disputed domain names were created between January 2011 and February 2012.

5. Parties’ Contentions

A. Complainant

Complainant maintains that its brand is one of the most well-known sportswear brands in the world due to its extensive sales and public recognition by third parties. Complainant has provided surveys, articles, and publications which support these contentions.

Complainant claims that the disputed domain names have been used to sell counterfeit products which bear its LACOSTE trademark. In support of these allegations, Complainant has provided a declaration which has been executed by Ms. Zaragoza, an employee of Complainant. Complainant maintains that use of its trademark in the disputed domain names creates a likelihood of consumer confusion with its trademark and that the other literal elements featured in the disputed domain names are generic terms which do not distinguish the disputed domain names from its LACOSTE trademark. Complainant maintains that Respondents have no rights or legitimate interests in the disputed domain names because (1) they were each registered long after Complainant obtained rights in its LACOSTE trademark, (2) there is no relationship between Complainant and Respondents, and (3). The disputed domain names are being used to sell counterfeit goods. In support of these contentions, Complainant has provided printouts of the webpages featured at the disputed domain names and summaries of prior UDRP decisions which cite its LACOSTE trademark as a well-known mark which could not be used in a domain name without creating confusion. Regarding bad faith, Complainant cites use of its LACOSTE trademark in each disputed domain name by Respondents as evidence of an awareness of Complainant and use of the disputed domain names by Respondents to sell counterfeit goods using Complainant’s LACOSTE trademark as evidence of violation of paragraphs 4(b)(i) and 4(b)(ii) of the Policy.

Complainant has requested that each of the disputed domain names be transferred from Respondents to Complainant.

B. Respondent

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

The Complaint was submitted in the English language. The language of the Registration Agreements for the disputed domain names is Chinese. Complainant has requested that English be the language of the proceedings.

All communications from the Center have been transmitted in the English and Chinese languages. The record shows that Respondent comprehends English. Specifically, most of the content available at the disputed domain names has been featured in the English language, while communications have been sent by registrants of some of the disputed domain names to Complainant in the English language. Based on these factors, the Panel concludes that it is acceptable to proceed in the English language. Translation of the Complaint and other materials would cause unnecessary expense and delay.

B. Consolidation of Multiple Respondents into a Single Proceeding

The record indicates that different WhoIs contact information is associated with disputed domain names involved in the proceeding. Having reviewed the contact information in the record, the Panel notes that identical or similar registrant names, e-mail addresses, and name servers are associated with the disputed domain names and that some of the disputed domain names redirect to websites associated with other disputed domain names cited in the Complaint.

The Panel is satisfied that the disputed domain names have been registered by the same individual or representative entity based upon similarities between the disputed domain names and the content of the WhoIs records. This conclusion is supported by the fact that communications were received by Complainant from an individual or entity which claimed to be the operator of certain disputed domain names which feature different WhoIs information, namely <lacoste-trainers-uk.net>, <lacosteshoescanada.net>, <lacoste-trainerss-uk.net>, and <buylacostetrainers.com>.

Further, the content of the disputed domain names at issue supports consolidation, as each has featured similar webpages featuring Complainant’s trademarks and advertising goods for sale. See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (noting that the domain names involved “were all directed to essentially identical websites” in support of its finding that the domain names were controlled by a single party).

Based on the circumstances and the lack of participation in these proceedings on behalf of Respondents, the Panel is satisfied that the consolidation of these disputed domain names into a single proceeding is appropriate.

C. Identical or Confusingly Similar

Each of the disputed domain names features Complainant’s LACOSTE trademark in its entirety, a trademark which has been cited by prior UDRP panels as a mark which has a certain level of fame and/or is well-known. See, e.g., Lacoste Alligator S.A. v. Domain Active Pty. Ltd., WIPO Case No. D2005-0673 (citing Complainant’s LACOSTE mark as “well-known”). It has been held by prior UDRP panels that the incorporation of a trademark in its entirety into a domain name supports a finding of a likelihood of confusion. See, e.g., Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark “Xerox”. This is sufficient to justify the finding that the name is "confusingly similar” to the Complainant’s registered trademarks”). In the present case, the mark incorporated in the disputed domain names has also been recognized as well-known. This may be sufficient grounds for finding that the disputed domain names are likely to be confused with the trademark at issue. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (“Long-established precedent has generally recognized confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”).

The Panel has considered the additional literal elements featured in each of the disputed domain names. The additional literal elements involved are as follows:

- “Trainers” and “UK” in <lacoste-trainers-uk.com>, <lacoste-trainersuk.com>, <lacostetrainers-uk.com>, <lacoste-trainers-uk.net>, <lacoste-trainersuk.net>, <lacostetrainers-uk.net>, <lacoste-trainers-uk.org>, <lacoste-trainersuk.org>, and <lacostetrainers-uk.org>

- “Trainerss” and “UK” in <lacoste-trainerss-uk.net>

- “Trainers” and “Sale” in <lacostetrainersale.net>

- “Trainers” in <lacoste-trainers.net>

- “Trainers”, “UK”, and “Online” in <lacostetrainersukonline.com>

- “Buy”, “Trainers”, and “UK” in <buylacostetrainersuk.com>

- “Buy” and “Trainers” in <buylacostetrainers.com>

- “Discount” and “Shoes” in <discountlacosteshoes.com>

- “Shoes” and Canada” in <lacosteshoescanada.com> and <lacosteshoescanada.net>

- “Shoes” and “Online” in <lacoste-shoes-online.com>

The Panel finds that none of the additional terms utilized in the disputed domain names could be considered distinctive to avoid a finding of likely confusion between the disputed domain names at issue and Complainant’s LACOSTE trademark. Use of the terms “trainers” and “Sshoes” only aggravates the likelihood of confusion because they describe products sold by Complainant under its LACOSTE trademark, use of “UK” and “Canada” do nothing to distinguish the disputed domain names from the LACOSTE trademark because they are terms with geographic connotations, while use of “discount”, “online”, and “buy” as featured in the disputed domain names only increase the likelihood that consumers would believe that the content is associated with or affiliated with Complainant’s retail products. Finally, use of the extra letter “s” in “Trainerss” in <lacoste-trainerss-uk.net> does not create a sufficiently different commercial impression from the disputed domain name <lacoste-trainers-uk.net> to support a finding that the disputed domain name is not likely to be confused with Complainant’s LACOSTE trademark.

The Panel notes that prior UDRP decisions involving similarly composed domain names support a finding of likely confusion including Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627 (Holding that domain names including <gilbeys-vodka.com>, <gordonsvodka.com>, and <popov-vodka.com> were confusingly similar to the GILBEYS, GORDONS, and POPOV trademarks in which complainant had established rights because the word “vodka” is descriptive of the goods offered by complainant under these marks); eBay Inc. v. David Sach, WIPO Case No. D2009-1083 and (holding that the incorporation of a country code is not enough to avoid the likelihood of confusion arising from use of the EBAY mark); Dollfus Mieg et Compagnis (DMC) v. Jesse, WIPO Case No. D2002-1137 (holding that “the addition of the name of a country as a suffix normally indicates that it is the domain name of the trademark owner for the business activities in that country”); Barnes & Noble College Bookstores, Inc. v. Good Domains, WIPO Case No. D2002-0812 (holding that the term “online” is generic when combined with a trademark to form a domain name); Sunovion Pharmaceuticals Inc. v. Brandings, WIPO Case No. D2011-1536 (Concluding that the term “buy” does nothing to reduce the likelihood of confusion when combined with a trademark to form a domain name, “particularly since the word appears to be relevant to Internet users seeking to buy the commercial product” branded under the mark); and Vibram S.p.A. v. Peter, WIPO Case No. D2010-1457 (finding that “discount” is a descriptive term when combined with a trademark to form a domain name).

Based on the use of Complainant’s reputed trademark in each of the disputed domain names and the generic and descriptive traits of the additional literal elements added to the trademark to form each of the disputed domain names, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Complainant has provided ample evidence of its established rights in the LACOSTE trademark including details of trademark registrations which pre-date the disputed domain names and evidence of third party promotion and recognition of the notoriety of its LACOSTE brand and mark.

There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s LACOSTE trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term LACOSTE. Complainant has provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name, and the burden of production therefore shifts to Respondent to come forward with evidence demonstrating the rights or legitimate interests it may have. However, Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain names.

The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith given the unlikelihood that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, supra (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s PORSCHE trademark when registering <porsche-me.com>). Given the notoriety of Complainant’s LACOSTE trademark, it is implausible that Respondent was unaware of the trademark when registering the disputed domain names given that each incorporates this trademark in its entirety. Any doubts in favor of Respondent are minimized upon consideration of the use of terms for the goods sold under Complainant’s trademark in each of the disputed domain names, specifically “shoes” and “trainers”. Simple Internet searches for “Lacoste trainers” and “Lacoste shoes” illustrates that the two terms are commonly used in reference to Complainant’s goods, indicating that the disputed domain names registered by Respondent have the potential to divert web traffic from Complainant’s domain names regardless of the content featured on the associated websites.

The record shows that the disputed domain names have featured Complainant’s LACOSTE trademarks and have advertised goods identical to those sold by Complainant. Further, there is evidence in the record which indicates that goods sold via these disputed domain names are counterfeit. A declaration provided by an employee of Complainant confirms that, upon examination of goods purchased from some of the disputed domain names listed in the Complaint, it was determined that the products were counterfeit based upon quality, packaging, and manufacturing characteristics. Additionally, the record shows that websites featured at the disputed domain names have featured products identical to those sold by Complainant and have advertised these products using Complainant’s LACOSTE trademark, and that the content suggests a connection between the disputed domain names and Complainant. Language featured at the disputed domain names such as “Copyright © 2011 Lacoste Trainers UK” and “Welcome to Buy Lacoste Shoes in Lacoste Shoes Canada Online” suggest a relationship between the content and Complainant, specifically that the disputed domain names are owned or operated by Complainant or somehow associated with, affiliated with, endorsed by, or approved by Complainant.

Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. There is no evidence in the record to indicate that Respondent chose the disputed domain names which are subject of the Complaint based upon a bona fide intent to offer goods or services distinctive from those provided by Complainant under its LACOSTE trademark. Moreover, the incorporation of Complainant’s trademark in the disputed domain names combined with the content featured on the disputed domain names illustrates an intent to deceive consumers into believing that the disputed domain names are operated by or connected with Complainant. There is no evidence in the record to refute this conclusion.

Accordingly, the Panel finds that the disputed domain names have been registered and used in bad faith.

7. Decision

For 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 <lacoste-trainers-uk.com>, <lacoste-trainersuk.com>, <lacostetrainers-uk.com>, <lacoste-trainers-uk.net>, <lacoste-trainersuk.net>, <lacostetrainers-uk.net>, <lacoste-trainers-uk.org>, <lacoste-trainersuk.org>, <lacostetrainers-uk.org>, <lacoste-trainerss-uk.net>, <lacostetrainersale.net>, <lacoste-trainers.net>, <lacostetrainersukonline.com>, <buylacostetrainersuk.com>, <buylacostetrainers.com>, <discountlacosteshoes.com>, <lacosteshoescanada.com>, <lacosteshoescanada.net>, and <lacoste-shoes-online.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Dated: June 11, 2012

 

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