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S.A.S. Jean Cassegrain v. Yeon-Gu Kim [2005] GENDND 411 (5 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

S.A.S. Jean Cassegrain v. Yeon-Gu Kim

Case No. D2005-0275

1. The Parties

The Complainant is S.A.S. Jean Cassegrain, Paris, France, represented by Gottlieb, Rackman & Reisman, PC, United States of America.

The Respondent is Yeon-Gu Kim, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <longchampkorea.net> is registered with Communigal Communications Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2005.  On March 18, 2005, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue.  On March 21, 2005, Communigal Communications Ltd. 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 March 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2005. The Respondent did not submit any response.  Accordingly, the Center notified the Respondent’s default on April 20, 2005.

The Center appointed Montiano Monteagudo as the sole panelist in this matter on April 26, 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.

The language of the proceedings is English.

4. Factual Background

The following facts, extracted from the Complainant’s submissions and undisputed due to the Respondent’s default, are established:

Longchamp is essentially a holding company operating via its related and subsidiary companies in the manufacture and sale of high quality women’s and men’s handbags, luggage and accessory products.

From its foundation in 1948, when its only market was France, Longchamp has expanded both its product line and its geographical presence, and today Longchamp sells products throughout the world.

Longchamp has also registered its LONGCHAMP trademark in several countries throughout the world, as listed in Exhibit E of the Complaint, including the Republic of Korea with registration numbers 122579, 125406, 123726, 124711, 121631, 131754, 90268, 118744, 123106, 131755 and 85673.

In 1999, Longchamp opened a website accessible at “www.longchamp.com”

offering many of the products that Longchamp makes available.

Furthermore, Longchamp has also registered different domain names to present its activities and goods on the web, containing Longchamp as a second level domain in the general Top Level Domains and country code Top Level Domains listed in Exhibit G.

In addition, Longchamp has made an important investment in advertising and promoting the trademark LONGCHAMP, and the LONGCHAMP name and trademark have been the subject of extensive media coverage.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

That the Domain Name is identical or confusingly similar to the Complainant’s trademark, given that it incorporates the entirety of a trademark plus a geographic designation, the presence of “net” being unable to sufficiently distinguish the Domain Name in order to eliminate or reduce confusion. Moreover the fact that both the LONGCHAMP trademark and the contended Domain Name are used in connection with providing “fashion” items, which increases the likelihood of confusion.

That Respondent has no legitimate interest in the Domain Name, given that the website associated with the domain name <longchampkorea.net>, is actually a site for <ibrandclub.com> which offers various competitive products, as well as Longchamp branded merchandise, but is not used with the authorization of the Complainant. Further, Respondent is not commonly known by that name. 

That the Domain Name was registered and is being used in bad faith, given that the Respondent is intentionally using the domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s LONGCHAMP trademark as to the sponsorship, affiliation or endorsement of its website and the products or services on the website to which it provides a link. In addition, Respondent registered and uses the Domain Name primarily to disrupt Longchamp’s business because it is using it in connection with a commercial venture offering goods that directly compete with those offered by Longchamp. Thirdly, the Respondent’s knowledge of a Complainant’s prior use of a trademark also demonstrates bad faith in registration because it indicates that the Respondent recognized a domain name’s potential to cause confusion with the rights of another.

As a consequence of all the foregoing, the Complainant requests the transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 15(a) of the Rules, the Panel shall 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 it deems applicable.

In order to succeed, the Complainant must prove that:

(a)     the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b)       the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c)    the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the Domain Name in dispute to be confusingly similar to the trademarks owned by the Complainant.

As indicated by the Complainant and in accordance with many UDRP decisions, such as Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507, the addition of the name of a geographical suffix to a trademark is not a distinguishing feature.

The Complainant’s trademark is famous worldwide, and the addition of the suffix “korea” does not sufficiently enable consumers to distinguish properly the Domain Name from the LONGCHAMP trademark. Thus, a user of the Internet is, in the Panel’s opinion, likely to assume that the disputed Domain Name belongs to the Complainant or is controlled by the Complainant.

The Complainant has, thus, succeeded in providing evidence of the confusing similarity between its trademarks and the Domain Name in dispute.

B. Rights or Legitimate Interests

The Respondent’s default, along with the absence of an agreement between Complainant and Respondent authorizing the Respondent’s use of Complainant’s trademarks lead the Panel to conclude that the Respondent has no rights or legitimate interests in the Domain Name.

Moreover, the Respondent has not used the domain name in connection with a bona fide offering of goods and services, has not been commonly known by the domain name, nor is making legitimate noncommercial or fair use of the name.

The Panel concludes that the Complainant has also succeeded in providing evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. The requirement set forth in paragraph 4(a)(ii) of the Policy is, thus, met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth that the following circumstances, in particular but with no limitation, shall, if found, be evidence of registration and use in bad faith:

“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

When the Respondent registered the Domain Name, there were circumstances, as Longchamp was a company with a strong presence in publishing media, that lead the Panel to conclude that the Respondent was aware of the reputation of the trademarks and the trade name of the Complainant. By registering the Domain Name, the Respondent intended to create confusion amongst Internet users by linking the Domain Name’s web site to that of the Complainant. In addition the Respondent’s offer to sell competing products on the website identified by the contested Domain Name evidences bad faith in Respondent’s conduct.

The Panel concludes that the Complainant has also succeeded in providing evidence of the registration and use in bad faith of the Domain Name 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, <longchampkorea.net> be transferred to the Complainant.

Montiano Monteagudo
Sole Panelist

Dated: May 5, 2005