WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lacoste v. Juliane Meier, Anna FINK, Sarah Amsel, and Domain Administrator, See PrivacyGuardian.org / Lisa Ziegler and Kristin Koehler
Case No. D2021-4206
1. The Parties
The Complainant is Lacoste, France, represented by AARPI Scan Avocats, France.
The Respondents are Juliane Meier, Anna Fink, and Sarah Amsel, Germany, and Domain Administrator, See PrivacyGuardian.org, United States of America / Lisa Ziegler and Kristin Koehler, Germany.
2. The Domain Names and Registrars
The disputed domain names <lacosteakcija.co> and <lacostegreece.co> are registered with 1API GmbH, (the “First Registrar”).
The disputed domain names <lacosteakcija.com> and <lacostedecolombia.com> are registered with NameSilo, LLC (the “Second Registrar”).
The disputed domain name <lacosteoutletgreece.com> is registered with NETIM SARL (the “Third Registrar”). (The First, Second, and Third Registrars are collectively hereinafter referred to as the “Registrars” unless otherwise indicated).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 15, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On December 15, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. On December 16, 2021, the First Registrar and Third Registrar transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on December 16, 2021, 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 December 20, 2021.
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 Respondents of the Complaint, and the proceedings commenced on December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 20, 2022.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 28, 2022. 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 part of the Swiss Group MAUS FRERES which creates, manufactures and commercializes high-end products such as ready-made clothes, leatherwork, perfumes and other accessorizes. The Complainant was founded in 1933 by André Gillier and René Lacoste, a famous French tennis player. The Complainant has been registered before the Trade and Companies Register of Paris in France since 1954. Over the years, the Complainant has become one of the world leaders in the high-end sportswear market. End of 2017, it had annual sales of EUR 2 billion. The Complainant employs 8,500 employees worldwide, operating 1100 stores in 98 countries.
The Complainant owns a large number of trademarks consisting or including the wording LACOSTE in France and other jurisdictions, such as International trademark registration no. 437000, LACOSTE, registered on April 25, 1978. The Complainant offers for sale its goods online, notably through its official website located at “www.lacoste.com”, and also holds other domain names such as <lacoste.us> and <lacoste.fr>. All trademarks and domain names were registered before the disputed domain names.
The disputed domain names were registered in the period from May 12, 2021, to November 24, 2021. At the time of filing the Complaint, and at the time of drafting the Decision, the disputed domain names resolved to similar looking websites selling counterfeit LACOSTE products.
5. Parties’ Contentions
Complainant asserts that it is highly likely that the five disputed domain names are part of a large-scale fraudulent activity by the same person or the same group of persons, and under the same common control by connected parties, and thus that consolidation would be fair and equitable. It is based on the following claims:
(i) all disputed domain names are based on the same structure, i.e., they reproduce the trademark LACOSTE in its entirety followed by a generic and/or geographical denomination;
(ii) all disputed domain names have been registered during the same year and in a six month period;
(iii) the two disputed domain names registered in August 2021 have been registered using the same Registrar NameSilo, and the two disputed domain names registered in November 2021 have been registered using the same Registrar 1API;
(iv) all disputed domain names resolve to the same website, the only difference being the language used;
(v) the disputed domain name <lacosteakcija.com> points to the disputed domain name <lacosteakcija.co>;
(vi) the disputed domain name <lacosteoutletgreece.com> points to the disputed domain name <lacostegreece.co>;
(vii) all the disputed domain names use the same IP address, except the disputed domain name <lacostedecolombia.com> (which is located on the same range of IP addresses as the others); and
(viii) all disputed domain names use the same IP location, i.e., Uppsala Län in Sweden.
The Complainant provides evidence of trademark registrations, and the fame of its trademark. The Complainant argues that all the disputed domain names incorporate the Complainant’s trademark LACOSTE with the addition of the terms “akcija”, “colombia”, “greece” and “outlet”, which does not prevent a finding of confusing similarity with the Complainant's trademark.
The Complainant asserts that the Respondents are not authorized or permitted to use the Complainant’s trademark. The Complainant argues that the Respondents are not commonly known by the disputed domain names and are not making any legitimate noncommercial use of the disputed domain names. The Respondents cannot establish rights in the disputed domain names, as they have not made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the disputed domain names points to websites reproducing the trademark LACOSTE with the famous crocodile logo and selling supposed counterfeit goods of the Complainant.
Finally, the Complainant submits that given the Complainant’s reputation, it is unlikely that the Respondents were unaware of the Complainant and its well-known trademarks. The Complainant argues that the Respondents have intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark, evident from the use of the said disputed domain names. The Complainant’s trademarks and domain names were registered long before the registration of the disputed domain names and the Respondents uses the disputed domain names to sell products infringing the Complainant’s rights. The Complainant points out that the Respondents have also reproduced the Complainant’s famous logo.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural matter – consolidation of Respondents
The Panel agrees that the disputed domain names are likely to be under the common control. The Panel has carefully examined the evidence provided by the Complainant and notes that the Respondents have not – despite given the opportunity – argued or filed any evidence to rebut the Complainant’s contentions. The Panel notes in particular the similarity of the webpages which the disputed domain names resolves to and the use of IP-addresses at the same IP location.
The Panel concludes that consolidation of the Domain Names in the present case would be fair and equitable to the Parties. Based on the Complaint, and a consideration of procedural efficiency, the Panel orders consolation of the disputed domain names, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
B. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark LACOSTE. The test for confusing similarity involves a comparison between the trademark and the disputed domain names. The disputed domain names incorporate the Complainant’s trademark, with the addition of the terms “akcija”, “colombia”, “greece”, and “outlet”. The additions do not prevent a finding of confusing similarity between the disputed domain names and the trademark. See WIPO Overview 3.0, section 1.8
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic
Top-Level Domains (i.e., “.com”) and country code Top-Level Domain (i.e., “.co”), see WIPO Overview 3.0, section 1.11.
The Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondents to register the disputed domain names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondents have registered the disputed domain names as a trademark or acquired unregistered trademark rights. The Panel finds no indication that the Respondents are, or have been, commonly known by the disputed domain names. The Respondents cannot establish rights in the disputed domain names, particularly as they have not made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering. The Respondents’ use of the disputed domain names is unauthorized and clearly not bona fide. The disputed domain names have been used to impersonate the Complainant, using the Complainant’s copyrighted images and trademarks in an alleged offering of the Complainant’s products, seeking to mislead Internet users as to the association or endorsement by the Complainant of these websites. The failure to include any clarifying statement as to the websites’ relationship, or lack thereof, to the Complainant further supports a finding that such use does not constitute noncommercial fair use nor a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondents has no rights or legitimate interests in respect of the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel agrees with the Complainant that the Respondents must have been aware of the Complainant when the Respondents registered the disputed domain names. It is evident from the use of the disputed domain names and the fact that the Complainant’s well-known trademark predate the registrations of the disputed domain names.
The Respondents’ use of the disputed domain names is also clear evidence of bad faith use. The Respondents have used them in a fraudulent scheme to attract Internet users for commercial gain, by creating confusion with the Complainant’s well-known trademark. The Respondents have purported to use the disputed domain names for the same service as supplied by the Complainant and used the Complainant’s world-famous logo. The fact that the Respondents have not replied to the Complaint and used a privacy protection service (as well as fake contact details) to conceal their identity further points to bad faith in the context of the present case.
For the reasons set out above, the Panel concludes that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 names <lacosteakcija.co>, <lacosteakcija.com>, <lacostedecolombia.com>, <lacostegreece.co>, and <lacosteoutletgreece.com> be transferred to the Complainant.
Date: February 11, 2022