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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Lacoste Alligator SA v Major Shopping Network Ltd [2007] DRS 4327 (20 February 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4327.html Cite as: [2007] DRS 4327 |
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Nominet UK Dispute Resolution Service
DRS Number 04327/8
Lacoste Alligator S.A. -v- Major Shopping Network Ltd
Decision of Independent Expert
Complainant Type: Business
Country: Switzerland
Respondent: Major Shopping Network Ltd
Country: GB
lacostetrainers.co.uk, lacosteshoes.co.uk ('the Domain Names')
This matter is being handled on behalf of the Complainant by Mr Todd Martin of Fross Zelnick Lehrman & Zissu, P.C., from their New York office.
Mr Martin contacted Nominet before finalising the Complaints to clarify whether it was necessary to submit two separate, very similar, complaints. The registrants for the two Domain Names appeared to be the same, but the registrant name on Nominet's register for lacostetrainers.co.uk was FAO: Press Office, while for lacosteshoes.co.uk this was FAO: Gifty Akparanta. On 18 December Nominet advised Mr Martin that this meant that the rules required two separate complaints, which he duly lodged electronically with Nominet on 20 December 2006. Hard copies were received on the same day.
On 18 December Nominet also advised Mr Martin that following receipt of the two separate Complaints, they could be merged into a single case so as to offer the respondent the opportunity to submit one response to both cases. However, the two Complaints seem to have continued to be treated separately at least until 18 January 2007, when the Complainant was invited to pay for a single expert decision covering both Domain Names. On 23 January the Complainant phoned to check whether the two Complaints could be combined.
The Respondent was duly notified of the Complaints by paper correspondence to the above postal address and by email to two separate email addresses (in one case) and three separate email addresses (in the other case). Messages sent to the two email addresses derived from the Domain Names, and to one other email address, returned 'undeliverable' messages. Nominet received no response to either set of correspondence.
A DRS draft invoice for the expert fee, dated 18 January 2007, was addressed to Lacoste Alligator in Switzerland. A duplicate draft invoice, dated 1 February 2007, was addressed to Fross Zelnick Lehrman & Zissu in New York. The payment deadline was extended by one day, and payment was received within deadline.
On 5 February 2007 Claire Milne was appointed to act as expert in the merged case, having confirmed that she knew of no reason why she could not properly do so; and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.
The question of merging the two complaints seems to have caused considerable concern both to the Complainant and to Nominet. Even at the expert decision stage, two separate copies of apparently identical evidence were included among the papers, although when I sought confirmation from Nominet that they were intended to be identical (and therefore need not be perused twice), this was confirmed.
In fact, it is clear that the registrant in the two cases is the same, the company Major Shopping Network Ltd. Confusion has arisen because whoever completed the registration forms mistakenly included the company name in the address fields, while putting two different contact names into the registrant fields. This small mistake has caused an inordinate amount of unproductive administrative work.
In my view, it would be helpful if Nominet staff were permitted and indeed encouraged to read registration records as a whole, not being bound by which details are entered in which specific field of the form. This would make it easier to identify when registration details refer to the same entity in spite of slight differences between them, and accordingly reduce the need for near-duplicate complaints.
For the rest of this Decision I shall treat the two Complaints as one.
The following account is based on material supplied to me in the Complaint file, supported by evidence and which I have no reason to question. In addition I have today observed the websites at the domain names mentioned in the Complaint and at lacoste.com.
The Lacoste name and logo (a green crocodile[1] with open jaw and raised tail) have achieved worldwide recognition since French tennis champion René Lacoste first sold logo-embroidered sports shirts in 1933. The company that Lacoste founded, still run by the family, now has sales of over US$1 billion a year through thousands of approved boutiques and retailers in over 110 countries. It positions itself as selling only genuine quality products through managed channels. Its fame is demonstrated by copies of two articles from US business magazines and a survey of brand recognition in France.
Submitted with the Complaint are copies of the following evidence of trademark registrations:
• A printout dated 17 May 2004, showing 27 registrations in the USA to Lacoste Alligator S.A. of the crocodile design and/or the name Lacoste, in a range of classes including sportswear and sports equipment, clothing and footwear, eyeglasses, luggage and various personal accessories, dating between 1978 and 2001.
• A printout dated 28 June 2004 showing 18 registrations of the mark Lacoste and the crocodile logo to La Chemise Lacoste (said to be 'an affiliate of the Complainant') for sports shirts and some other classes in Benelux, Egypt, Hungary, Italy, Liechtenstein, San Marino, Morocco, Monaco, Romania, Switzerland, Vietnam, Serbia-Montenegro, New Zealand, Lesotho, Qatar, and China. Dates are not shown for all these registrations; those shown are between 1999 and 2001.
• A printout dated 29 June 2004 showing 120 registrations of the mark Lacoste to Sporloisirs S.A. in around 30 countries of Latin America and the Caribbean, plus Spain and Switzerland and one WIPO registration, again in a range of classes similar to those above, and over a range of dates starting in the early 1980s
• An undated list of 4 registrations for the mark Lacoste in Canada, registrant not shown, indicating expiry dates from 2005 to 2017.
The name lacostetrainers.co.uk was registered on 18 July 2004 and renewed on 16 July 2006. The name lacosteshoes.co.uk was registered on 4 October 2004 and renewed on 11 October 2006. Both names now point to a single website at www.lacosteshoes.com. The home page is headed by a copy of the Lacoste green crocodile logo and has a large picture of two sports shoes, followed by links to various pages, mainly describing and selling on-line different shoes (all purportedly Lacoste branded). One page instead claims to sell Lacoste-branded perfume, while another lists stores stocking Lacoste goods. There is a page 'about Lacoste' summarising the history of the brand. A link on some pages to 'Major Shopping Network' leads to a separate shopping site whose home page advertises wigs, birthday newspapers, music books and Lacoste shoes.
There has been no response. The Complainant's contentions follow.
Rights
The Complainant has Rights in respect of the name and mark Lacoste. Evidence (already described above) is supplied of the company's history, size and fame, and also of numerous trademark registrations.
The Names are similar to the Complainant's mark Lacoste, because they incorporate it in its entirety. The generic terms 'trainers' and 'shoes' do nothing to distinguish the Domain Names from the Complainant's mark (WIPO cases D2002-0615, bmwcar.com, and D2000-0253, quixtarmortgage.com, are quoted to support this contention).
Abusive Registration
a. The Registrant has no legitimate interest in the Domain Name. This is shown by the absence of the Name from the registrant details furnished as part of registration. There is no relationship between the Complainant and the Registrant.
b. The fame of the Name is (and was at the time of registration) such that any use of it by someone unconnected with the Complainant can only be in order to profit from this misappropriation. (WIPO cases D2000-0055, buychanel.com, and D2000-0163, veuveclicquot.org, are quoted in support).
c. The fame of the Name is such that most people seeing the Domain Name will assume that it is controlled by the Complainant. There is a probability of confusion between the registrant's website and legitimate retailers of the Complainant's goods. (WIPO case D2002-0521, volvovehicles.com, is quoted in support).
d. The Registrant's website creates a particularly misleading impression by combining links to legitimate retailers with the unauthorised offer for sale of the Complainant's goods.
e. The Registrant is earning revenue through its unauthorised use of the Complainant's name on its website. (WIPO cases D2003-0248, gurusrichinmoy.com, and D2000-0847, madonna.com, are quoted in support).
f. The fact that the Registrant has registered two very similar names supports the conclusion that the Registrant knew of the Complainant's mark at the time of registration (WIPO case D2003-0693, 8 .com names each including the element 'pepsi', is quoted in support).
To succeed, a Complaint under Nominet's Dispute Resolution Policy needs to show, on the balance of probabilities, that:
(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
I shall look firstly at Rights and secondly at Abusive Registration.
Rights
In Nominet's Dispute Resolution Policy, the term Rights "includes, but is not limited to, rights enforceable under English law". As far as I can see, none of the copious evidence supplied relates specifically to any part of the United Kingdom. I am unable to use most of the trademark registrations supplied, as their proprietor is a company 'Sporloisirs S.A.' which is not mentioned anywhere else in the Complaint, so that I have no idea of its relationship to the Complainant. Nonetheless, taking all the evidence together, I accept that the Complainant does have wide-ranging Rights in the Name which are adequate to fulfil the requirements of Nominet's Policy. Also, there is every reason to suppose that Lacoste's brand recognition in fact extends to England.
The name Lacoste is not identical to the Domain Names, because of the additions 'shoes' and 'trainers'. However, I accept that for the purpose of this case, even with these additions, there is still sufficient similarity for Rights to remain. My conclusion here is influenced by the fact that Lacoste indeed sells shoes and trainers.
Abusive Registration
Paragraph 1 of the Policy defines Abusive Registration to be a Domain Name which either:
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights, or
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant's contentions a, b and f relate primarily to the Registrant's presumed intent at the time of registration, while contentions c, d and e relate primarily to how the Name has been used.
To me, there is one decisive point which makes this beyond reasonable doubt an Abusive Registration. The Registrant's website has been set up in a way that suggests to the ordinary visitor that it is an authorised Lacoste dealer, while according to the Complainant it is not so authorised. The fact that there has been no response (although in all probability Nominet's correspondence has been received) makes me suppose that the Registrant agrees that it is unauthorised. I therefore conclude that the Names have been used (and are still being used) in a manner which takes unfair advantage of the Complainant's Rights. In addition, I agree with the Complainant that the use made of the Names suggests that this contemplated use, or a similar one, was probably the reason for their registration.
* * *
I note that the Complainant has for the most part presented his case as if it were being brought under the UDRP rather than under Nominet's DRS. In this instance, the Complaint succeeds regardless. However, the various WIPO cases quoted carry next to no weight in my mind compared with the compelling circumstances of this particular case.
The Complaint shows that the Complainant has Rights in a name similar to the Domain Names and, in all probability, that the registrations were abusive. The Complaint therefore succeeds and the Domain Names should be transferred to the Complainant as requested.
Claire Milne
20 February 2007
Note 1 Or alligator – within the evidence, both animals are named. For the current purpose I see no need to distinguish between them. [Back]