WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lancôme Parfums Et Beauté Et Compagnie v. You Ge, Jean Buding, Kang Tianhuan, Zongkaili, Leiheng

Case No. D2013-1559

1. The Parties

The Complainant is Lancôme Parfums Et Beauté Et Compagnie of Paris, France, represented by Dreyfus & associés, France.

The Respondents are You Ge of Nanchong, Sichuan, China; Jean Buding of France; Kang Tianhuan of Shanghai, China; Zongkaili of China; Leiheng of Shanghai, China.

2. The Domain Names and Registrars

The disputed domain names <lamkou.com>, <lancomesmagic.com>, <lankouqingzhijiaosu.com>, <lankou.tv> and <315lancome.com> are registered with GoDaddy.com, LLC, Hangzhou AiMing Network Co., LTD, Todaynic.com, Inc. and Shanghai Yovole Networks, Inc. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 6, 9 and 11, 2013, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrant and providing the contact details. On September 17, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On September 18, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.

The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 16, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 6, 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.

4. Procedural Ruling

The Center put before the Panel for consideration at its discretion under the Rules the Complainant's unsolicited Supplemental Filings. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, summarized the position regarding supplemental filings in proceedings under the Policy in the following terms:

“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.

The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules… The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”

In the present case, the Complainant's untimely unsolicited Supplemental Filing essentially consists of a request to add an additional domain name to be considered by the Panel. The Complainant should have known that the addition of domain names to the Complaint should have been done by way of amending the Complaint and in a timely manner after which the proper procedures were to be followed by the Center.

The Panel is not satisfied that exceptional circumstances justifying the admission of the Complainant’s untimely and unsolicited Supplemental Filing have been made. Furthermore, if the Complainant’s Supplemental Filing were admitted, the Panel would require the Respondent an opportunity to comment on them. This would delay the conclusion of the procedure without any apparent benefit and contrary to the spirit of the Policy. The Panel has therefore decided not to admit the Complainant’s Supplemental Filing. The Complainant may file an additional Complaint with respect to the additional domain name and would not be prejudiced from the denial to admit the Supplemental Filing.

5. Factual Background

The Complainant, Lancôme Parfums Et Beauté Et Compagnie is a subsidiary of L’Oreal, one of the international leaders and one of the world’s largest group in the cosmetic industry.

The Complainant was established in 1935 and today, LANCÔME is well known all over the world. It is the world’s number one luxury beauty brand on the selective skincare and makeup market. It is viewed as a symbol of French refinement and its skincare, make-up and fragrance products are successful all over the world.

The Complainant’s brand LANCÔME is present in China since several years and it is available in numerous Chinese cities. It experiences a big success among Chinese customers.

The Complainant is the owner of numerous trademark registrations for the LANCÔME marks around the world. For example: International Trademark Registration LANCÔME No. 164395, registered on October 6, 1952; Chinese Trademark Registration LANCÔME No. 76096 of October 7, 1987; Chinese Trademark Registration LANCÔME No. 775926 of January 14, 1995; French Trademark Registration LANCÔME No. 1557084 of October 25, 1989.

The Complainant is also the owner of the Chinese Trademark Registration 蘭蔻 in Chinese characters No. 1080518 of August 21, 1997. “Lankou” corresponds to the transliteration of the trademark 蘭蔻.

The Complainant and its affiliates own many domain names including the trademarks LANCÔME such as: <lancome.com>, <lancome.com.cn> and <lankou.cn>.

The disputed domain name <315lancome.com> was registered on July 28, 2013.

The disputed domain name <lancomesmagic.com> was registered on July 23, 2013.

The disputed domain <lankouqingzhijiaosu.com> was registered on July 12, 2011.

The disputed domain name <lamkou.com> was registered on March 14, 2012.

The disputed domain name <lankou.tv> was registered on July 6, 2011.

At the time of this decision, all the disputed domain names except <lamkou.com> direct to a website displaying an imitation of the Complainant’s trademark LANCÔME.

The disputed domain name <lamkou.com> resolves to a non-active webpage, however according to the Complainant, it used to resolve to the same website.

6. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademarks LANCÔME and蘭蔻 (“lankou”).

The Complainant further argues that the LANCÔME mark is very famous and well known around the world and is identified with the Complainant.

The Complainant further contends that the additional terms, included in the disputed domain names, are merely generic words in English or Chinese that do not avoid a finding of confusing similarity.

The Complainant further argues it has not licensed or otherwise permitted the Respondents to use its LANCÔME and/or蘭蔻 “lankou” trademarks and is not affiliated or otherwise connected to the Respondents.

The Complainant further argues that the Respondents have no rights or legitimate interests in the disputed domain names.

The Complainant argues that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondents use the disputed domain names to direct Internet users to almost identical websites selling diet products and displaying a logo “LANCOMES + rose” which is an imitation of the Complainant’s trademark.

The Complainant further argues that the Respondents are clearly seeking to trade on the Complainant’s goodwill and reputation.

The Complainant further argues that it is inconceivable that the Respondents were not aware of the Complainant and the Complainant’s well-known trademarks when registering the disputed domain names.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

7. Discussion and Findings

A. Procedural Issue – Consolidation of Multiple Domain Names

Paragraph 10(e) of the Rules provides that:

“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.

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”.

The Panel cites the following with approval:

“there are two questions that must be addressed in this case. The first is whether the fact that at the time the proceedings were commenced the WhoIs register recorded the same privacy service as the registrant of the Domain Names means that the case can be treated as proceeding against a single Respondent. The second is whether, regardless of the details recorded on the register, the domain names are de facto controlled by the same entity. It is convenient to deal with the issue of common control first.” (RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894).

While the Panel notes that in this case a privacy service was not the registrant of the disputed domain names, the WhoIs register records show that the disputed domain names are registered to different entities, the Panel must decide whether to consolidate the multiple disputed domain names.

Previous UDRP panels have consolidated cases relying on a variety of factors as being indicative of common control or ownership. Among these are the facts that the disputed domain names resolve to similar websites, that the same registrars are used, and that there are close similarities between the domain names. (See Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo., WIPO Case No. D2012-2212).

In the current case, having regard to the evidence submitted by the Complainant, which was not contradicted by any of the Respondents, it appears to the Panel that:

1. All the disputed domain names point and have pointed to very similar websites, containing the same look, similar text, same products and same advertisements. The disputed domain name <lamkou.com> points to no active website. However, it was previously pointing to a similar website as the others.

2. All the disputed domain names have resolved to a website in Chinese including a “LANCOMES + rose” logo almost identical to the Complainant’s logo and the picture of the actress Penelope Cruz and other common elements.

3. All the disputed domain names have close similarities, all reproduce the Complainant’s brand LANCÔME. Three of the five disputed domain names consist of an imitation of the transliteration of the Complainant’s trademark 蘭蔻 and two include the trademark LANCÔME.

4. None of the Respondents responded to the Complaint and by virtue of paragraph 14(b) of the Rules, the Panel is entitled to draw such inference as it deems appropriate from the Respondents’ failure to respond. (See America Online Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918).

Under these circumstances, the Panel infers that on the balance of probabilities, the disputed domain names are all controlled or under the common ownership of the same person or entity and that as a result it is equitable and fair to the Parties to render the present decision against all the Respondents in this case (hereinafter referred to as “the Respondent”).

B. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant requested that the language of the proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceedings, the Panel takes the following into consideration:

a) The disputed domain names <lankouqingzhijiaosu.com> and <lamkou.com> are registered under Godaddy. Godaddy’s registration agreement is in English. The website of the disputed domain name <lankou.tv> provides an access to a registration agreement in English.

b) The disputed domain names <315lancome.com> and <lancomesmagic.com> are primarily in the English language and include words in English.

c) The disputed domain names are comprised of Latin characters.

d) The Respondent did not object to the language of the proceedings being English.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

C. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the LANCÔME mark around the world. For example: International Trademark Registration LANCÔME No.164395, registered on October 6, 1952; Chinese Trademark Registration LANCÔME No. 76096 of October 7, 1987; Chinese Trademark Registration LANCÔME No. 775926 of January 14, 1995; French Trademark Registration LANCÔME No. 1557084 of October 25, 1989.

The Complainant is also the owner of Chinese Trademark Registration 蘭蔻 in Chinese characters No. 1080518 of August 21, 1997.

The Complainant and its affiliates own many domain names including the trademarks LANCÔME such as: <lancome.com>, <lancome.com.cn> and <lankou.cn>.

- The disputed domain name <315lancome.com> differs from the registered trademark LANCÔME by the additional numbers “315”, the lack of the circumflex and the additional generic Top-Level Domain (“gTLD”) “.com”.

The absence of circumflex accent on the letter “o” in the disputed domain name <315lancome.com> does not have any impact on the likelihood of confusion (see L'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524).

The additional 3 figures suffix (“315”) is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks (bwin Services AG v. Brainman Wiaslova / Protected Domain Services, WIPO Case No. D2011-0886).

- The disputed domain name <lancomesmagic.com> differs from the registered trademark LANCÔME by the additional letter “s”, the additional word “magic”, the lack of the circumflex and the additional gTLD “.com”.

The addition of the letter “s” to LANCÔME in the disputed domain name is insufficient to negate the similarities which exist between the disputed domain name and the trademarks of the Complainant.

Additionally, as held by previous UDRP Panels, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. (See Hungry Machine, Inc. v. Zhao Fuzhi, WIPO Case No. D2011-1201; and Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Kwang W. Choi, WIPO Case No. D2010-0854).

- The disputed domain name <lankou.tv> is a direct transliteration of the registered trademark 蘭蔻 and differs from the Complainant’s trademark by the additional country code top level domain, ccTLD “.tv”. The Panel notes that on itself, a transliteration of the Chinese characters into the English language is confusingly similar.

The addition of the ccTLD “.tv” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The ccTLD “.tv” is without legal significance since the use of a ccTLD is technically required to operate the domain name.

- The disputed domain name <lamkou.com> differs from the registered trademark 蘭蔻 by being close to its transliteration “lankou” and by the replacing of the letter “n” with the letter “m”, and the additional gTLD “.com”.

The replacement of the letter “n” in the transliteration “lankou” with the letter “m” in the disputed domain name <lamkou.com> is not sufficient to escape a finding of confusing similarity given the identity of the transliteration between the Complainant’s trademark and the disputed domain name. (See Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042).

- The disputed domain name <lankouqingzhijiaosu.com> is a direct transliteration of the registered trademark 蘭蔻 and differs from the Complainant’s trademark by the additional Chinese words “清脂酵素” tranliterated into “qingzhijiaosu” and the additional gTLD “.com”.

The addition of the letters “gingzhijiaosu” does not detract from the existing confusing similarity between the disputed domain name and the Chinese transliteration of the trademark 蘭蔻. (See Salvatore Ferragamo S.p.A v. Qing Chun aka Wu Wei, WIPO Case No. D2012-2148). The meaning of the words “清脂酵素” is CLT Enzyme, used in the context of beauty products and often with reference to the packaging of the Complainant’s products. Therefore, the addition of “qingzhijiaosu” should be disregarded as it corresponds merely to a descriptive and generic term.

The Panel finds that the Complainant’s trademarks, LANCÔME or 蘭蔻 (“lankou”) are the dominant element in the disputed domain names.

Therefore, under the circumstances of this case, the Panel finds that the Complainant has met its burden of establishing that the disputed domain names are confusingly similar to the Complainant’s trademarks.

D. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests with respect to the disputed domain names (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its LANCÔME and/or 蘭蔻 trademarks or a variation thereof. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.

E. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant owns trademark rights in the mark LANCÔME since 1952 and in the mark 蘭蔻 since 1997.

The Respondent’s bad faith is suggestive, in these particular circumstances, in which the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain names resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations.

As determined earlier, the disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Respondent’s use of the highly distinctive trademarks, owned by the Complainant, within the disputed domain names and within the websites these disputed domain names resolve to is suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:

“By registering and using the Domain Name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent” (see Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint. The failure to respond in this case, leads the Panel to conclude that the disputed domain names were registered and are being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Complainant submitted evidence proving that the Respondent was and still is using the disputed domain names to operate websites that depict the Complainant’s well-known trademark and for selling diet products is a clear evidence of the fact that the Respondent was well aware of the Complainant’s existence and activities well before this dispute (see Groupe AUCHAN v. beijingyidutiandikejifazhanyouxiangongsi, WIPO Case No. D2009-1746)

Lastly, the fact the Respondent has registered five domain names that include the Complainant’s well-known trademarks LANCÔME and the transliteration of 蘭蔻 (lankou) also indicates its bad faith (see L’Oreal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K Plooyer, WIPO Case No. D2011-0524).

Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the distinctiveness of the Complainant’s trademarks, the Respondent’s use of the disputed domain names and the use of the websites to which the disputed domain names lead, the Panel finds that the disputed domain names were registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <lamkou.com>, <lancomesmagic.com>, <lankouqingzhijiaosu.com>, <lankou.tv> and <315lancome.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: November 20, 2013