WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lancel International SA v. cheng linjun / liujin

Case No. D2013-1186

1. The Parties

The Complainant is Lancel International SA of Bellevue-Geneva, Switzerland, represented by Winston & Strawn LLP, United States of America.

The Respondent is cheng linjun of Hangzhou, China / liujin of Wuhan, Hubei, China.

2. The Domain Names and Registrars

The disputed domain names <achatsaclancel.com>, <saclancelastar.com>, <sac-lancelbb.com>, <sac-lancel2013.com>, <sacslancel-boutique.com> and <soldessacslancel2013.com> are registered with Web Commerce Communications Limited dba WebNic.cc, and the disputed domain name <soldessaclancel.com> is registered with Cloud Group Limited (collectively the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 3, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 3, 2013, the Registrars transmitted by email to the Center their verifications disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2013 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 11, 2013.

The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on July 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2013.

The Center appointed Andrew F. Christie as the sole panelist in this matter on August 15, 2013. 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.

On August 30, 2013 the Panel issued Administrative Panel Procedural Order No. 1, requesting the Complainant to file a submission clarifying certain matters referred to in the Amended Complaint, and providing the Respondent with the opportunity to file a response to any submission filed by the Complainant pursuant to the Panel Order. The Complainant filed a submission pursuant to the Panel Order on September 4, 2013. The Respondent did not file a submission in response.

4. Factual Background

The Complainant, its affiliated companies and its predecessors-in-title have operated under the trademark LANCEL for more than 100 years. The trademark LANCEL has become a prestigious brand for luxury leather goods including, most notably, bags. The Complainant operates more than 60 boutiques in the Americas, Europe, the Middle East, Africa and Asia. All genuine LANCEL trademarked goods are distributed exclusively through a worldwide network of boutiques and authorized retailers. The Complainant operates an extensive website at “www.lancel.com”, featuring information about the history of the Complainant’s operations and its current products and activities. The website is available in French, English, Chinese, Japanese and Russian.

The Complainant owns a large number of trademark registrations worldwide for the trademark LANCEL, dating from at least as early as 1946.

The disputed domain names were all registered between December 23, 2012 and April 10, 2013. According to the information disclosed by the Registrars, the registrant of the disputed domain name <soldessaclancel.com> is “liujin”, and the registrant of the other disputed domain names is “cheng linjun”. All of the disputed domain names currently either: (i) resolve to websites offering for sale products that the Complainant believes are counterfeit and/or which directly compete with those of the Complainant; (ii) redirect to one of the websites to which some of the other disputed domain names resolve; or (iii) are used as spam blogs advertising links to third-party websites offering for sale products that the Complainant believes are counterfeit and/or which compete directly with those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Complaint may be brought in relation to the disputed domain name <soldessaclancel.com> in addition to the other disputed domain names, despite the fact that the registrant of record of the disputed domain name <soldessaclancel.com> (“liujin”) is different from registrant of record of the other disputed domain names, on the ground that the two registrants are in fact one and the same person. The Complainant contends that it can be concluded that the two registrants are the same person because one of the disputed domain names registered by “cheng linjun”, <sacslancel-boutique.com>, used to resolve to a website linking to the website resolving from the domain name registered by “liujin”, <soldessaclancel.com>. This shows that the two domain names are under common control, making it likely the registrants of them are the same person.

The Complainant contends that the disputed domain names are confusingly similar to the LANCEL trademark because: (i) they fully incorporate the LANCEL trademark, and merely add one or more of the generic French words “sac” (bag, in English), “solde(s)” (sale), “achat” (purchase) and/or the generic English elements “bb”, “a star”, “boutique” and “2013”; (ii) the addition of hyphens does not render the disputed domain names less confusing; and (iii) they reference a type of product sold by the Complainant in the Complainant’s business, namely the “sac” (bag).

The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain names because: (i) the Respondent, who always uses the email “[…]@126.com”, “[…]@qq.com” or “[…]@privacyprotect.org”, and has referred to itself as “cheng linjun” or “liujin” has never been commonly known by the LANCEL trademark nor any variations thereof, and has never used any trademark or service marks similar to the disputed domain names by which they may have come to be known, other than the infringing use noted herein; (ii) the Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected noncommercial or fair use of the disputed domain names; (iii) in the case of the disputed domain names <achatsaclancel.com>, <saclancelastar.com>, <soldessaclancel.com> and <sac-lancel2013.com>, the Respondent is using those disputed domain names to offer for sale counterfeit products and/or products that compete directly with those offered by the Complainant; (iv) the Respondent used the disputed domain name <sacslancel-boutique.com> to resolve to a website containing a pop-up prompt connecting to the website resolving from <soldessaclancel.com>, which is being used to offer for sale counterfeit products and/or products that compete directly with those offered by the Complainant; (v) the Respondent is using the disputed domain names <soldessacslancel2013.com> and <sac-lancelbb.com> as spam blogs to advertise links to third-party websites offering for sale counterfeit products and/or products that compete directly with those offered by the Complainant; and (vii) the Complainant has not granted the Respondent any license, permission or authorization by which the Respondent could own or use any domain name registrations which are confusingly similar to the LANCEL marks.

The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Respondent registered the disputed domain names with either actual or constructive knowledge of the Complainant’s rights in the LANCEL trademark by virtue of the Complainant’s prior registrations of that trademark with the trademark offices of China where the Respondent is located, and of the European Union, where the Respondent’s websites are targeted; (ii) the disputed domain names have been used to resolve to websites offering for sale products of the Complainant’s competitors and/or counterfeit “knock offs” of the Complainant’s own products, or to direct Internet users to competing goods and services of others; (iii) by using the disputed domain names to resolve to websites offering products in competition with those offered under the Complainant’s LANCEL trademark, the Respondent is disrupting the Complainant’s business; (iv) the Respondent has registered the disputed domain names to trade off the reputation and goodwill of the LANCEL trademark; and (v) if the Respondent had conducted even a preliminary trademark search it would have found the Complainant’s various trademark registrations for the LANCEL trademark, the websites associated with them, and numerous additional references in commerce, on the Internet and in publications evidencing the Complainant’s use of the LANCEL trademark in connection with the Complainant’s goods and services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Procedural Issue – Single Complaint Against Nominally Different Registrants

Paragraph 3(c) of the Rules provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” This rule appears to have the effect of prohibiting a complaint from relating to more than one domain name unless the holder of each of those domain names is the same person. As has been previously stated by the Panel (see Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345), the justification for paragraph 3(c) of the Rules appears to be to prevent unfairness to respondents and, possibly, to prevent procedural inefficiency. The bringing of a single complaint in relation to multiple domain names of which the registrants are not the same has the potential to be unfair to those registrants where there is no connection between them. The corollary, however, is that where the registrants are in fact the same person or they hold a common interest in the disputed domain name (see Kimberly-Clark, above, and Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281), bringing a single complaint against them is unlikely to be unfair to them. For that reason, UDRP panels have articulated principles governing the filing of a complaint against more than one respondent, and have concluded that a complaint may be filed against nominally different respondents where “the domain names or the websites to which they resolve are subject to common control” and “the consolidation would be fair and equitable to all parties” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.16).

In this case, the Complainant has established, on the balance of probabilities, either that the nominally different registrants of the disputed domain names are the same person or that the disputed domain names are under common control, and that it is not unfair to the parties to bring this single Complaint against all the disputed domain names. The evidence in the case record currently before the Panel shows that the disputed domain name <sacslancel-boutique.com> was used to resolve to a website containing a pop-up prompt connecting to the website resolving from the disputed domain name <soldessaclancel.com>. In the absence of any evidence to the contrary, the Panel is satisfied that the disputed domain names <soldessaclancel.com> and <sacslancel-boutique.com> are under common control. Furthermore, there is nothing in the case record currently before the Panel to indicate that allowing the Complaint to proceed in relation to the disputed domain name <soldessaclancel.com> in addition to the other disputed domain names would be unfair or inequitable to the parties.

For all these reasons, the Panel finds that the Complaint has been properly brought in relation to all of the disputed domain names.

7. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain names incorporate the whole of the Complainant’s registered trademark LANCEL, with the addition of various combinations of descriptive French words “solde(s)” (sale(s), in English), “achat” (purchase), “sac” (bag), and/or characters or words “bb”, “a star”, “boutique” and “2013” that reference, directly or indirectly, the Complainant’s products and/or activities. The dominant element of each of the disputed domain names is the Complainant’s trademark LANCEL. The Panel finds that the addition of the descriptive words and/or characters does not lessen the inevitable confusion of the disputed domain names with the Complainant’s trademark. This is especially so given that most of the additional words relate, in some form or another, to the Complainant’s particular business of selling handbags. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its LANCEL trademark. The evidence provided by the Complainant shows that the disputed domain names have been used to resolve, directly or indirectly, to websites offering goods that purport to be the Complainant’s goods but most likely are counterfeits of the Complainant’s goods and/or that compete directly with those offered by the Complainant. The Respondent has provided no evidence establishing that it has trademark or other rights to the string “lancel”, which is the dominant and distinctive component of the disputed domain names. According to the present record, therefore, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

The disputed domain names were registered many decades after the Complainant first registered its LANCEL trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its LANCEL trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain names were registered, the Respondent most likely knew of the Complainant’s LANCEL trademark, and knew that it had no rights or legitimate interests in the disputed domain names. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used those disputed domain names to attract, or to attempt to attract, for commercial gain, Internet users to various websites by creating confusion with the Complainant’s trademark as to the affiliation of those websites. For all these reasons, the Panel is satisfied that each of the disputed domain names has been registered and is being used in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <achatsaclancel.com>, <saclancelastar.com>, <sac-lancelbb.com>, <sac-lancel2013.com>, <sacslancel-boutique.com>, <soldessaclancel.com> and <soldessacslancel2013.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: September 12, 2013