TUESDAY, 1 SEPTEMBER 2009
Case No. D2009-0700Lacoste Alligator S.A. (Geneva-based) v. LaCoste Healing Jewelry revolved around the domain name and relevant web site "lacostejewelers.com". LaCoste Healing Jewelry, an entity apparently owned by one Audrey LaCoste, registered the domain name in September 2007, but the site is currently not being used at all.
The hungry crocodile relied on its various European and international trade mark registrations for the famous mark "LACOSTE", as well as on its earlier domain name registrations, including the word "lacoste". The Respondent failed to reply to the complaint, however, there seems to be a bit of “history” behind the dispute. According to the decision, Lacoste provided documentary evidence of having sent a cease, desist and transfer letter to the Respondent on October 8, 2008, and contended that Ms. LaCoste, for the Respondent, initially agreed to transfer the disputed domain name and to change the Respondent’s business name. Correspondence continued and on February 2, 2009, Ms. LaCoste informed the Complainant that the Company name was being changed from “LaCoste Healing Jewelry” to "Sterling Identity." There were more telephone communications until April 13, 2009, but the Respondent has yet to release the disputed domain name for transfer.
Lacoste also contended that the Respondent allowed its registration of the domain name to expire on August 18, 2008, despite it being identical to the Respondent’s name, but has maintained and renewed the registration for the currently disputed domain name . Further, that before the corresponding website was removed by the Respondent, it was in use to sell goods similar to those covered by the Complainant’s trademark registrations.
In applying the classic 3-step test (confusing similarity – lack of rights or legitimate interests – use and registration in bad faith), the sole panelist declined to rule on confusing similarity stating that
In the present instance it might be argued that the added word “jewelers” could have the converse effect of introducing a distinction between the Complainant’s trademark, which appears to be known principally in the field of clothing, sportswear and accoutrements, and the Respondent’s business in the field of healing jewelry. On the other hand the Complainant’s expansive business includes a small line of watches that might not unreasonably be classed as jewelry.
The Panel considers these matters to be more appropriately discussed under the second and third elements of the Policy and, since these were ultimately decided against the Complainant, makes no finding in the terms of paragraph 4(a)(i) of the Policy.
Ruling on rights and legitimate interests, the sole panelist disappointed the complainant Lacoste. He held that
Words corresponding to trademarks may be capable of innocent usage on the Internet, particularly since domain names are devoid of logos, punctuation, capitalisation, special colours or other associations possible in ordinary print. The word “lacoste” is a recognised surname and a French place name. The word is capable of innocent usage by, at the very least, people named “LaCoste” (or "Lacoste") and by businesses, associations, societies, utilities and other entities associated with the place. Unless a domain name containing the component "lacoste" has been registered and used with abusive intent against a trademark holder, there may not be grounds for complaint.
The disputed domain name is registered in the name “LaCoste Healing Jewelry”, with the administrative contact given as Audrey LaCoste of the same physical address. In the exercise of its powers to "undertake limited factual research into matters of public record" (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5) the Panel has checked the telephone directory and without difficulty has verified the name Audrey Lacoste and the exact contact details provided in the registration.
There is no evidence or suggestion by the Complainant that the Respondent’s address is unreal. Similarly there is no evidence or suggestion that the proprietor’s reflection of her name in what may be an embryonic business selling healing jewelry, is insincere. The screenshot of the Respondent’s website submitted in evidence, skeletal as it was, mentioned crystals, silver and the like. Nothing in the evidence leads the Panel to conclude that the business name LaCoste Healing Jewelry and associated domain name have been created with other than good intent, even though the website projected a tentative impression rather than the image of a formally incorporated or comprehensive concern.
Whilst there is a distinction between an individual and their company, even if wholly-owned, in this case the difference may be moot. The Panel concludes from the available facts that in practical terms Audrey LaCoste has reflected the name by which she is commonly known, and in which she would have certain rights, in a domain name related to her activities. Irrespective of the lack of a formal Response, the Panel is not satisfied that the Complainant has established on the balance of probabilities that the Respondent is without rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
Finally with regard to bad faith, the panelist focused on the correspondence between the parties and stated that
The exchange of written correspondence in evidence begins on October 8, 2008 with a strongly worded cease and desist letter from the Complainant to the Respondent with references to "Infringing Domain Names" and potentially heavy penalties under the law. There appear to have been telephone conversations in the interim in which, the Complainant says, by February 9, 2009 the Respondent had offered to change its business name, yet on February 16, 2009 the Respondent was still writing to the Complainant, "Hi Todd, Why do we have to transfer the names if we are not using them? Is this really an issue? Audrey".
To the Panel, that does not imply a meeting of minds between the Complainant and the Respondent. The Panel has seen no evidence that the Respondent was willing to part with the disputed domain name at all, and none to the effect that any particular compensation was ever debated.
The Panel is not satisfied that in the terms of paragraph 4(b)(i) of the Policy there is evidence of the Respondent having registered and used the disputed domain name other than in good faith. Specifically in the terms of paragraphs 4(b)(ii), (iii) and (iv) of the Policy the Panel can find no realistic evidence that the Respondent made a blocking registration (and has, as would be required, engaged in a pattern of such conduct), or intended to disrupt the business of a competitor, or intended to divert the Complainant’s customers to its website. The Respondent did not ignore the Complainant’s cease and desist letter but appears to have responded in a conciliatory manner.
Accordingly the Panel finds for the Respondent in the terms of paragraph 4(a)(iii) of the Policy.
On alligators and crocodiles see here and here.
On Lacoste and crocodiles (not alligators) see here and here.