WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancel International SA, Lancel Sogedi v. Storynike
Case No. D2011-0199
1. The Parties
The Complainant is Lancel International SA of Villars-sur-Glane, Switzerland, and Lancel Sogedi of Paris, France, represented by SCP Deprez, Guignot et Associés, France.
The Respondent is Storynike of Ajaxio, France.
2. The Domain Name and Registrar
The disputed domain name <lancelstore.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On the same day the Complainant filed an amendment to the Complaint. On February 2, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On February 2, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing the identity of the registrant and confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2011.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on March 10, 2011. 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.
In May 2010, the Complainants have requested from the Civil court in Paris to authorize a bailiff to deliver injunctions to French Internet Service Provider to lock the access to the website “www.lancelstore.com” from the French territory. This proceeding could not stop the damage suffered by the Complainants.
4. Factual Background
The LANCEL brand was created in 1876 by Angèle and Alphonse Lancel.
In 1972, Lancel created its legendary bucket bag which has been sold to million of women all over the world and followed by other successful models as in 1987 the Elsa bag created by Elsa Lancel.
For more than 100 years LANCEL has been considered as one of the most prestigious brands for luxury leather goods and notably bags.
The Complainants are, since 1997, part of the Richemont group which is one of the word’s leading luxury goods groups. Richemont owns several of the world’s leading companies in the field of luxury goods, with particular emphasis on jewellery, luxury watches and writing instruments and leather goods.
The Complainants own and run the website “www.lancel.com” (in French, English, Chinese, Japanese and Russian languages) to promote their brands and activities and present their products.
The Complaint is based on the following trademarks owned by Lancel Sogedi: French Trademark LANCEL No. 1359817, French Trademark LANCEL No. 3154992, Chinese Trademark registration LANCEL No. 646749, Indian registration LANCEL No. 934334, Indian registration LANCEL No. 934339.
The Complaint is also based on the following trademarks owned by Lancel International SA: International Registration LANCEL No. 446911, International Registration LANCEL No. 386209, International Registration LANCEL No. 323189, International Registration LANCEL No. 601249, United States Registration LANCEL No. 1394869, United States Registration LANCEL No. 1018836, Turkish Registration LANCEL No.142138, and Chinese Trademark Registration LANCEL No. 1945738.
Lancel products are sold throughout the world, notably in China where 16 stores offer Lancel products.
The disputed domain name <lancelstore.com> has been registered on December 21, 2009 and is being used for a website offering bags.
5. Parties’ Contentions
A.1. The domain name is confusingly similar to several trademarks in which Complainants have rights
The disputed domain name <lancelstore.com> reproduces the Complainants’ trademarks LANCEL and merely adds thereto the word “store” which is generic as it refers to the services provided under this domain name: an online store proposing Lancel and to a lesser extent other luxury brands products, yet only counterfeit items.
As stated in many UDRP cases, the addition of a generic term to a trademark does not necessarily distinguish the trademark from the domain name.
The generic word may rather add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627 holding that “[t]he addition of the generic term “online”…is not a distinguishing feature. In fact, in this case it increases the likelihood of confusion because it is an apt term for Complainant’s online business”.
In the present case, the word “store” refers directly to the commercial activity of the Complainants and could be understood by the public as an official trademark. Therefore the public could believe that the disputed domain name <lancelstore.com> is operated by the Complainants and that it offers the Complainants’ genuine products, which increases the likelihood of confusion.
A.2. The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent is not an authorized agent or licensee of the Complainants and has no other permission from the Complainants to apply for any domain name incorporating the trademark LANCEL.
Only the owner of the trademarks LANCEL and/or certified resellers may register and use a domain name comprising the brand LANCEL.
A.3. The domain name was both registered and used in bad faith
The Respondent is using the disputed domain name for a website that is selling counterfeit products to the detriment of the Complainants as well as of other prestigious trademarks as Louis Vuitton, Louboutin, Chanel, Dior, and Gucci.
According to the bailiff’s report dated January 29, 2010 and to recent printouts of the relevant website, infringing products are sold for a price of 144 euros whereas such original products are sold in a range of price from 500 euros to 1,500 euros.
Moreover, the website “www.lancel.com” operated by the Complainants does not offer any product for online sales.
Only traditional certified resellers are allowed to sell the goods marketed under the LANCEL trademarks.
The website “www.lancelstore.com” seems to be owned by a Chinese entity according to the proof gathered in the bailiff’s report: it has been stated that goods were sent from Beijing whereas none of the product of Lancel are manufactured in China. Of course, the bag sent was an infringing product of poor quality.
The term “Lancel” is used as a domain name for referencing purposes on search engines and for creating an appearance of legality.
The Complainants find support in three WIPO decisions involving the domain names <jimmychooeshop.com>, <jimmychoooutlet.org>, <jimmychooshop.net> in which the panels decided that the domain names, composed with the trademark JIMMY CHOO with the addition of a generic term, have been registered and used in bad faith, for commercial gain (J. Choo Ltd of London v. Huang Xiao, WIPO Case No. D2010-1829, J. Choo Ltd of London v. Zhenqun Mo AKA Mozhenqun, WIPO Case No. D2010-1937, J. Choo Ltd of London v. Paris of Paris, WIPO Case No. D2010-2086).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants are the registered owners of trademarks for the word mark LANCEL, notably in connection with bags and leather goods.
The disputed domain name consists of the Complainants’ trademark LANCEL in its entirety, with the addition of the suffix “store”.
It is widely accepted that the addition of a generic or descriptive term to a mark will not alter the fact that the disputed domain name is confusingly similar to the mark in question (see e.g., Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733 and Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei, WIPO Case No. D2008-0101).
It is obvious that the suffix “store” has been chosen to mean that the website operated at the address “www.lancelstore.com” is the online store on which the Complainants offer their products marketed under the LANCEL trademarks.
Therefore there is a likelihood of confusion with the Complainants’ trademarks LANCEL.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, “[a]ny 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 [the respondent’s] rights or legitimate interests to the domain names for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain names, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate non commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response in this proceeding and has not provided any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
The Respondent does not make a bona fide offering of goods and services, and the Complainants provide evidence that the disputed domain name directs to a website offering bags and other items for sale and using the brand LANCEL without any authorization. It is asserted that these items are counterfeit.
The Respondent has no connection or affiliation with the Complainants, and the latter assert that they have not consented to the Respondent’s use of the trademark in the disputed domain name.
The Respondent operated under a privacy service in order to shield its identity. In this case, such a behavior has to be considered as another proof of the absence of any right or legitimate interest of the Respondent in the disputed domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainants submit documents demonstrating that the LANCEL trademark enjoys worldwide reputation for bags.
In view of the reputation of the trademark LANCEL, the Panel is of the opinion that the Respondent must have been aware that the disputed domain name reproduces the protected trademark of the Complainants.
The website “www.lancelstore.com” offers for sale bags of various well-known brands at reduced prices. As previously mentioned the Complainant has also asserted that these items are counterfeit. In this Panel’s view this clearly harms the reputation of the Complainants’ trademarks LANCEL.
The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for the Complainants’ website and wanting to buy Lancel products online. This constitutes bad faith registration.
The Respondent appears to use the disputed domain name to intentionally attempt to divert Internet traffic to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its websites. This constitutes bad faith registration and use of the disputed domain name in application of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that the Complainants have also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
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, <lancelstore.com> be transferred to one of the Complainants.
Dated: March 24, 2011