LVMH Fashion Group v Stock [2005] DRS 02581 (25 July 2005)

NOMINET UK DISPUTE RESOLUTION SERVICE
DRS02581
DECISION OF INDEPENDENT EXPERT
LVMH Fashion Group v Jonathan Stock 

1.	Parties
Complainant	:	LVMH Fashion Group	
Address	:	48/50 Rue de la Victoire
Cedex 09
Paris	
Country	:	France
	
Respondent	:	Jonathan Stock	
Country	:	GB	

2.	Domain Names
vuitton.co.uk, louisvuitton.co.uk and marc.jacobs.co.uk

3.	Procedural Background
3.1	The Complaint was lodged with Nominet on 26 April 2005.  The hard copies of the Complaint and associated documents were received in full on the same day.  Nominet validated the Complaint on 3 May 2005, and notified the Respondent of the Complaint on 5 May 2005.  A Response was received from the Respondent on 25 May 2005.  A Reply was received from the Complainant on 15 June 2005. 
3.2	Nominet initiated its mediation procedure on 15 June 2005, however it was not possible to achieve a resolution to the dispute by informal mediation.  On 1 July 2005 Nominet informed the Complainant that it had until 15 July 2005 to pay the appropriate fee, following which Nominet would refer the case to an independent expert for a decision.  The Complainant duly paid the fee on 7 July 2005.  On 11 July 2005 Bob Elliott, the undersigned (“the Expert”) confirmed to Nominet that there was no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality.  Nominet duly appointed the Expert with effect from 14 July 2005.
3.3	The Expert requested specific clarification of one point (which is referred to at paragraphs 5.1 and 6.2 below) from the Complainant, which the Complainant responded to on 18 July 2005.  The Expert concluded that he did not require any response to that clarification from the Respondent, as the matters raised were peculiarly within the knowledge of the Complainant.

4.	Outstanding Formal/Procedural Issues
4.1	There are no outstanding formal/procedural issues.  

5.	The Facts
5.1	The Complainant is described in the Complaint as a “family of companies known as LVMH Fashion group”, of which two companies, Louis Vuitton Malletier SA and Marc Jacobs Trademarks LLC “are part”.  In the clarification provided by the Complainant on 18 July 2005 in response to the Expert’s query, it would appear from the documents subsequently provided by the Complainant that LVMH Fashion Group is a Societe Anonyme established in Paris, incorporated under the laws of France.  
5.2	The Complainant provides extensive evidence that the trade marks VUITTON and LOUIS VUITTON are owned by and registered extensively in the name of the company Louis Vuitton Malletier SA, and that the trademark MARC JACOBS is owned by and registered extensively in the name of Marc Jacobs Trademarks, LLC.  The Complainant also provides extensive supporting material to back up its assertion that Louis Vuitton is recognised as being “the leading luxury brand in the world”.  Similar material is provided in respect of Marc Jacobs, an internationally renowned fashion designer who is said to be “well known throughout the world for his designer clothes, shoes, handbags and even…his own perfume”.  
5.3	There appears to have been no prior relationship between the Respondent, Jonathan Stock, and the Complainant. 
5.4	The Complainant’s Trade Mark Agents became aware that the Respondent had registered the Domain Names, and wrote to the Respondent on 12 April 2005 stating that the registration of those domain names amounted to abusive registrations “in the face of our client’s obvious rights in these three trade marks”.  No response was received to that letter.
5.5	From the documents attached to the Complaint, it would appear that at the beginning of April 2005 the Domain Names were “parked” on the Sedo advertising portal using Sedo’s “domain name parking” pay-per-click service.  The Complainant has provided printouts from the sites for vuitton.co.uk and louisvuitton.co.uk from 1 and 4 April 2005 respectively, but not in respect of marcjacobs.co.uk.  Those printouts show that the pages apparently linked to websites selling replica designer items (although no further evidence is provided).  The Complainant says that the “websites” were also offered for sale on the Sedo advertising portal, but no further evidence is provided to support that assertion.
5.6	Since the Complaint the websites accessed through the Domain Names have been deactivated and the Domain Names no longer link to any active site.

6.	The Parties’ Contentions
The Complainant
6.1	As noted above, the Complainant has provided extensive evidence to verify the trademark rights for VUITTON, LOUIS VUITTON and MARC JACOBS, including Certificates of Registration of Trademarks, as well as copies of advertising and promotional material.
6.2	The Complaint itself does not say, however, how it is that the Complainant itself has Rights in the Domain Names, other than by virtue of Louis Vuitton Malletier SA and Marc Jacobs Trademarks LLC being “part of the family of companies known as LVMH Fashion group”.  The Complainant has, however, subsequently clarified (in its further response of 18 July 2005) that LVMH Fashion Group SA holds 99.98% of the shares of Louis Vuitton Malletier SA, that the Intellectual Property Department of LVMH Fashion Group is in charge of protecting the intellectual property rights of Louis Vuitton Malletier SA and Marc Jacobs Trademarks LLC, and that a representative of LVMH Fashion Group holds a power of attorney on behalf of Marc Jacobs Trademarks LLC to instigate action to protect its intellectual property rights.
6.3	The Complainant argues that the Domain Names in the hands of the Respondent are abusive on a number of grounds.   Those grounds are not specifically linked into the non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration set out at paragraph 3.a of the Dispute Resolution Service Policy (“the Policy”).
6.4	The Complainant’s arguments are, in summary, as follows: - 
(a)	The registrant (described, presumably erroneously, as “A.Morgan”) must have been aware that the names VUITTON, LOUIS VUITTON and MARC JACOBS denoted LVMH Fashion Group’s products and trademarks.
(b)	The registrant has engaged in a pattern of registering Domain Names which reflect the trademarks of third parties, referring to the Respondent having registered 1813 domain names ending with the suffix .co.uk (samples of which are attached to the Complaint).  The Complaint highlights a number of the .co.uk domain names (but annexes details of many more), namely playstationworld.co.uk, michelob.co.uk, proctorandgamble.co.uk, kurtkobain.co.uk, sonytv.co.uk, sonyclie.co.uk, gillette.co.uk and warnerbrothers.co.uk;
(c)	The Domain Names were registered “primarily to the stop the proprietary [sic] registering these domain names to reflect their trade mark rights”.
(d)	The registration of the Domain Names causes detriment to the Complainant by preventing it from establishing a legitimate website under those Domain Names affecting their established business activities in the United Kingdom.  
6.5	The Complainant seeks the transfer to itself of the Domain Names.

The Respondent
6.6.	The Respondent’s contentions are as follows: - 
(a)	He does not own certain the specific .co.uk domain names highlighted in the Complaint;
(b)	He does not own 1813 .co.uk domains;
(c)	He was unaware that the domains had been directed to the websites as stated by the Complainant, and has no influence over what Sedo directed the domains to;
(d)	The Domain Names will not point to any website now or in the future.

The Complainant’s Reply
6.7	The Reply points out that the particular .co.uk domain names highlighted in its Complaint (which the Respondent denied owning) had recently been transferred from his name to Lantec Corporation, which itself holds some 2405 .co.uk domain names, including domain names featuring many additional famous trade marks.  Many of those domain names were also previously owned by Jonathan Stock.

7.	Discussion and Findings
General
7.1	For the Complainant to succeed according to paragraph 2 of the Policy, the Complainant must prove to the Expert on the balance of probabilities both of the two elements set out in paragraph 2.a of the Policy, namely 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.

Complainant’s Rights
7.2	The definition of Rights under the Policy “includes, but is not limited to, rights enforceable under English Law”.  
7.3	Although there is extensive material annexed to the Complaint to demonstrate the extent of the trademark rights in the names VUITTON, LOUIS VUITTON, and MARC JACOBS, the Complainant does not fully explain its own relationship to the owners of those rights.  However, in the light of the further clarification in the submission of 18 July 2005 referred to at paragraph 6.2 above, the Expert is prepared to accept that the Complainant has established that it has Rights in names or marks which are identical to the Domain Names.  The Expert would observe, however, that, although in this case the Expert decided to offer the Complainant the opportunity for further clarification, clarification of this sort should not normally be required, particularly when the Complainant is professionally represented by trademark agents. 

Abusive Registration
7.4	Paragraph 1 of the Policy defines “Abusive Registration” as:-
“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”.
7.5	As referred to above, the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration in paragraph 3.a of the Policy.  As noted, the Complainant has not specifically addressed any of these factors in its Complaint.
7.6	As noted at paragraph 6.4 above the Complainant advances, essentially four arguments.  The Expert proposes to take each in turn.  
7.7	Firstly, the Complainant argues that the Respondent must have been aware that the names VUITTON, LOUIS VUITTON, and MARC JACOBS denoted the Complainant’s products and trade marks.  Although the Expert accepts that that may well have been the position (and does not seem to be disputed by the Respondent), the Expert does not regard that as, of itself, sufficient to constitute evidence of an Abusive Registration.  
7.8	Secondly, the Complainant refers to the wholesale registration by the Respondent of domain names with the suffix .co.uk.  Although it is not specifically referenced as such in the Complaint, this appears to be an assertion that “the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .co.uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern” (Paragraph 3.a.iii of the Policy).  The evidence against the Respondent in that respect seems overwhelming.  The .co.uk domain names specifically highlighted in the Complaint appear to have been transferred to Lantec Corporation by the Respondent, between his receipt of the Complaint, and his Response, but those transfers do not seem to the Expert in any way to refute the allegation that the Respondent is (and has been) engaged in a pattern of such registrations.  Further, the Respondent makes no attempt to say that he has any rights in those well known names or trade marks.  Nor does he deny that the Domain Names themselves are part of that pattern.
7.9	Furthermore, the Expert is aware that similar allegations have been made against this Respondent in at least two previous disputes under the DRS, DRS01798 (re: xenical.co.uk) and DRS02505 (re: royalandancient.co.uk).  In those cases the Respondent was said to have registered domain names corresponding to well known trade marks, in situations where he had no apparent rights to those names.  Although the Complainant in the xenical.co.uk complaint appears not to have raised the “pattern of registration” argument, it was specifically raised in the royalandancient.co.uk complaint.  The expert in the royalandancient.co.uk decision expressly found that the Complainant had made out the “pattern of registrations” allegation in relation to paragraph 3.a.iii in that case, and the Expert respectfully agrees with that conclusion in this case.
7.10	Thirdly, the Complaint refers to the registration of the Domain Names being “primarily to stop the proprietary registering these Domain Names to reflect their trademark rights”, which is effectively an allegation that “the Respondent has registered or otherwise acquired the Domain Names primarily…as a blocking registration against a name or mark in which the Complainant has Rights” (paragraph 3.a.i.B of the Policy).  However, other than asserting awareness of the trade marks in question, there is no evidence advanced by the Complainant to support this assertion, and the Expert finds that it is not made out on the balance of probabilities. 
7.11	Finally, the Complainant refers to the registration of the Domain Names causing detriment to the Complainant by preventing it from establishing a legitimate website using the Domain Names, affecting their established business activities in the United Kingdom, which appears to suggest that the Complainant feels that there are “circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant” (paragraph 3.a.i.C of the Policy).  This is a bare assertion unsupported by evidence and the Expert does not accept that it constitutes evidence of an Abusive Registration.
7.12	However, as previously noted, the “pattern of registration” allegation has been conclusively made out.  On that ground, the Expert concludes that the Domain Names, in the hands of the Respondent, are Abusive Registrations.

8.	Decision
8.1	The Expert finds that the Complainant has Rights in respect of names or marks which are identical to the Domain Names.  Further, the Expert finds that the Domain Names are Abusive Registrations in the hands of the Respondent, and orders the Domain Names to be transferred to the Complainant.  

Bob Elliott

Dated: 25 July 2005