Louis Vuitton Malletier v Bernardo de la torre aparicio, EUM

WIPO Case No. D2024-2946

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Louis Vuitton Malletier v. Bernardo de la torre aparicio, EUM

Case No. D2024-2946

1. The Parties

The Complainant is Louis Vuitton Malletier, France, represented by Studio Barbero S.p.A, Italy.

The Respondent is Bernardo de la torre aparicio, EUM, Mexico.

2. The Domain Name and Registrar

The disputed domain name <louisvuítton.com> (xn--louisvutton-ucb.com) (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2024. On
July 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On July 31, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on August 2,
2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

August 5, 2024.

The Center verified that the Complaint together with the amended 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 the Respondent of the
Complaint, and the proceedings commenced on August 8, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 28, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 11, 2024.

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The Center appointed Michal Havlík as the sole panelist in this matter on September 18, 2024. 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.

4. Factual Background

The Complainant is a French fashion house founded in 1854 which is now part of the multinational luxury goods conglomerate LVMH Moët Hennessy abbreviated as LVMH. The Complainant has used the LOUIS VUITTON trademark for decades in connection with luxury leather goods, products of the high-fashion, accessories as well as fragrances and cosmetics. The LOUIS VUITTON trademark is generally accepted as one the most valuable global brands.

The Complainant owns multiple international and European Union trademark registrations for LOUIS

VUITTON word marks including:

- International Registration No. 416052, registered on June 19, 1975, in classes 03, 06, 08, 13, 14, 16,
18, 20, 21, 24, 25, 28 and 34

- International Registration No. 1096591, registered on April 6, 2011, in classes 35, 38 and 41,
designating, amongst others, United States

- European Union (“EU”) Trademark Registration No. 000015610, filed on April 1, 1996, and registered
on March 16, 1998, in classes 16, 18 and 25

- United States of America (“United States”) Trademark Registration No. 1045932, filed on August 13,
1975, and registered on August 10, 1976, in international class 18

- United States Trademark Registration No. 3904444 filed on June 17, 2010, and registered on January
11, 2011, in international class 35

The Complainant uses domain name <louisvuitton.com> for global promotion of its goods and services.

The Disputed Domain Name was registered on May 25, 2024. The Disputed Domain Name
<xn--louisvutton-ucb.com> is the Punycode translation of <louisvuítton.com>. The Punycode syntax is a
method of encoding strings containing Unicode characters to ASCII.

The Disputed Domain Name resolves to the Registrar parking page with pay-per-click (“PPC”) links resolving to third party commercial websites. There was no change on the website after filing of the Complaint.

The Complainant submitted as Annexes correspondence between the parties and its respective agents concerning the Disputed Domain Name prior to the filing of the Complaint.

The Respondent is purportedly located in Mexico. No further information on the Respondent is available to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant contends that is has satisfied each of the elements required under the Policy for a transfer of the Disputed Doman Name.

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The Complainant cites its International, EU and United States trademarks for word mark LOUIS VUITTON. The Complainant contends that the Disputed Domain Name contains the LOUIS VUITTON mark in its entirety as its initial part. According to the Complainant, the only change is the addition of a special letter “í” instead of a common form “i” is not sufficient to exclude confusion with the Disputed Domain Name. Notably, the Disputed Domain Name is nearly identical to the Complainant’s domain name <louisvuitton.com>. It submits that as a result, the Disputed Domain Name is confusingly similar to the Complainant’s trademarks.

The Complainant contends that the Respondent has prima facie no rights or legitimate interests in respect of the Disputed Domain Name. Furthermore, it holds that the Complainant’s earlier rights precede the Disputed Domain Name by a long period. Moreover, the Complainant contends that it never licensed or granted an

authorization to the Respondent to use LOUIS VUITTON mark.

Finally, the Complaint alleges that the registration and use of the Disputed Domain Name was undertaken in bad faith. With regard to the long-term and broad use of the Complainant’s trademarks, the Respondent must have known about their existence when registering the Disputed Domain Name on May 25, 2024, without any authorization from the Complainant. Furthermore, it has been redirected to a registrar parking page featuring sponsored links which means that it generates revenues for the registrar and/or for the Disputed Domain Name holder. By clicking on the pay-per-click links available on the website at the Disputed Domain Name, Internet users are redirected to internal pages of the same website displaying additional links to third parties’ commercial websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i)        that the Disputed Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has right;

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown rights regarding a trademark or service mark for the purpose of the Policy. section 1.2.1. The Complainant has sufficiently demonstrated existence of its trademark rights in the European Union and the United States and in numerous other jurisdictions. The requirement of the first element of having trademark rights for the purposes of the Policy is prima facie satisfied by a trademark registered in any country. See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358.

The Panel notes in this respect that prior panels have found IDNs and their Punycode translations to be
equivalent. See Facebook Inc. and Instagram, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Mihael
Megatron, WIPO Case No. D2019-0797.

The Disputed Domain Name incorporates the entirety of the Complainant´s trademark LOUIS VUITTON with the mere difference of the eighth letter being, instead of the letter “i” from the Latin alphabet, the accented character “í”. As indicated in prior UDRP decisions, such replacement of one letter, which consists of nothing more than adding an accent to the letter “I” can be considered typosquatting. See WIPO Overview 3.0, section 1.9.

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Indeed, “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is
considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
Examples of such typos include (ii) substitution of similar-appearing characters, (iii) the use of different letters
that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters”. See
Pierce Protocols Limited v. Host Master, 1337 Services LLC, WIPO Case No. D2022-4446; Arnold Clark
Automobiles Limited v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No.
D2021-1080; Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael, WIPO Case No.
D2020-0865 and Guccio Gucci S.p.A. v. Islem Binous, Owl in the frame s.àr.l.-S, WIPO Case No.
D2024-0083.

As for the Top Level Domain, it is an obligatory part of the domain name and is to be disregarded in assessment of confusing similarity, see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286.

Accordingly, this Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.

Although the overall burden of proof in UDRP proceedings in on the Complainant, prior panels have
recognized that proving a respondent lack of rights or legitimate interests in a domain name may result in the
difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or
control of the Respondent. As such, where a Complainant makes out a prima facie case that the
Respondent lacks right or legitimate interests, the burden of production on this element shifts to the
Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the
domain name (even though the burden of proof always remains on the Complainant). If the Respondent fails
to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second
element. WIPO Overview 3.0., section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant´s prima facie showing and has not come forward with any relevant evidence illustrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purpose of paragraph 4(a)(iii), paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that my indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent´s registration and use of a domain name is in bad faith. WIPO Overview 3.0., section 3.2.1.

The Panel finds that the Respondent registered the confusingly similar Disputed Domain Name long after the Complainant established its rights in its LOUIS VUITTON marks. As a result, the Respondent with knowledge of those marks, used the Disputed Domain Name to divert Internet traffic to the Respondent’s website with PPC links. This conduct demonstrates bad faith registration and use because the Respondent

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uses the confusingly similar Disputed Domain Name to intentionally attract Internet users to the
Respondent’s website for the purposes of commercial gain, resulting from creating a likelihood of confusion
regarding source, sponsorship, affiliation, or endorsement of the Respondent’s website by the Complainant.
See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

When taking into account all relevant facts and circumstances, the Panel notes that the Disputed Domain Name is confusingly similar to the Complainant’s highly distinctive trademark, the Respondent has no rights or legitimate interests in the Disputed Domain Name and has failed to prove any evidence of actual or contemplated good-faith use. The Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith primarily to intentionally attract Internet users to the Respondent’s website for the purposes of commercial gain, resulting from creating a likelihood of confusion regarding source, sponsorship, affiliation, or endorsement of the Respondent’s website by the Complainant.

The Panel finds that the Complainant has established the third element 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 <louisvuítton.com> (xn--louisvutton-ucb.com) be transferred to the Complainant.

/Michal Havlík/ Michal Havlík Sole Panelist Date: October 2, 2024