WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancôme Parfums et Beauté & Cie v. SL, Blancel Web
Case No. D2001-0028
1. The Parties
The Complainant is Lancôme Parfums et Beauté & Cie located at 29 rue de Faubourg Saint-Honoré, 75008 Paris, France and it is represented by Sophie de Malherbe of L’Oréal, 62 rue d’Alsace, 92 583 Clichy cedex, France.
The Respondent is SL, Blancel Web of Velazquez, 138 Madrid, Madrid 28006, Spain.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is "uselancome.com"
The Registrar of the domain name is Network solutions Inc., of 505 Huntmar Park drive. Herndon, Virginia 20170, USA ("NSI")
3. Procedural History
On January 5, 2001 a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). This was acknowledged by the Center on January 11, 2001 and a hard copy of the Complaint was received by the Center via courier on January 16, 2001.
The Complainant stated that on January 5, 2001 copies of the Complaint were sent to the Respondent by postal service, postage pre-paid and receipt requested to NSI.
Upon receipt of the email copy of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on January 11, 2001 by email.
The Center sent a Request for Registrar Verification to NSI on January 11, 2001 by email. NSI responded to the Center’s request by email on January 12, 2001 verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the domain name in dispute, (3) that the Respondent SL, BLANCEL WEB was the current registrant of the domain name in dispute, (4) that the Respondent’s contact details were correct, (5) that NSI’s 5.0 Service agreement applied in relation to the domain name "uselancome.com", and (6) that the current status of the domain name was "Active".
The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, e-mail and fax, and to the Complainant on January 16, 2001.
The Center sent a Notification of Respondent’s Default to the Respondent on February 9, 2001.
The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date of March 6, 2001 to the Respondent and the Complainant on February 20, 2001 via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel, the Respondent and the Complainant on February 20, 2001. The Panel received hard copies of this material on February 22, 2001.
All other procedural requirements appear to have been satisfied.
4. Factual Background
Activities of the Complainant
The following information was asserted as fact by the Complainant and, in the absence of any communication from the Respondent, remains uncontested.
The Complainant is one of the world’s largest cosmetic companies and its name and trademark LANCOME have been used since 1935 in respect of cosmetics and perfumes.
The Complainant conducts its business exclusively in connection with the name and trademark LANCOME, which has been registered in over 150 countries, and it makes substantial investments every year in research, development and advertising in order to promote the LANCOME name and trademark throughout the world.
LANCOME is a coined or invented word and does not have any meaning other than as a trademark.
The trademark is also used as part of the Complainant’s domain name "lancome.com"
The Complainants’ trademarks
The Complainant claims to own registrations of the trademark LANCOME in over 150 countries, but it relies on three registrations in particular. One in the USA dating from 1946, one in France dating from 1935, and an international Registration dating from 1951 which is extended to 20 countries of the Madrid Agreement.
Activities of the Respondent
Nothing is known about the Respondent, or who might be the individual(s) behind the anonymous name SL, BLANCEL WEB.
5. The Parties’ Contentions
The Complainant contends that the domain name "uselancome.com" is confusingly similar to the trademark LANCOME and that this is not affected by the addition of the word ‘use’ nor the suffix ‘.com’. The word ‘use’ is purely descriptive and therefore the most important element of the domain name is LANCOME, which is identical to the Complainant’s trademark and is wholly contained within it. The Complainant contends that there is a high risk of confusion, as the consumer may think that this domain directly refers to the Complainant’s products and that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the contested domain name. The Respondent has no website or online presence, and the domain name in issue was (in January 2001) still under construction. The disputed domain name is not the corporate name of the Respondent; there is no relationship between the Respondent and the Complainant, and the Respondent is neither a licensee nor has he otherwise obtained permission to use Complainant’s trademark.
Lastly, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant’s adoption and use of the LANCOME trademark preceded by more than forty years the Respondent’s registration of the disputed domain name. Due to the fame and the goodwill associated with the LANCOME mark, the Respondent could not have been ignorant of the rights of the Complainant in this trademark when seeking to obtain the disputed domain name. Moreover, the Complainant provides evidence that the Respondent has registered 50 other domain names, at least 2 of which incorporate terms, namely Shiseido ("missshiseido.com") and Chanel ("usechanel.com") which are confusingly similar to famous trademarks. The Complainant contends therefore that the Respondent collects domain names left unoccupied by companies that are legitimately entitled to them, maybe with a view either to selling them or to attracting Internet users to websites which have no connection with the trademark’s original owner.
The Respondent did not file any response.
6. Discussion and Findings
The Respondent has not submitted a response. It is therefore in default, in accordance with the following paragraph of the Notification of Complaint –
"6. Default. If your Response is not sent by the above date (i.e. February 4, 2000), you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Even though there has been no response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint."
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There is no doubt that the Complainant has long-standing and extensive rights in the trademark, and considerable goodwill in the name, LANCOME. It is equally clear that LANCOME is not identical to the disputed domain name "uselancome.com", but is it confusingly similar?
There have been other Decisions in which a complaint was upheld when the Respondent merely added a descriptive term to an otherwise distinctive or well-known trademark. See, for example, Cases D2000-0265 Sporoptic Pouilloux S A v, William H Wilson ("buyvuartsunglasses.com"), D2000-0275 Caterpillar Inc. v. Roam the Planet Ltd (catmachines.com), and Guerlain S A v. HI Investments (buyguerlain.com). In the present case the addition of the prefix ‘use’ gives the impression of being an instruction to the reader to utilize the Complainant’s products. If anything, this enhances the likelihood of confusion with the distinctive and well-known trademark of the Complainant, and the domain name is little more than a slavish copy of it.
The Panel finds that the domain name is confusingly similar to the trademark and that, consequently, paragraph 4(a)(I) is proved.
4(a)(ii) you have no rights or legitimate interests in respect of the domain name.
As the Complainant has alleged that the Respondent has no rights or legitimate interests in respect of the domain names at issue, the burden of proof is shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain name. In this context it has been held that ‘concrete evidence’ is more than mere personal assertions (see Do The Hustle, LLC v. Tropic Web, Case D2000-0624).
By its default, the Respondent has done nothing to contest the allegation of the Complainant that he lacks any rights or legitimate interests in the disputed domain name. The Panel can only assume therefore that the Respondent’s main motive in registering the disputed domain name was his actual or likely knowledge of the famous or well-known trademark LANCOME.
Paragraph 4(c) of the Policy sets out several ways in which a Respondent can establish rights or legitimate interests in the domain name(s) at issue. The Respondent can, for example, show that before he received any notice of a dispute, he had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. However the disputed domain name is inactive.
Under paragraph 10(a) of the Rules, the Panel is allowed inter alia to visit the Internet in order to obtain additional light in this default proceeding. The Panel did just that on February 26, 2001, and found the disputed domain name to be still "Under Construction".
The Panel concludes that the Respondent has made no "demonstrable preparations" beyond the mere registration of the domain names at issue. This is insufficient (see The Hamlet Group, Inc. v. James Lansford, Case D2000-0073).
The Respondent has produced no evidence that he has been commonly known as ‘Lancôme’, and he has made no legitimate noncommercial or fair use of the disputed domain name since he first registered it.
No other circumstance has been evidenced by the Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy. Therefore the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain name and that paragraph 4(a)(ii) has been proved.
4(a)(iii) the domain name has been registered and is being used in bad faith.
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain names in bad faith. The Panel must perforce draw such inferences as it can from this inaction, and from the Complainant’s uncontested allegations.
With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Panel will consider each of them in turn.
4(b)(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The list of 50 domain names which have been registered by the Respondent, and which is annexed to the complaint, contains at least 2 trademarks belonging to third parties as well as several names which the respondent quite clearly has no right to, such as –
This is very strong evidence that the respondent is a cybersquatter, willing to sell any of these names to the highest bidder, although without any further evidence this cannot be conclusively proved. The Panel has not inspected the websites for any of the above list of names, but it did visit the two ‘trademark’ sites "misssheido.com" and "usechanel.com" during the course of this complaint and found them both to be ‘Under Construction’.
The Complainant made no approach to the Respondent prior to the complaint having been filed, and so it cannot be said that any offer to sell was made by the Respondent.
4(b)(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
Again one could infer that it was the intention of the Respondent to prevent the Complainant from using its name, and in this case the evidence is even stronger for, in the list of domain names registered by the Respondent appears "misssheido.com" and "usechanel.com". It would appear therefore that the Respondent has engaged in a pattern of registering as domain names, trademarks or names with which he has connection.
4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
Since nothing is known of the Respondent’s business, there is nothing to
suggest that he is in competition with the Complainant.
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of you website or location or of a product or service on your website or location."
Since nothing is known of the Respondent’s business, there is nothing to
suggest that he has tried to create any confusion with the Complainant or his
Taking all of the above four points into consideration, the Panel concludes
that the disputed domain name was registered in bad faith.
However, it should be noted that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. One of the earliest Panel decisions, Telstra Corporation Limited v. Nuclear Marshmallows, Case D2000-0003, established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." The question that must always be asked in these circumstances is: what are those ‘certain circumstances’?
Telstra is perhaps the most cited of all UDRP decisions to be handed down to date, it and its rationale have been followed by numerous subsequent panel decisions. By now the rule is well established that in performing the Telstra analysis a Panel must "give close attention to all the circumstances of the Respondent's behaviour" (see paragraph 7.11). It is important to note that the focus is to be placed on the Respondent's behavior, rather than on his words.
In the present case, given the Respondent’s actions in registering 50 other domain names containing trademarks or generic terms, and inaction in not filing any response, a paraphrase of paragraph 6.3 of the Telstra decision would seem to fit the circumstances: "[T]he trademark [LANCOME] is one of the best known trademarks in [Europe], and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact. . . .[B]y virtue of the widespread use and reputation of the trademark [LANCOME], members of the public in [Europe] would believe that the entity owning the domain name ["uselancome.com"] was the Complainant or in some way associated with the Complainant. . . . [A]ny realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of [European] consumer protection legislation, and trademark infringements."
It would even seem that in this case, as in Telstra, the Respondent has made an attempt to hide his identity.
These proceedings were binding on the Respondent. Nevertheless he failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that he had been duly notified by the Center. In particular, Respondent has not denied that it is using the domain names in bad faith. Furthermore, the inactivity of the website under the disputed domain name could cause the public to believe, inter alia, that Complainants do not have a website.
The Panel therefore concludes that the Respondent has registered and used the domain name in bad faith.
For these reasons, the Panel decides that the domain name registered by the Respondent is similar to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name was registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name "uselancome.com" be transferred to the Complainant.
David H Tatham
Dated: 27 February, 2001