Louis Vuitton Malletier S.A. v. Han Xiaoyu
Claim Number: FA0808001222406
Complainant is Louis Vuitton Malletier S.A., L.L.C. (“Complainant”), represented by J. Andrew Coombs, of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Han Xiaoyu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008. The Complaint was submitted in both Chinese and English.
On September 9, 2008, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.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 September 11, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 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 postmaster@louisvuittonjapan.com, postmaster@lvbrandshop.com and postmaster@lvjapantb8118.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 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <louisvuittonjapan.com> domain name is confusingly similar to Complainant’s LOUIS VUITTON mark. Respondent’s <lvbrandshop.com> and <lvjapantb8118.com> domain names are confusingly similar to Complainant’s LV mark.
2. Respondent does not have any rights or legitimate interests in the <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.com> domain names.
3. Respondent registered and used the <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Louis Vuitton Malletier S.A., has used both the LOUIS VUITTON and LV marks for well over one hundred years for a variety of goods, specifically including luxury accessories. Complainant is the owner of numerous trademark registrations around the world for both the LOUIS VUITTON and LV marks. These registrations include the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,904,197 issued Nov. 23, 2004 and Reg. No. 1,643,625 issued May 7, 1991, respectively) and the Chinese trademark authority (Reg. No. 241,019 issued Jan. 15, 1996 and Reg. No. 241,029 issued Jan. 15, 1996, respectively).
Respondent’s <louisvuittonjapan.com> domain name was registered on October 20, 2006. Respondent’s <lvbrandshop.com> domain name was registered on June 9, 2007.
Respondent’s <lvjapantb8118.com> domain name was registered in May 28, 2007. All three of the disputed domain names resolves to websites offering counterfeit and otherwise illegal versions of Complainant’s products that are legitimately sold under the LOUIS VUITTON and LV marks.
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 sufficiently established rights in the LOUIS VUITTON and LV marks through registration with the USPTO and the Chinese trademark authority pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”).
The <louisvuittonjapan.com>
domain name contains Complainant’s LOUIS VUITTON mark in its entirety followed
by the geographic locator “Japan.” The
Complainant sells many of its products in the country of Japan. The inclusion of a geographic locator,
especially when it describes a place where a complainant engages in business,
does not distinguish a disputed domain name.
See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well
established that a domain name consisting of a well-known mark, combined with a
geographically descriptive term or phrase, is confusingly similar to the
mark.”). Respondent’s <lvbrandshop.com> and <lvjapantb8118.com> domain names
each contain Complainant’s LV mark in its entirety. The <lvbrandshop.com>
domain name follows Complainant’s mark with the descriptive phrase “brand
shop.” The addition of a phrase that
describes Complainant’s business does not differentiate Respondent’s disputed
domain name. See Whitney Nat’l Bank v.
Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of
generic words with an obvious relationship to Complainant’s business and a gTLD
renders the disputed domain name confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).”). The <lvjapantb8118.com> domain name
follows Complainant’s mark with the term “Japan” and “tb8118.” The addition of the seemingly incoherent
letters and numbers is not significant to a Policy ¶ 4(a)(i) analysis in
default proceedings. See Am.
Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28,
2002) (finding that the <aolrj.com> domain name was confusingly similar
to the complainant’s AOL mark because “…the addition of a string of
indiscriminate letters to a famous mark in a second level domain does not
differentiate the domain name from the mark.”).
And finally, all three of the disputed domain names include the generic
top-level domain (“gTLD”) “.com.”
However, the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis. See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the
addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis).
For all of the aforementioned reasons, the Panel finds the <louisvuittonjapan.com> domain
name to be confusingly similar to Complainant’s LOUIS VUITTON mark and the <lvbrandshop.com> and <lvjapantb8118.com> domain names
to be confusingly similar to Complainant’s LV mark pursuant to Policy ¶
4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case under Policy ¶ 4(a)(ii) that Respondent lacks
rights and legitimate interests in the disputed domain names before these
proceedings may continue. The Panel
finds that Complainant has met this threshold and that the burden is
accordingly shifted upon Respondent to prove that it affirmatively does have
rights or legitimate interests in the disputed domain names. See Document Techs., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has rights
to or legitimate interests in the Domain Name.”); 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).
Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the disputed domain
names. Nonetheless, the Panel will
proceed to examine the record in consideration of the elements listed under
Policy ¶ 4(c). See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is
presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
The WHOIS information for all three of the disputed domain
names identifies Respondent as “Han Xiaoyu.”
Moreover, Complainant states that “Respondent is not authorized by
Complainant to use any of its Trademarks.”
Without any further information in the record, the Panel finds that
Respondent is not commonly known by any of the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark).
All of the disputed domain names resolve to websites
purporting to offer for sale counterfeit or otherwise illegal versions of
Complainant’s products branded under the LOUIS VUTTION and LV marks. The Panel finds that this use of the <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.com> domain names
does not constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v.
Inversiones HP Milenium C.A., FA 105775
(Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar
domain name [<hpmilenium.com>] to sell counterfeit versions of
Complainant’s [HP] products is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i).”); see
also Computerized Sec. Sys., Inc. v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the disputed domain
names to offer and sell counterfeit and illegal versions of Complainant’s
products under the LOUIS VUTTION and LV marks constitutes bad faith under
Policy ¶ 4(b)(iv). The Panel finds that
Respondent’s registration and use of the <louisvuittonjapan.com>,
<lvbrandshop.com> and <lvjapantb8118.com> domain names
demonstrates Respondent’s previous and current intent to attract Internet users
to its websites by creating a likelihood of confusion with Complainant’s
trademark for the purpose of commercially benefiting from such confusion. Accordingly, the Panel determines that Complainant
has sufficiently established Policy ¶ 4(b)(iv).
See 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); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that
the respondent’s use of the <compaq-broker.com> domain name to sell the
complainant’s products “creates a likelihood of confusion with Complainant's
COMPAQ mark as to the source, sponsorship, or affiliation of the website and
constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Respondent’s bad faith is additionally evidenced and established through Respondent’s purported and attempted sales of counterfeit versions of Complainant’s products via the disputed domain names. Previous panels have found the sale of counterfeit goods sufficient on its own to establish a respondent’s bad faith under the Policy. See Louis Vuitton Malletier S.A., L.L.C. v. Derdena, FA 1178961 (May 29, 2008) (the respondent was using the <louis-vuitton-replicas.net> domain name, which was confusingly similar to the complainant’s LOUIS VUITTON mark, to sell unauthorized and counterfeit products of the complainant. The panel found that such use disrupted the complainant’s business and constituted bad faith registration and use); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nov. 30. 2007) (“Respondent makes no attempt to disguise that it currently utilizes the disputed domain name, <eluxuryreplica.com>, to resolve to a website offering for sale replicas of designer handbags, shoes and sunglasses, which compete with the designer goods sold by Complainant. The panel finds such use to establish that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel considers this to be additional evidence of Respondent’s bad faith registration and use of the <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.com> domain names pursuant to Policy ¶ 4(b)(iii).
The Panel concludes that Complainant has satisfied 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 <louisvuittonjapan.com>, <lvbrandshop.com> and <lvjapantb8118.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 27, 2008
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