Louis Vuitton Malletier
Claim Number: FA1002001307217
Complainant is Louis Vuitton Malletier S.A. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com>, registered with Xin Net Technology Corporation.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2010. The Complaint was submitted in both Chinese and English.
On February 9, 2010 Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 February 25, 2010, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 2010 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 postmaster@louisvuitton-bag.com, postmaster@3alouisvuitton.com, postmaster@louisvuitton-eshop.com, postmaster@louisvuitton-goods.com, postmaster@lv-goods.com, and postmaster@lv-lv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names are confusingly similar to Complainant’s LOUIS VUITTON mark.
2. Respondent does not have any rights or legitimate interests in the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names.
3. Respondent registered and used the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Louis Vuitton Malletier S.A., is an international designer and producer of clothing, handbags, shoes and related fashion accessories. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LOUIS VUITTON mark (e.g., Reg. No. 2,904,197 issued on November 23, 2004). Complainant also owns trademark registrations with the Chinese Patent and Trademark Office (“CPTO”) for its LOUIS VUITTON mark (e.g., Reg. No. 241,019 issued on May 7, 1999).
Respondent registered the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names on or after August 26, 2009. Respondent’s disputed domain names resolve to websites that offer counterfeit and replica handbags and fashion items of Complainant’s for sale.
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.
Preliminary Issue:
Multiple Respondents
In the instant proceeding, Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the only differences in the WHOIS contact information for the <louisvuitton-bag.com> domain name are Respondent’s name and physical address. Complainant also notes that the administrative contact information including the telephone number, fax number and e-mail address for all of the above domain names are the same. The layouts for most of the websites were also very closely related to one another.
The Panel finds that Complainant presented sufficient
evidence that the disputed domain names are controlled by the same entity and
thus chooses to proceed with the instant proceedings on the merits.
Complainant owns numerous trademark registrations for its LOUIS VUITTON mark with the USPTO (e.g., Reg. No. 2,904,197 issued on November 23, 2004) and the CPTO (e.g., Reg. No. 241,019 issued on May 7, 1999) as well as many other countries around the world. The Panel finds that Complainant’s multiple trademark registrations with federal trademark authorities around the world are sufficient evidence of Complainant’s rights in its LOUIS VUITTON mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <louisvuitton-bag.com>, <3alouisvuitton.com>,
<louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>,
and <lv-lv.com> domain names are confusingly similar to its
LOUIS VUITTON marks. Respondent’s <louisvuitton-bag.com>, <3alouisvuitton.com>,
<louisvuitton-eshop.com>, <louisvuitton-goods.com> domain
names all contain Complainant’s mark in its entirety and add the following:
hyphens separating the mark from descriptive and generic terms, the descriptive
terms “bag,” and “goods,” the generic term “eshop,” and a letter/number
combination of “3a.” Further,
Respondent’s <lv-goods.com>, and <lv-lv.com> domain
names are abbreviations of Complainant’s LOUIS VUITTON mark that include
hyphens and the descriptive term “goods.”
The Panel finds that Respondent’s disputed domain names are confusingly
similar to Complainant’s mark where they contain variations and abbreviations
of the mark, generic and descriptive terms and the generic top level domain
(“gTLD”) “.com.” See Microsoft Corp. v.
Montrose Corp., D2000-1568 (WIPO
Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be
confusingly similar even though the mark MICROSOFT is abbreviated); see also Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show that it does have a right or legitimate interest in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant argues that Respondent is not commonly known by the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names, nor has Complainant given Respondent permission to use its mark. The WHOIS information does not indicate Respondent is commonly known by the disputed domain names, and Respondent offers no evidence that it is commonly known by the disputed domain names. The Panel finds that, absent affirmative evidence from Respondent, that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further argues that Respondent lacks rights and
legitimate interests in the <louisvuitton-bag.com>, <3alouisvuitton.com>,
<louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>,
and <lv-lv.com> domain names because Respondent’s use
cannot constitute a bona fide offering
of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to
websites where Respondent sells counterfeit and unauthorized replicas of
Complainant’s products. The Panel finds
that Respondent’s use of the confusingly similar disputed domain names to attract Internet users
to its website where it sells replicas of Complainant’s products is not in
connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s registration of six infringing domain names is evidence itself of bad faith registration and use. The Panel finds that Respondent’s registration of multiple infringing domain names incorporating Complainant’s mark is evidence that Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”).
Complainant alleges that Respondent has registered and used the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names in bad faith. Complainant contends that Respondent’s use of a confusingly similar domain name to divert Internet users to its website, where it sells counterfeit products of Complainant, creates a disruption in the business of Complainant. The Panel finds that Respondent’s use of the disputed domain names to divert Internet users seeking Complainant’s business to its competing website constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant further alleges that Respondent is using the
confusingly similar domain names to attract Internet users to its website for
commercial gain in bad faith.
Complainant submits evidence that shows Respondent’s websites that resolve
from the disputed domain names are displaying replica products of Complainant
for sale. Complainant contends that this
use, in connection with the confusingly similar domain names is evidence of bad
faith registration and use. The Panel
finds that Respondent’s use of the <louisvuitton-bag.com>, <3alouisvuitton.com>,
<louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>,
and <lv-lv.com> domain names to attract Internet users to
its websites for commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(finding that the respondent’s use of the <saflock.com> domain name to
offer goods competing with the complainant’s illustrates the respondent’s bad
faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <louisvuitton-bag.com>, <3alouisvuitton.com>, <louisvuitton-eshop.com>, <louisvuitton-goods.com>, <lv-goods.com>, and <lv-lv.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 8, 2010
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