WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Louis Vuitton Malletier SAS v. Jamey, Wakeen Industries LLC
Case No. D2021-1201
1. The Parties
The Complainant is Louis Vuitton Malletier SAS, France, represented by Studio Barbero, Italy.
The Respondent is Jamey, Wakeen Industries LLC, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <louisvuitton.lat> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2021, the Registrar 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent filed the Response on April 27, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on May 19, 2021. 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 the 1850s, the Complainant and its predecessors have operated the well-known fashion brand “Louis Vuitton”.
The Complainant’s website is located at “www.louisvuitton.com”.
The Complainant owns many trade marks worldwide for LOUIS VUITTON, including United States trade mark no. 1045932, filed on August 13, 1975, registered on August 10, 1976, in class 18.
The disputed domain name was registered on October 27, 2019.
As of October 29, 2020, the disputed domain name resolved to an error page.
The Complainant sent a legal letter to the Respondent on October 29, 2020.
The Respondent responded on November 2, 2020, stating that it had acquired the disputed domain name in good faith “related to providing criticism, parody, or fan based” and that it did not intend to use any trade mark for direct or indirect financial gain. The Respondent said that the website would not create any confusion in relation to the Complainant’s trade marks. The Respondent added that the disputed domain name had not been used to infringe anyone’s rights and that no complaint had ever been filed against the Respondent relating to domain names or trade mark infringement.
As of November 9, 2020, the disputed domain name was used for a parking page with a range of pay per click (“PPC”) links including for “Designer Apparel”.
On November 20, 2020, the Complainant’s lawyers sent a legal letter to the Respondent, including a request for evidence concerning the Respondent’s proposed use of the disputed domain name that predated the Complainant’s first letter.
The Respondent replied on November 30, 2020, stating that any commercial PPC links were published without the Respondent’s permission and providing what it described as “convincing evidence to show good faith and plans of development” in the form of the following:
- a receipt for web hosting dated November 8, 2020;
- a screenshot allegedly showing download of a template to build the website at the disputed domain name, which consisted of a list of various files/folders and dates including “louisvuitton.lat DNS errors” dated November 28, 2020; and
- an email from a hosting provider dated November 28, 2020, stating that the provider was experiencing connectivity issues in relation to domain names using the “.lat” extension, provided by the Respondent to support its assertion that it had encountered difficulties using this “new” and “unstable” domain extension with “as of now no fix”.
The Respondent reiterated that there would be no confusion notwithstanding the fact that the disputed domain name was identical to the Complainant’s trade mark. Finally, the Respondent asked what the Complainant would do with the disputed domain name if it obtained ownership thereof and whether the Complainant would review and approve the Respondent’s website once built, given that there were other fan pages using the Complainant’s trade mark.
From around December 1, 2020, the website at the disputed domain name resolved to an undeveloped WordPress template.
The Complainant’s lawyers emailed the Respondent on December 9, 2020, contesting the Respondent’s assertions and pointing out, amongst other things, that none of the documents produced by the Respondent predated the Complainant’s first letter.
The Respondent replied on December 15, 2020, simply reiterating that the Respondent had never published a website using the disputed domain name and had therefore not infringed any trade marks.
The Complainant’s lawyers sent a further communication on December 16, 2020, alluding to the concept of passive holding, and a chaser on January 27, 2021, to which the Respondent did not respond.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant’s trade mark is undoubtedly well-known.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to use its trade mark.
The Respondent is not commonly known by the disputed domain name and there is no evidence that it holds any trade mark corresponding to the disputed domain name.
The Respondent has not provided evidence of use, or of demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute.
Use of the disputed domain name for a parking page with PPC links targeting, amongst other things, products similar to those of the Complainant, was not a legitimate use thereof.
As regards the allegedly proposed “criticism, parody or a fan based” website dedicated to the Complainant’s products, the purported blog was activated only after the Complainant’s second legal letter and, after more than four months, it remains a mere template without any actual content. The purported blog site was created purely to enable the Respondent to claim a defence of noncommercial or fair use.
In the unlikely event that the Respondent establishes that it started a noncommercial blog before notice of the dispute, such use would be illegitimate in any event in view of the identity between the disputed domain name and the Complainant’s well known trade mark. Such a conclusion is reinforced by the Respondent’s use of a geographic Top-Level domain (“TLD”) such as “.lat”.
The disputed domain name was registered and is being used in bad faith.
It is inconceivable that the Complainant was unaware of the existence of the Complainant’s famous trade mark. Misappropriation of a well-known trade mark in a domain name of itself constitutes bad faith registration.
The Respondent registered the disputed domain name to prevent the Complainant from reflecting its trade mark in a corresponding domain name and has engaged in a pattern of such conduct.
The various uses of the disputed domain name constitute additional evidence of bad faith use, as follows.
The error notice at the disputed domain name is indicative of passive holding.
The parking page with PPC links constitutes additional evidence of bad faith use because the Respondent and/or the Registrar earn commission from those links and the fact that the Respondent did not itself directly profit does not prevent a finding of bad faith.
The minimal content at the current website at the disputed domain name also evidences bad faith in that it indicates that the website was only made operational in response to the complaint raised by the Complainant.
The selection of “.lat” evidences bad faith because Latin America corresponds to one of the Complainant’s areas of business activity.
The Respondent owns at least ten other domain names corresponding to well-known trade marks including <ebay.lat> and <ferrari.lat>.
The following is a summary of the Respondent’s contentions.
The Respondent has already made it clear to the Complainant that it did not register the disputed domain name for sale to the Complainant.
The Respondent did not set out to block the Complainant from reflecting its trade mark in a corresponding domain name, having engaged in a pattern of such conduct. The Respondent has never bought, and then sold, a single domain name. The Respondent has a legitimate reason to acquire any domain name that it buys and it does not do so in order to infringe trade marks. The Respondent has never previously been the subject of any similar claims. The Respondent feels that it has been bullied, and falsely accused of wrongdoing, to compel it to transfer the disputed domain name to the Complainant in return for only the acquisition cost.
The Respondent certainly did not register the disputed domain name in order to disrupt the Complainant’s business.
Nor did the Respondent intend to create a likelihood of confusion with the Complainant’s trade mark. The purpose of the fan site would have been made very clear at the entrance to it. Nor did the Respondent intend to make any commercial gain.
The Complainant allows other similar sites to exist. The Respondent endeavoured to resolve this dispute by asking the Complainant if it would approve the Respondent’s plans, but the Complainant refused to answer. The Complainant did not make a good faith effort to resolve the dispute.
A trade mark attorney has advised the Respondent that it has done nothing wrong and has not infringed any trade mark. The attorney advised that the next step would be for the Complainant to file the Complaint or make an offer to buy the disputed domain name, but the Respondent did not enter financial discussions with the Complainant as it did not wish to sell the disputed domain name.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark LOUIS VUITTON by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the long-standing, extensive and worldwide use of that name.
Disregarding the TLD suffix, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to various goods / services, including those which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0 , which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
As to paragraph 4(c)(iii) of the Policy, the Respondent claims that it intends to use the disputed domain name for “related to providing criticism, parody, or fan based”. As part of the pre-action correspondence with the Complainant, the Respondent provided various documents which it described as “convincing evidence to show good faith and plans of development”. See section 4 above. However, all of the documents produced by the Respondent post-date the Complainant’s first letter and none refers to use of the disputed domain name for a criticism, fan or parody site. In the Panel’s view therefore, the Respondent’s evidence falls short of constituting demonstrable preparations to use the disputed domain name for the purposes claimed.
The Panel would add that, in any case, criticism, fan and parody sites are markedly different and the Respondent did not specify in its correspondence which of these it allegedly had in mind – thereby undercutting any legitimacy his argument may have had. In its Response, the Respondent referred to a “fan site”, but without giving details.
In any event, even if the Respondent had clarified its intention and provided convincing evidence, it is unlikely that it would have established a legitimate interest in using the disputed domain name for the intended purpose. As explained in sections 2.6.2 and 2.7.2 of WIPO Overview 3.0, panels tend to find that any general right to operate fan or criticism sites does not necessarily extend to registering or using a domain name identical to a trade mark (i.e., <trademark.tld>) as this creates an impermissible risk of user confusion through impersonation. In this case, the disputed domain name is identical to the Complainant’s trade mark and, in the Panel’s view, it constitutes a misrepresentation to users that any associated website is likely to be connected with the Complainant. While Internet users arriving at such a website will at some point realise that it is not officially associated with the Complainant, e.g., if the Respondent were to use the kind of prominent disclaimer that it claims to propose, the users have nonetheless been attracted to the site on a false premise, effectively a bait-and-switch. (In the case of fan sites, where the domain name is identical to the trade mark, panels have also noted that this prevents the trade mark holder from exercising its rights to the mark and so managing its presence on the Internet, including through a corresponding email address.)
Accordingly, the Panel finds that paragraph 4(c)(iii) of the Policy does not apply in this case and there is no evidence that paragraph 4(c)(ii) of the Policy applies either.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes the following:
First, it is not in dispute that the Respondent registered the disputed domain name with the Complainant’s famous trade mark in mind.
Second, as discussed in in section 6.B. above, the Respondent has not clearly explained exactly what kind of “criticism, parody, or fan based” website it allegedly had in mind and has failed to provide convincing evidence of preparations to use the use the disputed domain name accordingly. Furthermore, in a seemingly defensive move following correspondence from the Complainant, the Respondent uploaded an undeveloped template blog page to the website at the disputed domain name, which has remained unchanged for at least six months. All of this creates the impression that the Respondent never genuinely intended to use the disputed domain name for a noncommercial fan or criticism or parody site, but instead possessed an ulterior commercial motive.
Third, the Respondent has registered a number of “.lat” domain names reflecting other well-known trade marks and has not clearly explained its purpose in doing so.
Fourth, as mentioned above, the disputed domain name has been used as a parking page with PPC including for goods competing with those of the Complainant. Section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated pay-per-click links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
The Panel finds that the foregoing constitute registration and use of the disputed domain name in bad faith.
The Panel would add that it does not consider the correspondence between the parties amounts to “bullying” by the Complainant, as the Respondent claims. On the contrary, it appears that the Complainant’s representatives gave the Respondent every opportunity to explain its position and to provide supporting evidence.
Furthermore, the Panel does not consider that the Complainant was under any obligation to agree to the Respondent’s proposal that the Complainant consider and approve the Respondent’s alleged plans for use of the website.
Finally, the Respondent has not provided any evidence in support of its assertion that the Complainant “allowed” other “similar sites” to exist. Nor has the Respondent explained why, even if the Complainant has done so, any such permission should benefit the Respondent.
For the reasons set out above, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <louisvuitton.lat> be transferred to the Complainant.
Date: June 2, 2021