WIPO Arbitration and Mediation Center: Lacoste v. LaCoste

A panel at the World Intellectual Property Organization (“WIPO”) decided recently the domain name dispute Lacoste Alligator S.A. v. LaCoste Healing Jewelry, WIPO Case No. D2009-0700. The Complainant is Lacoste Alligator, S.A., a clothing company famous for manufacturing tennis shirts, owner of the word mark LACOSTE (USPTO No. 1947111). Respondent is LaCoste Healing Jewelry, owned by Audrey LaCoste. The disputed domain name is <lacostejewelers.com>, registered by the Respondent on September, 2007.

The panel discussed the following three-prong test:

1. Domain name is identical of confusingly similar. The panel considered Complainant’s argument that Lacoste Alligator S.A. has a small line of watches, which could be considered “jewelry” and noted that in cases of abusive registration, it is common to see that a trademark is taken and a synergistic word is attached to it to create a confusingly similar name. However, the panel declined to make any findings under this element.
2. Respondent has no rights or legitimate interests. The panel concluded that: “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.”
3. Domain was registered and used in bad faith. The panel found no 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.”

In sum, because Complainant failed to prove that (a) the Respondent has no rights or legitimate interests in the disputed domain name and (b) the domain name was registered and used in bad faith, the paned declined to order transfer of the domain name. It is worth noting that Audrey LaCoste did not reply to this Complaint and is not required to do so.

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