Louis Vuitton Malletier S.A. v. Manifest Information Services c/o Manifest Hostmaster
Claim Number: FA0609000796276
Complainant is Louis Vuitton Malletier S.A. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Manifest Information Services c/o Manifest Hostmaster (“Respondent”), represented by Brett E. Lewis, of Lewis & Hand, LLP 45 Main Street, Suite 818, Brooklyn, NY 11201.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lv.com>, registered with Easydns Technologies, Inc.
The undersigned, Calvin A. Hamilton, certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Co-panelists Honorable Tyrus R. Atkinson, Jr., Esq and G. Gervaise Davis, III have similarly confirmed that they have acted independently and impartially and have no known conflict.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2006.
On September 18, 2006, Easydns Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <lv.com> domain name is registered with Easydns Technologies, Inc. and that the Respondent is the current registrant of the name. Easydns Technologies, Inc. has verified that Respondent is bound by the Easydns Technologies, Inc. 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 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 11, 2006 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 10, 2006.
Complainant’s Additional Submission was received and determined to be timely on October 16, 2006.
Respondent’s Additional Submission was received and determined to be timely on October 19, 2006.
On October 24, 2006, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Tyrus R. Atkinson, Jr., Esq and G. Gervaise Davis, III and Calvin A. Hamilton as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s domain name fully incorporates Complainant’s famous, long-standing and widely registered LV trademark and is confusingly similar;
2. Respondent has no legitimate interest in the domain name;
3. Respondent registered and uses the domain name in bad faith.
B. Respondent makes the following assertions:
1. Pending UDRP proceeding should be dismissed pursuant to Rule 18(a) until the litigation before the United States District Court for the Eastern District of New York is resolved, pursuant to Rule 18(a), or otherwise stayed;
2. Respondent has rights and legitimate interests in the domain name;
3. There is no evidence that domain name was registered or used in bad faith.
C. Additional Submissions
(i) Complainant makes the following additional assertions:
1. Respondent does not dispute confusing similarity;
2. Respondent admits its offer to sell the domain name which shows absence of any legitimate use;
3. Brief use of the domain name to host links to third party commercial offers is not a legitimate use;
4. The contraction “LV” to identify Las Vegas is not a trademark use entitled to priority over Complainant’s prior, incontestable and world famous trademark;
5. Respondent’s offer to sell the domain name followed by a protracted period of “passive holding” is not a legitimate use and therefore is evident of bad faith;
6. Respondent’s procedurally flawed and unserved complaint does not stay UDRP proceedings.
(ii) Respondent makes the following additional assertions:
1. Complainant is subject to the jurisdiction of the courts of New York State for the reason that Complainant brought action in that State in 2006 arguing positively as regards jurisdiction, despite connections with Canada;
2. Complainant’s trademark rights in “LV” are limited
3. Public offers to sell domain names are not evidence of lack of rights or bad faith
4. Respondent made legitimate use of the domain name in its business
5. Use of <lv.com> in a Las Vegas-based web portal conveys legitimate rights of use.
As a preliminary procedural issue, the Panel addresses the Respondent’s request that the Panel should terminate, or at least stay, the administrative proceeding in accordance with ICANN Policy ¶ 4(k) and ICANN Rule 18(a). It is noted that Respondent has filed an action in the United States District Court for the Eastern District of New York, entitled Manifest, LLC v. Louis Vuitton Malletier, Civ. No. 065460 (E.D.N.Y.) for a declaratory judgment of non-infringement and rights with respect to the domain name at issue.
After consideration, the Panel has decided to proceed with a decision in this case under the authority of Rule 18(a) and thus rejects Respondent’s request for termination or suspension of the administrative proceeding. BPI Communications, Inc. and VNU Business Media, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum April 30, 2002) (Panel decided to proceed despite complainant filing suit in federal court for trademark and service mark infringement.).
Turning to the facts of the case, the Panel finds that:
1) Complainant is a worldwide leading manufacturer of leather products and Complainant is connected in some way with Louis Vuitton Malletier Corporation France.
2) Louis Vuitton Malletier Corporation France, not Complainant, holds trademark registrations for the LV trademark with the United States Patent and Trademark Office (“USPTO”), namely, Reg. No. 1,643,625 issued May 7, 1991 for leather and imitation leather products; Reg. No. 2,221,907 issued November 16, 1999 for cigar and cigarette cases; Reg. No. 2,909,002 issued December 7, 2004 for textiles and textile goods and spectacle cases.
3) Respondent is a company and used the domain name in the past to make a bona fide offering of goods and services over the Internet. The Internet website consisted of a web portal for Las Vegas businesses. The website was in use until approximately 2001. The domain name now resolves to an empty website of easy DNS with the statement “lv.com is a parked domain.”
4) Respondent registered the <lv.com> domain name with Network Solutions, Inc .on April 26, 1995 (Exhibit A, Complaint) at which time Respondent was not aware of Complainant’s brand of luxury goods.
5) Respondent offered the disputed domain name for sale (Exhibit H, Complaint and Exhibit G, Response) as advertised on the Respondent’s website according to archives (allegedly in or around October 17, 2004), although there is no present offer for sale.
6) The disputed domain name is confusingly similar to a trademark in which Complainant has rights.
7) Respondent has legitimate interests in the domain name.
8) Respondent did not register the <lv.com> domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
There are two parts to the first element under Policy ¶ 4(a)(i). Firstly, the Complainant must have rights in a trademark or service mark. Secondly, the domain name registered by the Respondent must be identical or confusingly similar to that trademark or service mark.
Thus, for relief to be granted the Complainant must establish that it has rights in a trademark or service mark. For purposes of the Policy, the registrations evidenced by Complainant of the LV mark in the United States are sufficient to establish rights in the LV mark under the Policy ¶ 4(a)(i). See Am. Online, Inc v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (successful trademark registration with USPTO creates a presumption of rights in a mark); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent has failed to challenge Complainant's assertions over its rights in the LV mark, limiting its objections to the scope of the protection afforded by such rights.
The Panel states for the record that it is not the Complainant but the Louis Vuitton Malletier Corporation France that is the holder or owner of those trademark registrations. Complainant has failed to state how if at all Complainant has rights in the LV trademark. The Panel finds that there must be some legal connection between Complainant and Louis Vuitton Malletier Corporation France which lawfully entitles Complainant to have enforceable rights in the trademark; however, since this legal relationship appears to have been accepted by Respondent, the Panel will assume for purposes of this Decision that Complainant has such rights in the trademarks.
The <lv.com> domain name fully incorporates Complainant's mark, merely adding the generic top-level domain name ".com." This minor alteration to Complainant's registered mark is insufficient to differentiate Respondent's domain name pursuant to Policy ¶ 4(a)(i).
The domain name registered by Respondent, <lv.com>, is confusingly similar to Complainant’s LV mark and the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has the responsibility of demonstrating a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant meets that requirement, the burden of proof shifts to Respondent to show that it has rights or legitimate interests with respect to the disputed domain name.
Policy ¶ 4(c) sets forth the manner in which a Respondent may establish rights to and legitimate interests in a domain name. It provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Policy ¶ 4(a)(ii):
(i) that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Where Complainant rebuts each of these elements, it has satisfied its burden by providing prima facie evidence against any of the particular claims Respondent could make under Policy ¶ 4(c)(i)-(iii), thereby shifting the burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent.").
Respondent does not attempt to establish that it is making a non-commercial use of the domain name or that it is commonly known as “LV” and thus the circumstances of Policy ¶ 4(c)(ii) and (iii) do not apply.
It remains to be seen whether, under Policy ¶ 4(c)(i), the Respondent used the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute.
Respondent contends that it used the disputed domain name in connection with a bona fide offering of goods or services because it previously used the disputed domain name to host a web portal for Las Vegas businesses. Respondent asserts that between 1995 and 2001, it hosted several Las Vegas businesses through various uses of the disputed domain name, and has included archive Internet screen shots as evidence of this assertion. This use, although not current, was prior to notice of the dispute. See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint); see also Invicta Watch Co. of Am., Inc. v. Santana a/k/a Invicta.com, FA 727672 (Nat. Arb. Forum August 3, 2006) (finding legitimate rights where the respondent had used the disputed domain name for a period of years before shutting the site down); see also First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest).
Respondent used the <lv.com> domain name for a significant period of time for business purposes. Respondent alleges that at all times his business was entirely unrelated to that carried on by Complainant. See Warm Things Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent was making a bona fide offering of goods or services at the <warmthings.com> domain name as the respondent was operating in a field unrelated to the complainant or its products).
Furthermore, the disputed domain name is comprised only of two letters, which in theory may stand for several different things, with the addition of a gTLD. As evidence for its assertion, Respondent includes a listing of several other companies that hold a mark registration with the USPTO for the LV mark. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 9, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms and is not exclusively associated with the complainant's business).
Consequently, on the basis of the evidence submitted, the Panel finds that the disputed domain name was initially used by Respondent in connection with a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i).
That said, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Under Policy ¶ 4(a)(iii), it is necessary for the Complainant to show that the disputed domain name both has been registered and is being used in bad faith. Policy ¶ 4(b) provides a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith for purposes of Policy ¶ 4(a)(iii).
The Complainant has asserted that Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name but has not been able to prove that Respondent has engaged in a pattern of such conduct. Neither has the Complainant been able to show that Respondent’s business was in any way similar to Complainant’s business or in competition with Complainant and thus that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
In fact, Complainant has not established any bad faith at time of registration at all and has thus failed to satisfy the first requisite under Policy ¶ 4(a)(iii).
As regards to bad faith use, Complainant has failed to show that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Finally, Complainant has asserted and Respondent has admitted that previously (although not currently) Respondent had offered the disputed domain name for sale. Under Policy ¶ 4(b)(i) of the Policy, it is possible to prove registration and use of a domain name in bad faith if there is evidence as to circumstances which indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Previous panels have refrained from drawing the inference that offering a domain name for sale on a publicly accessible web site to any party willing to pay its price constituted an offer to sell the domain name to the Complainant or to a competitor of the Complainant. See Educational Testing Service v. TOEFL, D-2000-0044 (WIPO March 16, 2000). In the aforementioned case, it was conceded that certainly the complainant and its competitors were potential purchasers, just as in the present case, but concluded that if the drafters of Policy ¶ 4(b)(i) had intended to broadly cover offers to any and all potential purchasers as evidence of bad faith, it would have been a simple matter to refer to all offers to sell the domain name, and not offers to sell to specific parties or classes of parties.
Furthermore a mere offer to sell a domain name does not necessarily constitute bad faith use, and panels have noted that "there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy." See N.C.P. Marketing Group v. Entredomains, D2000-0387 (WIPO, July 5, 2000) and Onu S.R.L. v. Online Sales, AF-0672 (eResolution Feb. 16, 2001).
That said, the Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton, Panel Chair
Honorable Tyrus R. Atkinson, Jr., Esq
G. Gervaise Davis, III
Dated: November 7, 2006
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