WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lacoste v. c/o WHOIStrustee.com Limited, Registrant of lacostetw.com / Hu Yang, Huxiang

Case No. D2020-0793

1. The Parties

The Complainant is Lacoste, France, represented by AARPI Scan Avocats, France.

The Respondent is c/o WHOIStrustee.com Limited, Registrant of lacostetw.com, United Kingdom / Hu Yang, Huxiang, China.

2. The Domain Name and Registrar

The disputed domain name <lacostetw.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 8, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2020.

On April 23, 2020, the Center received the Complainant’s further submission regarding the use of the disputed domain name.

The Center appointed Joseph Simone as the sole panelist in this matter on May 6, 2020. 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

Since its foundation in 1933 by André Gillier and a world-famous French tennis player, René Lacoste, the Complainant has over time become a world leader in high-end sportswear. Its presence has also expanded globally, with 10,000 employees now operating 1,200 stores in 120 countries.

The Complainant owns a large number of trademark registrations for LACOSTE, including the following:

- International Trademark Registration No. 437000 for LACOSTE, registered on April 25, 1978;

- French Trademark Registration No. 1410063 for LACOSTE, registered on May 22, 1987; and

- European Union Trade Mark Registration No. 002979524 for LACOSTE, registered on July 28, 2006.

In addition, the Complainant owns several domain names through which it advertises and sells its official products, such as <lacoste.com>, <lacoste.us> and <lacoste.fr>.

The disputed domain name <lacostetw.com> was registered on December 5, 2018. It previously resolved to a website that purportedly advertised for sale Lacoste branded products. At the time of filing of the Complaint, the disputed domain name did not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments are as follows:

(1) The disputed domain name is identical or confusingly similar to its trademark.

The disputed domain name reproduces the Complainant’s distinctive trademark LACOSTE in its entirety and adds to it the letters “tw” – the abbreviation commonly associated with Taiwan Province of China. This addition is insufficient to dispel a finding of confusing similarity.

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

To the best of the Complainant’s knowledge, the Respondent is not, and has never been, known by the name Lacoste. Further, the Complainant has never authorized, or otherwise permitted the Respondent to register or use the disputed domain name. Until recently, the Respondent had been using the disputed domain name to sell suspected infringing Lacoste products to consumers in Asia. This cannot be said to constitute a bona fide offering of goods that would confer rights or legitimate interests on the Respondent.

(3) The Respondent has registered and is using the disputed domain name in bad faith.

The Complainant asserts that the Respondent knew of the Complainant and its widely known trademark when it registered the disputed domain name for the following reasons. First, the disputed domain name is confusingly similar to the Complainant’s trademarks and domain names, which have been registered and used for many years prior to the registration of the disputed domain name. Second, any search for “Lacoste” conducted on a search engine would first return results of the Complainant and its products. Finally, the Respondent had been selling unauthorized Lacoste products using the disputed domain name. Therefore, the Respondent was fully aware of the Complainant’s prior rights when it registered the disputed domain name for the sole purpose of diverting consumers away from the Complainant.

Further, the Complainant claims that the Respondent is using the disputed domain name in bad faith. This is evidenced by the Respondent’s attempt to attract Internet users to a website selling suspected counterfeit Lacoste products, by creating a likelihood of confusion as to the source, affiliation or endorsement of the website for its own commercial gain. The Respondent’s bad faith is further supported by the fact that it ignored the Complainant’s takedown notice requesting the removal of the unauthorized materials.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant has shown that it owns valid trademark registrations for LACOSTE, and therefore, it possesses rights to the mark.

The test for whether a domain name is identical or confusingly similar to a complainant’s trademarks is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Here, the disputed domain name <lacostetw.com> is comprised of the Complainant’s distinctive trademark LACOSTE in its entirety, plus the additional geographical indicator “tw” – a common reference to Taiwan Province of China.

As such, the disputed domain name is confusingly similar to the Complainant’s trademark and the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

Under the second element, a complainant must demonstrate that the respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).

While the overall burden of proof rests with the complainant, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof` for this element shifts to the respondent to produce evidence demonstrating its rights or legitimate interests in the domain name. If the respondent fails to satisfy its burden of proof, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0 .

In accordance with paragraph 4(c) of the Policy, the Panel may consider the following factors when assessing whether the Respondent has demonstrated rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, the Respondent’s use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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

(iii) the Respondent 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.

The Complainant submits that it has no affiliation with, and has never authorized or otherwise permitted, the Respondent to use or register domain names incorporating its trademark. There is also no evidence that the Respondent is commonly known by the disputed domain name. Instead, the composition of the disputed domain name itself – the Complainant’s trademark in its entirety plus an additional geographical term – carries a risk of implied affiliation that cannot constitute fair use. The fact that the disputed domain name had been linked to a website claiming to be an official website of the Complainant and purportedly selling Lacoste products further dispels a finding of the Respondent’s legitimate noncommercial use of the disputed domain name, as well as any indication of a bona fide offering of goods or services. Moreover, there were links related to the Complainant’s competitors on the website at the disputed domain name.

Thus, under these circumstances, and certainly in the absence of any explanation and evidence from the Respondent, the Panel concludes that the Complainant has shown that the Respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name. The Panel finds that the second element of the Policy is satisfied.

C. Registered and Used in Bad Faith

Under the final element of the Policy, the complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Bad faith under the Policy is understood to include circumstances where:

“by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” (paragraph 4(b)(iv) of the Policy).

“[T]he mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 of the WIPO Overview 3.0).

The disputed domain name is consisted of the Complainant’s distinctive and widely known trademark in its entirety and the additional geographical term “tw”. Further, the Complainant has put forth screenshots of the disputed domain name and archived pages which suggest that the disputed domain name had been used to purportedly sell unauthorized Lacoste products directed at customers based in Taiwan Province of China. Given these circumstances, it is very difficult to believe that the Respondent was wholly unaware of the Complainant and its trademark when it registered the disputed domain name.

Similarly, the Respondent is using the disputed domain name in bad faith. After registering the disputed domain name, the Respondent used it to operate a website to advertise and purportedly sell products bearing the Complainant’s trademark without authorization. In addition, it claimed to be the official website of the Complainant. While the disputed domain name currently resolves to an error page (at least when accessed from certain areas), it is clear that the Respondent intended to mislead and deceive consumers into believing that the disputed domain name was affiliated with the Complainant, for no other apparent purpose than the Respondent’s own commercial gain.

The Panel notes that the Complainant has made a supplemental filing of additional evidence, which purportedly shows that the disputed domain name is still being used to sell unauthorized Lacoste branded products, although the content is only accessible to consumers based in Taiwan Province of China. As there is already ample evidence to support a finding of bad faith, the Panel does not need to rule on the admissibility of this additional evidence.

Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the final requirement of the UDRP is satisfied.

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 name <lacostetw.com> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: May 19, 2020