Complainant is Lancôme Parfums et Beaute & Compagnie of Paris, France, represented by Dreyfus & associés, France.
Respondents are D Nigam, Privacy Protection Services of New Delhi, India; and Pluto Domains Services Private Limited of Mumbai, India (“Respondent”).
The disputed domain name <lancome-hk.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2009. On June 4, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain names. On June 10, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 15, 2009. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 7, 2009.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 14, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a subsidiary of L'Oréal, specializing in the field of cosmetics and beauty products. LANCÔME is a trademark of L'Oréal used in connection with cosmetics products for men and women, including skincare products, makeup products, fragrances and sun and body care products. Complainant has stores in Europe, North America and Asia and its products are marketed in over 140 countries. Complainant's LANCÔME products are also distributed in India, where Respondent is located.
Complainant is the owner of numerous LANCÔME trademarks worldwide, including:
International Trademark Registration No. 157412, registered November 12, 1951;
International Trademark Registration No. 164395, registered October 6, 1952;
International Trademark Registration No. 514803, registered July 21, 1987;
Indian Trademark Registration No. 128,986, last renewed on April 24, 2004;
Indian Trademark Registration No. A 489,396, last renewed on April 18, 2004.
Complainant, its parent company and its affiliates also own numerous domain names incorporating the trademark LANCÔME, including:
<lancome.com> registered on July 8, 1997;
<lancome.ca> registered on August 10, 2001;
<lancome.cn> registered on April 15, 2003;
<lancome.co.uk> registered on October 18, 1996;
<lancome-usa.com> registered on October 5, 1995.
The disputed domain name directs Internet users to a website containing commercial links in the field of cosmetics.
On October 3, 2008, Complainant sent a cease-and-desist letter to the registrant's privacy service via registered letter. On October 10, 2008, Complainant sent the letter again via email. After two reminders on October 17, 2008 and October 24, 2008, Complainant received a response from a company called Pluto Domains Services Private Limited (“Pluto Domains Services”), indicating it would be prepared to hand over the domain in exchange for the payment of its out of pocket expenses in the amount of USD 1408.50. Pluto Domains Services also asserted that if it did not receive the requested amount, it would approach the Indian Courts to stall the transfer of the disputed domain name. Complainant requested invoices evidencing Pluto Domains Services' expenses, but Pluto Domains Services refused to provide them and again threatened to stall the transfer of the domain name by proceeding through the Indian courts.
In addition, the record indicates that Pluto Domains Services has used a number of privacy services to appear as the registrant on the WhoIs database.
Complainant contends that the disputed domain name incorporates Complainant's mark in its entirety, is identical to and/or confusingly similar to Complainant's trademarks, that Respondent has no rights or legitimate interests in the domain name and that the domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant's contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of 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”.
Complainant has demonstrated that it owns rights in the trademark LANCÔME, including in India, where Respondent is located. The disputed domain name incorporates Complainant's trademark in its entirety. The addition of the two letters “hk” does not avoid a finding of confusing similarity, as these two letters may be perceived as the abbreviation of a geographic designation, such as Hong Kong, SAR of China.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademarks.
It appears from the record that Respondent is not a franchisee, affiliated business or licensee of Complainant. Respondent is not an authorized agent of Complainant and Complainant has not authorized Respondent to register the disputed domain name or to otherwise use Complainant's marks.
Respondent is not and has not been commonly known by the disputed domain name. Respondent is operating a website at the disputed domain name that simply links to websites selling Complainant's products and to other companies selling cosmetics in direct competition with Complainant. In this Panel's view, Respondent is clearly attempting to confuse Internet users by use of Complainant's widely-known trademark in the domain name to lure Internet users to the website, and thereby benefit commercially from “click-through” advertising fees. Such use does not constitute a bona fide, legitimate use of the domain name.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location of a product or service on the respondent's website or location.
In this Panel's view, Respondent was aware of Complainant's trademark rights at the time of registering the disputed domain name. This is supported by the fact that Respondent is offering links on the website at the disputed domain name to websites offering products directly competitive with Complainant's products.
The submitted evidence demonstrates that Respondent is deliberately trading off the goodwill associated with Complainant's marks and Internet traffic intended for Complainant's website. Such use evidences Respondent's bad faith.
Moreover, Respondent's threats to stall any transfer of the domain name by filing a lawsuit in the Indian Court is consistent with a pattern of behavior on the part of Respondent to unlawfully register domains incorporating well-known trademarks, and then use the Indian court system to delay the transfer ordered by the UDRP panel. These tactics further evidence the bad faith of Respondent. Numerous panels have found Respondent to have acted in bad faith by registering and using domain names incorporating well-known trademarks.
The Panel finds that Respondent has registered and used the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lancome-hk.com> be transferred to Complainant.1
Lynda J. Zadra-Symes
Dated: July 25, 2009
1 See Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080; and also, Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1675.
The Panel also notes the concerned Registrar's recent de-accreditation by ICANN, and in that light suggests that the present transfer decision be copied on notification both to the concerned Registrar and to ICANN so as to avoid any potential uncertainty as to applicable implementation obligations under the paragraph 4(k) of the Policy.