Louis Vuitton Malletier S.A. v. louisvuittontobacco.com
Claim Number: FA0909001285655
Complainant is Louis Vuitton Malletier S.A. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <louisvuittontobacco.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2009.
On September 22, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <louisvuittontobacco.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 2009 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 October 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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. Respondent’s <louisvuittontobacco.com> domain name is confusingly similar to Complainant’s LOUIS VUITTON mark.
2. Respondent does not have any rights or legitimate interests in the <louisvuittontobacco.com> domain name.
3. Respondent registered and used the <louisvuittontobacco.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Louis Vuitton Malletier S.A., is a leading designer and producer of clothing and accessories. Complainant owns several trademark registrations for the LOUIS VUITTON mark, including a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,990,760 issued August 6, 1996).
Respondent registered the <louisvuittontobacco.com> domain name on April 18, 2009. Respondent’s disputed domain name resolves to a blank webpage.
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."
In view of 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 draw such inferences it 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 that Complainant must 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 has registered the LOUIS VUITTON mark with the
USPTO (e.g., 1,990,760 issued August 6, 1996), and thus has established rights
to the mark pursuant to Policy ¶ 4(a)(i).
See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant argues that Respondent’s <louisvuittontobacco.com> domain name is confusingly
similar to Complainant’s LOUIS VUITTON mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the generic term “tobacco,” and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of the generic term “tobacco” does not
distinguish itself from the disputed domain name, but instead creates a confusing
similarity between the disputed domain name and the registered mark. See Experian Info. Solutions, Inc. v. Credit
Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain
names incorporating the complainant’s entire EXPERIAN mark and merely adding
the term “credit” were confusingly similar to the complainant’s mark); see also Google Inc. v. Xtraplus Corp.,
D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names
were confusingly similar to Complainant’s GOOGLE mark where the respondent
merely added common terms such as “buy” or “gear” to the end). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain from a
registered mark. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <louisvuittontobacco.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is neither commonly known by the disputed domain name, nor licensed to register domain names using the LOUIS VUITTON mark. Respondent’s WHOIS information identifies Respondent as “louisvuittontobacco.com.” Although Respondent appears to be commonly known by the disputed domain name from the WHOIS information, the Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks all rights and legitimate interests in the disputed domains name pursuant to Policy ¶ 4(c)(ii). See Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Respondent registered the <louisvuittontobacco.com> domain name on April 18, 2009 and has failed to make an active use of it. There is no evidence on record that Respondent has used or intends to use the disputed domain name in any manner. As a result, the Panel finds that Respondent has not made a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Respondent has registered the <louisvuittontobacco.com> domain name but has failed to make an active use of it. The Panel finds that such non-use consitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <louisvuittontobacco.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 2, 2009
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