Louis
Vuitton Malletier S.A. v. Demand Domains, Inc.
Claim Number: FA1003001310816
PARTIES
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 <lvmobile.com>, registered with Enom, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 1, 2010
On March 2, 2010, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <lvmobile.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 March 3, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of March 23,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@lvmobile.com. Also on March 3, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 23, 2010.
Complainant’s Additional Submission was received on March 29,
Respondent’s Additional Submission was received on April 5,
On March 31, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant
states that it has been, for many years, the owner of numerous trademark
registrations for the LOUIS VUITTON, VUITTON and
The
Complainant argues that the disputed domain name fully incorporates the
Complainant’s famous, long-standing and widely registered trademarks, and that <lvmobile.com> is confusingly similar to Complainant’s trademark as it incorporates the trademarks in their entirety with only the
addition of the generic phrase “-mobile” and the required .com top-level
indicator (referring to Microsoft Corporation v.
WDW Inc., et. al., D2002-0412 (WIPO
July 1, 2002)).
The Complainant further states that the Respondent has no legitimate interest in the disputed domain name, as the Respondent is not authorized by Complainant to use the trademarks, Respondent registered and uses the domain name to infringe Complainant’s rights in the trademarks and to trade off Complainant’s goodwill (which use does not constitute a bona fide offering of goods or services), Respondent is not and has not been commonly known by the disputed domain name.
Lastly, the
Complainant accuses Respondent for having registered and using <lvmobile.com> in bad faith. The
disputed domain name resolves to a website which does not contain any original
content; it is an automatically generated landing page featuring links to third
party sites including sites that compete with Complainant. Respondent’s
use of the confusingly similar disputed domain name to intentionally attract
Internet users and profit through the receipt of click-through fees by creating
a strong likelihood of confusion with Complainant’s
The Complainant concludes that, due to the similarity of the domain name with the trademarks, along with long-established and widespread use and registration of the trademarks, Respondent clearly knew of Complainant’s marks before registering the domain name.
Respondent evidences bad faith in his failure to cease and desist from wrongful use of the Domain Name after being notified by Complainant of the unauthorized use. Respondent further acts in bad faith by concealing its identify after receiving a cease and desist letter from Complainant.
B. Respondent
The Respondent objects to Complainant's allegation that Respondent's
domain name fully incorporates Complainant's famous trademarks, as it is clear that <lvmobile.com>
does not, in whole or in part, incorporate the LOUIS VUITTON or
VUITTON trademarks. As to the two-letter string for "LV",
Respondent argues that Complainant provides as evidence two trademark
registrations for "LV", one of which is in a stylized
format, the other of which is fully incorporated in a design mark, and a consumer would not confuse
the simple "LV" identifier as part of or relating to Complainant if
not presented in the stylized format or incorporated in Complainant's trade
dress. The Respondent concludes that the
two-letter string is often used, in part or in whole, in other common words, and when used standalone, has several
legitimate meanings unrelated to Complainant or Complainant's goods and
services.
Respondent argues that the generic term "mobile"
further distinguishes the disputed domain name from Complainant's trademark in that Complainant's "LV"
trademark and the generic term
"mobile" are wholly unrelated, dissimilar, and formulate no confusing
conjunction whatsoever. Respondent points out that there is no evidence of any mobile phone or mobile phone accessory product offered by Complainant. Respondent requests that the Panel find
that the Complainant has not sufficiently shown that Respondent's domain name is
identical or confusingly similar to Complainant's trademark.
Respondent claims that it has legitimate
interest in the disputed domain name, as it provides a bona fide website that directs Internet users
to helpful links about
Respondent notice that the links and web sites
which Complainant refers to appear to be secondary links and web sites that
could only have been arrived at by using the search engine field featured on
the domain's landing page, a search field in which any Internet user can perform a search to bring up links
on any subject matter.
The Respondent contends that there is no one individual or entity that can
claim exclusive rights or interests
in "LV", and as such, Respondent
believes it had the right to register, and has the right to use, the disputed
domain name for whatever purpose it
sees fit, and without obtaining prior
authorization from any individual or entity that alleges rights in the term "LV".
Respondent denies having acted in bad faith
“by concealing its identify after receiving a cease
and desist letter from Complainant”. The cease and desist letters were
sent to one David Ball,
of which Respondent has no affiliation with. Further, privacy protection services are legitimate services used to cloak the identity of a domain's registrant for a
variety of reasonable and warranted
reasons, including the avoidance of the mass publication of its identity, which would invite unsolicited email, spam,
identity theft, or other malicious
uses.
Finally, Respondent suggest that the
Complainant’s attempt to block Respondent from its legitimate
registration of the disputed domain name by crafting search results through a search engine is a case of reverse
domain name hijacking.
C. Additional Submissions
Complainant
In its Additional Submission, the Complainant provides evidence of an
International Registration for the mark L.V., as well as refers to a
Complainant also asserts that it sells mobile phone accessories under
the trademarks, and provides printouts
from Complainant’s web page, evidencing mobile phone-related products for sale,
as Exhibit C. Further, Complainant owns domain name registrations specifically
related to its sale of mobile products, including louisvuittonmobile.com,
lvmobile.us, and lvmobile.fr, among others.
Complainant states that Respondent acts as a front for the registrar
eNom, Inc., an entity buying and selling domain names.
Despite Respondent’s assertions that the webpage associated with the disputed
domain name concerns the country of Latvia, the page which displays upon
entering <lvmobile.com> compiles a number of different links, some directed
to another webpage featuring numerous links relating to Complainant’s
competitors and/or offering counterfeit Louis Vuitton product for sale. The
fact that these links presumably result in “click-through fees” to Respondent
only exacerbates Respondent’s bad faith by attributing commercial gain to
Respondent.
Additionally, the facts specifically contradict Respondent’s assertion
that the failure to respond to Complainant’s cease and desist
letters cannot be attributed to Respondent. According to InterNIC, the
registration for the domain name occurred on June 1, 2008, and is set to expire
on June 1, 2010. Therefore, there has been no lapse in registration between the
time of Complainant’s cease and desist letters of August 18, 2009, and the
present. The website to which the domain name directs has remained identical in
format, with only minor variations to the links, throughout all relevant periods,
suggesting a continuity of ownership.
The Complainant denies having engaged in reverse domain name hijacking.
Respondent
Respondent stands by its original argument that the disputed domain
name is not identical or confusingly similar to Complainant's mark. The Respondent argues once again that
The Respondent points to the fact that the
three domain names, cited by the Complainant and comprising of Complainant’s
trademarks with the addition of the generic word “mobile” are all registered in
November 2009, which is after the registration of <lvmobile.com>.
FINDINGS
Reverse
Domain Name Hijacking
Respondent suggests that Complainant is guilty of Reverse Domain Name Hijacking. Rule ¶ 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule ¶ 15(e) further defines the situation as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder.”
The base of
Respondent’s accusations of Reverse
Domain Name Hijacking seems to be the Complainant’s use of the search results
from Respondent’s web site, in addition to what Respondent find to be
exaggerated statements on the fame of the LV mark, the references to domain
names registered after the disputed domain name and references to other
trademarks owned by the Complainant.
The Panel has carefully considered the facts and arguments of this case, and while some of the arguments of the Complainant do not hold water, the Panel finds that what the Complainant has provided as evidence and in support of its case is within the scope accepted for a Complaint filed in good faith. Further, there is no evidence of harassment from Complainant.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
Complainant’s Trademark Rights and
Respondent’s domain name registration
Respondent registered the domain name <lvmobile.com> on June 1, 2008.
The Panel finds
that Complainant has established trademark rights in the
No. 2,909,002
No. 1,643,625
International Registration No. 149,328 L.V. of September 25, 1950.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
As stated above, Complainant has provided evidence of
the registration of its
Respondent’s domain name <lvmobile.com> incorporates the entirety of Complainant’s mark, in combination with the generic word “mobile” and adds the generic top-level domain (“gTLD”) “.com.”
The domain name is obviously not
identical to Complainant’s trademark
It is true, that the
mere addition of generic terms to a mark is normally insufficient to
distinguish a respondent’s domain name from a complainant’s mark. See Warner
Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21,
2004) (finding that the addition of the generic term “collection” to Complainant’s
HARRY POTTER mark failed to distinguish the domain name from the mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14,
2004) (“In the view of the Panel, the disputed domain names are confusingly
similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the
AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive,
descriptive and generic terms, some of which describe Complainant’s business.”);
see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶
4(a)(i) analysis).
In
this case, however, the added generic term points to a specific product or
industry, namely the mobile industry, not related to the Complainant. While Complainant’s mark
The Complainant has provided printouts from its web
site, showing some mobile phone accessories, however
the mark featured in connection with the goods is not LV but LOUIS VUITTON, and the Complainant does in
fact not claim that the LV mark is used but refers collectively to “the
Trademarks” incorporating LOUIS VUITTON and VUITTON.
Complainant’s reference to the fact that it owns “domain name registrations specifically related to its sale of mobile
products”, cannot be considered as the domain names referred to are all obviously
registered after the registration of
the disputed domain name.
As claimed by the Respondent, the two letter combination
Thus, the combination <lvmobile> does not clearly and obviously associate to the Complainant. May it be truth or not, an Internet user seeing the domain name <lvmobile.com> is more likely to expect to find information on Latvian mobile phones on the connecting site, than the fashion goods / luxury accessories of the Complainant.
The Panel concludes that adding generic terms
associated with a certain trademark will add to the risk of confusion, and
adding “neutral” generic terms is generally insufficient to distinguish
from a complainant’s mark.
Adding a generic term that associate with specific goods or services completely non-related to the trademark, and especially when such trademark is not unique but having different generic meanings apart from being someone’s registered mark, may on the other hand reduce the risk of confusion. See Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
It is this Panel’s opinion that <lvmobile.com> is not confusingly
similar to the Complainant’s trademark
As the Complainant has not satisfied Policy ¶ 4(a)(i),
the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the
complainant must prove all three elements under the Policy, the complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or
legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: April 14, 2010
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