WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lacoste v. WhoisGuard Protected, WhoisGuard, Inc. / Mohd Uddin

Case No. D2019-1610

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mohd Uddin, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <lacostefranchise.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2019, 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 July 11, 2019 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 July 12, 2019.

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 July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 14, 2019. 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 Lacoste company, an entity of the Swiss group Maus Freres, which creates, manufactures and commercializes clothes, leather products, perfumes and accessories. It was founded in 1933 by André Gillier and the French famous tennis player René Lacoste.

The Complainant has become one of the world leaders in the high-end sportswear segment and commercializes its products worldwide, with 10,000 employees operating 1200 stores in 120 countries.

The Complainant owns several trademark registrations in many jurisdictions for LACOSTE, which is widely used and considered as a well-known mark, including the following registrations:

- International word trademark LACOSTE registered on April 25, 1978 under no. 437000;
- French word trademark LACOSTE registered on May 22, 1987 under no. 1410063; and
- European Union word trademark LACOSTE registered on July 28, 2006 under no. 002979524.

In addition, the Complainant also owns different domain names, among which:

- <lacoste.com>, registered on July 9, 1997;
- <lacoste.us>, registered on April 19, 2002;
- <lacoste.fr>, registered on August 9, 2005; and
- <lacoste.uk>, registered on June 19, 2014.

The disputed domain name was registered on April 27, 2019 and resolves to a parking page displaying links written in French in relation with the Complainant’s activities.

5. Parties’ Contentions

A. Complainant

The Complainant informs that it has registered numerous trademarks comprising the element LACOSTE throughout the world and that it has no relationship with the Respondent.

The Complainant alleges that the Respondent registered the disputed domain name on April 27, 2019 reproducing the Complainant’s trademark LACOSTE with the addition of the term “franchise,” which is not sufficient to avoid the confusing similarity with the Complainant’s trademark.

The Complainant mentions that its trademark registrations predate the disputed domain name, that the Respondent is not commonly known by the disputed domain name, and that it has no rights or legitimate interests in respect of it.

Furthermore, the Complainant argues that the disputed domain name was registered in bad faith since it is highly likely that the Respondent knew the Complainant and its well-known trademarks in the field of clothing and accessories. According to the Complainant, the Respondent is also using the disputed domain name in bad faith, in an attempt to attract Internet users to its website, for commercial gain, due to the fact that it resolves to a parking page which includes links in the French language in relation to the Complainant’s activities, as well as some reproductions of LACOSTE mark redirecting to competitors’ websites.

The complaint demonstrates that the Respondent used a privacy protection service to avoid being contacted and activated the email address […]@lacostefranchise.com to send fraudulent messages with franchise opportunities.

Finally, the Complainant requests the transference of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence demonstrates that the Complainant is the owner of several trademark registrations for LACOSTE in different jurisdictions and that it is considered as a well-known trademark.

The disputed domain name incorporates the famous Complainant’s trademark LACOSTE in its entirety. The addition of the term “franchise” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. On the contrary, the addition of “franchise” gives the idea that the disputed domain name refers to an authorized franchise of the Complainant or to an official website of the Complainant about its authorized franchises. It is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark LACOSTE.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was being used to mislead users, since the Respondent used an email address associated with the disputed domain name to send false franchise opportunities aiming to profit.

The Panel finds that the use of the disputed domain name, which incorporates the famous Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark LACOSTE is registered by the Complainant in several jurisdictions and has been used since a long time. The disputed domain name incorporates the Complainant’s trademark LACOSTE and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s LACOSTE mark is distinctive, widely well-known and is also considered a highly reputed trademark worldwide. Thus, a domain name that comprises such a well-known mark is undoubtedly suggestive of the registrant’s bad faith. In addition, the Panel notes that the disputed domain name includes the term “franchise”, which in this case may serve as an additional evidence of the registration of the disputed domain name in bad faith, especially considering that the Complainant demonstrated that the Respondent used an email address associated with the disputed domain name to send false and fraudulent “franchise opportunities”.

The Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by displaying

pay-per-click links in relation to the Complainant’s activities.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark LACOSTE for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being 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 name <lacostefranchise.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: August 22, 2019