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LDLC.COM v. LaPorte Holdings [2005] GENDND 1469 (8 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LDLC.COM v. LaPorte Holdings

Case No. D2005-0687

1. The Parties

The Complainant is LDLC.COM, Limonest, France, represented by Ernst & Young, France.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwldlc.com> is registered with NameKing.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2005. On June 30, 2005, the Center transmitted by email to NameKing.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 1, 2005 NameKing.com, Inc. 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. The Center verified that 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 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2005.

The Center appointed David J.A. Cairns as the Sole Panelist in this matter on August 1, 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 a French company in the business of providing technological furniture and hardware to clients via various Internet sites.

The Complainant is the owner of two trademarks for LDLC.COM, being French trademark No. 03 3215978 dated March 19, 2003, and trademark Nº 837994 dated September 17, 2004, in the International Register. It is also the owner of the French trademark No. 97 665325 dated February 19, 1997 (being a registration made in a prior corporate name of the Complainant). It has also applied for a further French trademark for LDLC.COM with a design element being application 05 3340768 dated February 2, 2005.

The Complainant’s business is conducted almost exclusively through the Internet and it is the owner of numerous domain names, including <ldlc.com>, <ldlc.fr>, <ldlc-consommables.com>, <ldlc-accessoires.com>, <ldlc.be>, and <ldlc.ch>.

The disputed domain name was registered on November 3, 2004. This Panel has been unable to access the Respondent’s website at the disputed domain name to verify its contents.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is the owner of the trademark LDLC.COM which is protected throughout the world and has a strong reputation, especially in France and Europe. The Complainant contents that the disputed domain name is nearly identical or confusingly similar to its trademarks, as it fully incorporates the LDLC.COM trademark, and refers to a number of Panel decisions in support of this contention.

The Complainant further states that the Respondent has no rights or legitimate interests in the domain name, as the Complainant’s trademarks were registered and well known for many years before the Respondent’s registration of the disputed domain name. Further, the Respondent is not known under the name ‘LDLC’, and the Complainant has in no way given the Respondent any license or permission to register or use any domain name incorporating the Complainant’s trademarks.

The Complainant refers to numerous facts as evidence of both the registration and the use of the disputed domain name in bad faith, including the following: the Respondent has registered and is using the disputed domain name for commercial gain as the Respondent is deriving a financial benefit from the web traffic generated by the fame of the Complainant’s trademarks that is diverted through the Respondent’s website to a search engine and linking portal operated by Domainsponsor.com; the Respondent’s website provides hyperlinks to sites where computer accessories (of types sold by the Complainant) are offered for sale, including products of the Complainant’s competitors; and the Respondent has engaged in a pattern of registering domain names containing the names and trademarks of third parties, referring to five Panel decisions involving the Respondent.

For these reasons, the Complainant requests that this Panel issues a decision ordering the transfer of the dispute domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks:

The Panel accepts that the Complainant is the owner of two registered trademarks consisting of the invented word LDLC.COM and a further registration for LDLC. The Complainant, no doubt because of the importance of the internet to its business, has adopted a trade name and registered trademarks that incorporate a top level domain name (i.e., ‘.com’) which it in fact uses to conduct business via the Internet.

The disputed domain name is not identical with the Complainant’s LDLC.COM trademarks because it includes the prefix of the letters ‘www’. This prefix replicates the common URL of domain names, and is likely to be disregarded by an Internet user who will focus on the elements of the domain name which follow i.e. the Complainant’s trademark.

The notorious meaning of ‘www’ as an abbreviation for ‘world wide web’ in relation to the Internet, the absence of any other signification of this prefix in the disputed domain name, and the prevalence of ‘www’ as a URL, mean that ‘www’ is incapable of distinguishing the disputed domain name from the Complainant’s registered trademarks. A similar conclusion has been reached in other UDRP panel decisions involving this prefix: see PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087 (March 31, 2005); Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (July 13, 2000); Edmunds.com, Inc. v. WWWEDMUNDS.com and DMUNDS.com, WIPO Case No. D2001-0937 (August 31, 2001).

For these reasons there is a confusing similarity between the Complainant’s trademarks and the disputed domain name, and so the first element required by the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain name. There is no evidence whatsoever before the Panel to suggest that any of the circumstances referred to in paragraph 4(c) exist in the present case.

Indeed, the evidence submitted by the Complainant establishes that the Respondent has not acquired any rights or interests from the Complainant, and suggests that the disputed domain name was adopted for the purposes of commercial gain from confusion or typographical errors of internet users seeking the Complainant’s products.

In these circumstances, and in the absence of any response from the Respondent providing any evidence to support any possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Panel therefore concludes that the Respondent has no legitimate rights or interests in respect of the domain name.

C. Whether the Respondent has Registered and is Using the Disputed Domain Name in Bad Faith:

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, internet users to the website or other on-line 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 website or location.

In the present case the Respondent’s use of the disputed domain name with the intention to attract internet users for commercial gain is established by the uncontested evidence of the Complainant’s certification in its Complaint that the Respondent’s website diverted traffic to a search engine and linking portal, and also provided hyperlinks to other websites. The likelihood of confusion is as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the Complainant’s trade name, trademarks, and websites. The fact that the Respondent’s website under the disputed domain name includes hyperlinks to sites offering the same type of products as sold by the Complainant (i.e. computer accessories) aggravates the likelihood of confusion, and is corroborative evidence of bad faith.

In addition, in the absence of any evidence to the contrary as to the reason for the choice of the prefix ‘www’ by the Respondent, then it is reasonable to infer that this prefix was adopted to take advantage of a common typographical error (i.e. omission of the full-stop in the URL) by internet users seeking the Complainant’s website. The intention to take advantage of a common typographical error by internet users (‘typo-squatting’) is evidence of the registration and use of a domain name in bad faith: see, for example, Société Française du Radiotéléphone - SFR v. LaPorte Holdings, WIPO Case No. D2004-0926 (January 25, 2004).

Thirdly, the Respondent has engaged in a sufficient pattern of registering domain names which closely resemble well known trademarks to establish registration and use of the disputed domain name in bad faith: see PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087 (March 31, 2005).

Finally, paragraph 4(a)(iii) requires that the dispute domain name was not only registered in bad faith, but also ‘is being used’ in bad faith. This language requires that the bad faith must be continuing at the date of the decision. As noted, the Panel has not been able to access the disputed domain name to confirm the continued use in the manner alleged by the Complainant. However, the ample evidence of bad faith in the registration of the disputed domain name satisfies the Panel that the Respondent continues to hold and use this domain name in bad faith and with the intention of deceiving internet users and being in a position to take advantage of the commercial reputation of the Complainant’s trademark.

For these reasons, individually and cumulatively, the Panel concludes that the dispute domain name has been registered and is being used in bad faith by the Respondent.

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

David J.A. Cairns
Sole Panelist

Dated: August 8, 2005