Claim Number: FA0811001232819
Complainant is Louis
Vuitton Malletier S.A. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomasvuitton.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 6, 2008; the National Arbitration Forum received a hard copy of the Complaint November 7, 2008.
On November 6, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thomasvuitton.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2008, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <thomasvuitton.com>, is confusingly similar to Complainant’s VUITTON mark.
2. Respondent has no rights to or legitimate interests in the <thomasvuitton.com> domain name.
3. Respondent registered and used the <thomasvuitton.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Louis Vuitton Malletier S.A. operates in the luxury accessories industry. Complainant has registered its VUITTON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,657,903 issued December 10, 2002), and also owns numerous other marks incorporating the Louis Vuitton name in some form (i.e. the LOUIS VUITTON mark, registered with the USPTO on November 23, 2004 (Reg. No. 2,904,197)). Complainant also owns numerous domain names in conjunction with its operations.
Respondent registered the disputed <thomasvuitton.com> domain name July 10, 2008, and is using the disputed domain name to operate a website that sells goods in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the VUITTON mark, which was registered with the USPTO. Therefore, the Panel finds that Complainant has rights in the mark through this registration under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s disputed domain name, <thomasvuitton.com>, contains Complainant’s entire VUITTON mark with the following alterations: (1) the addition of the name “thomas;” and (2) the addition of the generic top-level domain “.com.” The Panel notes that the addition of the top-level domain is irrelevant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel also considers the VUITTON mark to be the dominant feature of the disputed domain name. To add a generic word or name, such as “thomas,” does not create any meaningful distinction. In fact, the Panel considers such confusion to be heightened, in that the added word is a name, much like the “Louis” of Complainant’s LOUIS VUITTON mark. The Panel therefore finds the disputed domain name to be confusingly similar to Complainant’s VUITTON mark under Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations in the Complaint, the Panel finds that Complainant made its prima facie showing pursuant to Policy ¶ 4(a)(ii), and accordingly the burden of proof shifts to Respondent to show that it has rights to or interests in the domain name containing Complainant’s mark. Since Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether the record suggests that Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel notes that although the WHOIS information lists Respondent as “Thomas Vuitton,” the identical nature of Respondent’s last name with that of Complainant is not supported with any proof to show a relationship with Complainant such as would show rights. The Panel finds that the lack of a response or other information to provide an explanation for this appearance of a relationship in the last names is not sufficient to show that Respondent has such rights. Moreover, Complainant claims that Respondent is not authorized to use the VUITTON mark in any form. Without more, the Panel is left to find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”); see also Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”).
Respondent is using the confusingly similar disputed domain name to operate a website that sells goods in direct competition with Complainant. Previous panels have considered such a usage to fail as a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Accordingly, the Panel likewise finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
As stated before, Respondent’s disputed domain name and resolving website offer goods in direct competition with Complainant. Even under a strict reading of Policy ¶ 4(b)(iii), Respondent represents a textbook example of a “competitor” under Policy ¶ 4(b)(iii) because Respondent intended to disrupt Complainant’s business for Respondent’s own strictly competitive benefit. See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). The Panel finds that Respondent has therefore registered, used, and continues to use the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent’s competing business clearly targets Complainant and its VUITTON mark for commercial gain. The Panel presumes this intent given Respondent’s strictly competing operation of the resolving website, and the confusingly similarity of the disputed domain name. Therefore, the Panel finds that Respondent primarily intended to obtain commercial benefit through the likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain name and corresponding website under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thomasvuitton.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 17, 2008.
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