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Lacoste Alligator S.A. v. Domain Active Pty. Ltd. [2005] GENDND 1427 (29 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lacoste Alligator S.A. v. Domain Active Pty. Ltd.

Case No. D2005-0673

1. The Parties

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

The Respondent is Domain Active Pty. Ltd., Clayfield, Australia.

2. The Domain Names and Registrar

The disputed domain names <discountlacoste.com>, <lacosteshirtsonline.com>, <onlinelacoste.com> and <wholesalelacoste.com> are registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2005. On June 27, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On June 28, 2005, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 6, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on July 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2005.

The Center appointed Ian Lowe as the Sole Panelist in this matter on August 18, 2005. 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 one of the world’s leading companies in clothing and fashion accessory design and manufacture. The mark LACOSTE has been in use for over 70 years and was introduced in 1933 when French tennis star René Lacoste collaborated with a French knitwear manufacturer to set up a company for the production of logo-embroidered shirts.

The Complainant is the registered proprietor of numerous trademark registrations in respect of the mark LACOSTE in many countries of the world, including Australia. The Complainant maintains an Internet website at “www.lacoste.com” and country specific websites including the United Kingdom, The Netherlands, Germany, France, Spain, Australia, Thailand, India, China, Turkey and Canada.

The disputed domain names (“Domain Names”) were registered between July 2004, and April 2005. At the date of this decision, all the Domain Names appear to resolve to blank web pages.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

LACOSTE was one of the earliest sportswear brands in history but since the company was founded its range of products has multiplied and a wide assortment of shirt styles as well as items such as shoes, eyeglasses and perfumes now bear the LACOSTE mark. The Complainant now operates 739 boutiques worldwide and its products are offered for sale through numerous additional retail outlets in over 100 countries. In the fiscal year 2004 the Complainant attained global revenues of over one billion dollars.

The Complainant has extensively used and is commonly referred to by the trade and by consumers by the name LACOSTE. Studies in 2003 and 2004, placed LACOSTE among France’s 25 most valuable brands.

The Domain Names are confusingly similar to the Complainant’s mark LACOSTE since they incorporate the mark in full. The generic terms “online”, “shirts”, “discount” and “wholesale” do nothing to distinguish the Domain Names from the mark LACOSTE.

The Respondent cannot demonstrate or establish any legitimate interest in the Domain Names. The Respondent registered the Domain Names long after the Complainant had established rights in its LACOSTE mark through extensive use over 71 years. Where, as here, the Complainant’s mark is so well known and recognized, there can be no legitimate use by the Respondent. There is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization by which the Respondent could own or use the Domain Names. Since the mark is so well-known and the Respondent has no rights to it, the only reason why the Respondent could have wanted to register and use domain names consisting of the LACOSTE mark plus the generic words “online”, “shirt”, “discount” and “wholesale” was that it knew of the Complainant’s mark and wanted to use it in the Domain Names for the purpose of selling them at a profit or otherwise profiting from the consumer confusion that is the inevitable result of the Respondent’s misappropriation of the Complainant’s mark.

The Respondent has attempted to profit in bad faith from the sale of the Domain Names. A search on the “www.fabulousdomains.com” website on June 23, 2005, revealed that three of the Domain Names were for sale for 400 United States dollars each. That would represent a significant profit over the nominal registration fee per Domain Name.

The Respondent’s website claims that the Respondent owns over 120,000 domains and states that the company “makes its revenue by selling the websites that we have developed and domain names that are not yet developed”.

On June 23, 2005, the Domain Names all resolved to a search engine and linking portal each of which offered links to a variety of on-line retailers purporting to offer LACOSTE merchandise, much of which appeared to be counterfeit, as well as to retailers offering products of competing manufacturers. The Complainant believes that the Respondent would have derived a financial benefit from the web traffic diverted through the Domain Names to this search engine and linking portal.

In addition, the Respondent has a prior history in WIPO and National Arbitration Forum UDRP proceedings, and has shown a pattern of bad faith domain name registration. See Société Air France v. Domain Active Pty Ltd., WIPO Case No. D2004-0993; Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd., WIPO Case No. D2004-0459; Medline, Inc. v. Domain Active Pty. Ltd., NAF Claim No. FA0301000139718. The fact that the Respondent has registered more than one domain name that is confusingly similar to the Complainant’s mark supports the conclusion that the Respondent knew of the Complainant’s mark and registered the Domain Names in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainants must prove that:

(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has adduced uncontroverted evidence of numerous trademark registrations around the world in respect of the mark LACOSTE, of its widespread use of the mark around the world and of its very substantial sales of goods in the mark over some 70 years. The Panel finds that the Complainant has clearly established rights in the mark LACOSTE.

Each of the Domain Names comprises the whole of the mark LACOSTE together with one or more of the words “online”, “shirts”, “discount” and “wholesale”. Each of these words is generic and non-distinctive. In making a comparison between the Complainant’s mark and the Domain Names it is appropriate to leave these generic words largely out of account, as many previous panelists have found. Accordingly, the Panel finds that each of the Domain Names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot possibly have any rights or legitimate interests in any of the Domain Names. The Panel accepts the assertion on the part of the Complainant that the mark LACOSTE is so well known that the Respondent must have had it in mind when registering the Domain Names. Based on the case file, the Panel finds that the Respondent has no rights or legitimate interests in any of the Domain Names.

C. Registered and Used in Bad Faith

The Complainant has adduced evidence that prior to the filing of the Complaint each of the Domain Names resolved to a search engine and linking portal all of which offered links to a variety of on-line retailers purporting to offer LACOSTE merchandise. The Complainant further contends that much of this merchandise appeared to be counterfeit and that the portals also carried links to retailers offering products from competing manufacturers. The Respondent has not countered this evidence and the Panel accepts that the Respondent is most likely to have derived a financial benefit from web traffic diverted through the Domain Names to the search engine and linking portal, particularly if such traffic then followed the links referred to. The Panel therefore accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location.

In addition, the Complainant adduced evidence that three of the Domain Names were being offered for sale on the “www.fabulousdomains.com” website at a price significantly above the cost of registering the Domain Names. In the case of at least three of the Domain Names, therefore, the Panel finds circumstances indicating that the Respondent registered the Domain Names with a view to selling or otherwise transferring the domain name registrations for sums in excess of out-of-pocket costs directly related to the domain name.

Furthermore, the Respondent has been involved in a number of other complaints under the Policy involving registration of domain names incorporating well-known marks where the panelist made a finding against the Respondent.

In view of the huge notoriety of the Complainant’s mark LACOSTE, the worldwide reputation it enjoys and the nature of the limited use of the Domain Names, the Panel finds that the Respondent can have had no legitimate or good faith reason for registering any of the Domain Names.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Names and each of them in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <discountlacoste.com>, <lacosteshirtsonline.com>, <onlinelacoste.com> and <wholesalelacoste.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist

Dated: August 29, 2005