Louis Vuitton Malletier SA v Domain Administrator

WIPO Case No. D2022-2059

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Louis Vuitton Malletier SA v. Domain Administrator

Case No. D2022-2059

1. The Parties

Complainant is Louis Vuitton Malletier SA, France, represented by Studio Barbero SpA, Italy.

Respondent is Domain Administrator, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <lousivuitton.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2022. On connection with the disputed domain name. On June 9, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 14, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 16, 2022.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2022. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on July 13, 2022.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on August 3, 2022. The

Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.

page 2

4. Factual Background

Complainant is a French manufacturer of luxury and fashion goods. It is the proprietor of numerous registrations for its LOUIS VUITTON trademark, including the following:

- International Trademark No. 416052 for LOUIS VUITTON (word mark), registered on June 19, 1975, for

goods in classes 03, 06, 08, 13, 14, 16, 18, 20, 21, 24, 25, 28 and 34;

- United States Trademark No. 1045932 for LOUIS VUITTON (word mark), registered on August 10, 1976,

for goods in class 18, claiming a date of first use in commerce in 1875;

- Hong Kong Trademark Registration No. 19861189AA for LOUIS VUITTON (word mark), registered on May
16, 1986, for goods in classes 18 and 25.

Complainant has registered numerous domain names reflecting its trademark, including <louisvuitton.com> and <louisvuitton.hk>. It operates its primary business website at <louisvuitton.com>.

The disputed domain name was registered on November 30, 2017. It redirects to a website featuring pay- per-click (“PPC”) links related to handbags.

Complainant sought information about the domain name from Respondent on March 4, 2022, March 8, 2022
and March 22, 2022. On March 28, 2022, a person identifying himself as a domain name broker replied to
Complainant, stating a price for the transfer of the disputed domain name. Complainant sent a cease-and-
desist letter to Respondent on April 7, 2022, with reminders sent on April 19, 2022, April 28, 2022 and May

3, 2022. Respondent did not provide any reply to these letters.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it has used the LOUIS VUITTON mark continuously for over 165 years in connection with luxury and fashion goods. Complainant’s parent entity employs over 160,000 people and has made significant investments in the LOUIS VUITTON trademark, which is a well-known mark worldwide and ranks as the 13th most valuable brand in the world. The disputed domain name entirely reproduces the trademark LOUIS VUITTON, with the sole inversion of the letters “i” and “s” in the first word “LOUIS.”

Under the second element, Complainant states that Respondent is not a licensee, an authorized agent of

Complainant or in any other way authorized to use the LOUIS VUITTON trademark. The disputed domain

name resolves to a website featuring PPC links that redirect users to websites offering for sale goods of
Complainant and its competitors.

Under the third element, Complainant states that, in light of the fact that the trademark LOUIS VUITTON is well-known and has been used extensively since the 1850s, including in Respondent’s country, Respondent was undoubtedly aware of the existence of Complainant’s trademark and of the fact that the disputed domain name was confusingly similar to it at the time of registration. The use of the disputed domain name to redirect to pages featuring PPC links generates commercial gain to Respondent. In addition, Respondent requested USD 2,500 for the transfer of the disputed domain name. Respondent’s asking price is to be considered well in excess of the out-of-pocket costs directly related to the registration of the disputed domain name.

page 3

Complainant states that Respondent did not respond to Complainant’s cease-and-desist letters, thereby demonstrating both a lack of rights or legitimate interests and also bad faith.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the LOUIS VUITTON
trademark through registrations in the United States, Hong Kong and other jurisdictions. Complainant
thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a
UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s mark with the disputed domain name, the Panel finds that the disputed domain

name is confusingly similar to this trademark as the trademark is clearly recognizable within the disputed

domain name, save for the inversion of the letters “i” and “s.” This is clearly a deliberate misspelling of
Complainant’s trademark. See WIPO Overview 3.0, section 1.9.

It is the well-established view of UDRP panels that a generic Top-Level Domain such as “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent

has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by

Complainant and has no rights in the LOUIS VUITTON trademark.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

page 4

Respondent has not provided any rebuttal of Complainant’s prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name consists of an obvious misspelling of Complainant’s LOUIS VUITTON trademark. UDRP panels have held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.

Moreover, the disputed domain name resolves to a website featuring PPC links related to Complainant’s business. Upon clicking on these links, Internet users are redirected to websites offering for sale products of Complainant and its competitor. Evidence of such activity using Complainant’s mark indicates Respondent’s lack of rights or legitimate interests. See WIPO Overview 3.0, section 2.9.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its distinctive and well-known LOUIS VUITTON trademark predate the registration of the disputed domain name by more than a century. The disputed domain name is an obvious misspelling of Complainant’s trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4.

UDRP panels have consistently held that the use of the disputed domain name to redirect to a pay-per-click
website such as the one used by Respondent is clear evidence of bad faith. The PPC links are related to
Complainant’s business and indicate Respondent is using the disputed domain name for commercial gain.
See, for instance, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO
Case No. D2006-1315; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

The Panel notes that, in general, offering the disputed domain name for sale to the trademark owner at a price that significantly exceeds the out-of-pocket costs of the registration is evidence of respondent’s bad faith. See WIPO Overview 3.0, section 3.1.1. In this case, the record demonstrates that the payment was

requested by a party representing himself as an agent of the Registrar. The record does not demonstrate

that this payment was requested at the instruction of Respondent.

The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lousivuitton.com> be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: August 17, 2022