WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancôme Parfums Et Beauté Et Compagnie v. Mai Jia Chang, Zhang Weilin, Yang Hao, Xu xu, She ru, Whois Privacy Protection Services Inc / fang fang
Case No. D2013-0021
1. The Parties
The Complainant is Lancôme Parfums Et Beauté Et Compagnie of Paris, France, represented by Dreyfus & associés, France.
The Respondents are Mai Jia Chang of Leizhou, Guangdong, China ; Zhang Weilin of Hangzhou, Zhejiang, China ; Yang Hao of Dalian, Liaoning, China ; Xu xu of Xiangyang, Hubei, China ; She ru of Fengxi, Guangdong, China ; Whois Privacy Protection Services Inc of Florida, United States of American; fang fang of Shanghai, China. .
2. The Domain Names and Registrars
The disputed domain names <lancomes-china.com>, <lancomess.com>, <lancomes-slim.com>, <lancomes315.com>, <lancome12315.com> and <lancome315.com> are respectively registered with Shanghai Yovole Networks, Inc.; GoDaddy.com, LLC; 35 Technology Co.,Ltd.; Xin Net Technology Corp; HiChina Zhicheng Technology Ltd. and Name.com LLC (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2013. On January 7, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 8, 2013 and January 15, 2013, the Registrars (except for Name.com LLC) transmitted by emails to the Center their respective verification responses confirming that the Respondents are listed as the registrants and providing the contact details. On January 11, 2013, the Registrar Name.com LLC transmitted by emails to the Center its verification response disclosing registrant and contact information for the disputed domain name <lancome315.com> which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2013 providing the registrant and contact information disclosed by the Registrar Name.com LLC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2013.
On January 15, 2013, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. The Complainant confirmed its request that English be the language of proceedings on January 18, 2013. The Respondents did not comment on the language of proceedings by the specified due date.
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 Respondents of the Complaint, and the proceedings commenced on January 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 11, 2013.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on February 22, 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.
It has been necessary to this Panel to extend the period for issuing a decision in this case to the date indicated under paragraph 7 below.
4. Factual Background
4.1 The Complainant has presented evidence that Lancôme Parfums Beauté & Compagnie was created in 1935 and is a subsidiary of L’Oreal, which is held out to be one of the international leaders and one of the world’s largest groups in the cosmetic industry. L’Oreal is described as a French industrial group specialized in the field of cosmetics and beauty.
4.2 The Complainant has asserted that L’Oreal is one of the world’s largest groups in the cosmetics business and is present in over 130 countries with over 64,000 employees. It has provided evidence to show that L’Oreal creates and distributes products in all sectors of the beauty industry, such as hair colour, styling aids, cosmetics, cleansers, and fragrances.
4.3 The Complainant has asserted that LANCÔME is well-known all over the world and has provided documentary evidence to suggest that it is the world’s number one luxury beauty brand on the selective skincare and makeup market. Lancôme is said to be viewed as a symbol of French refinement and its skincare, make-up, fragrance products are successful all over the world.
4.4 The Complainant has asserted that Lancôme is number one in anti-ageing skincare and is largely present in China where it has a number one position in this market. Lancôme has launched “Rose Beauty”, which is the first social network for beauty in China and had already won more than four million people in 2010.
4.5 The Complainant had become aware of the registration and use of the disputed domain names <lancome315.com>, <lancomes-slim.com>, <lancomes315.com>, <lancome12315.com> and <lancomess.com> and <lancomes-china.com> and had established that all the disputed domain names resolve to a website or websites displaying an imitation of its trademark LANCÔME. The imitation websites all have logos which consist in LANCÔME with a rose logo. The Complainant has noted that such websites appear to distribute diet products and to claim being official website of the Complainant. The websites also display images of Penelope Cruz who is an ambassadress of the brand Lancôme.
5. Parties’ Contentions
5.1 The Complainant contends that the disputed domain names are confusingly similar to its LANCÔME trademark in which it holds rights for the following reasons:
(i) The Complainant owns numerous trademark registrations for LANCÔME throughout the world and has provided evidence to show that it owns the following trademark registrations which being protected in China where the Respondents (except for WhoIs privacy service) are located :
(a) International trademark LANCÔME No.164395, registered on October 6, 1952, renewed and covering goods in classes 3 and 21;
(b) Chinese Trademark Registration LANCÔME No. 76096 of October 7, 1977, renewed and covering goods in class 3;
(c) Chinese Trademark Registration LANCÔME No. 775926 of January 14, 1995, renewed and covering services in class 42.
(ii) The Complainant owns domain name registrations for LANCÔME mark including:
(a) <lancome.com>, registered on July 8, 1997;
(b) <lancome.com.cn> registered on December 9, 1997.
(iii) The disputed domain names all incorporate the Complainant’s trademark LANCÔME in their entirety. The Complainant asserts that in many UDRP decisions, previous panels considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered trademark (citing AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and Lancôme Parfums et Beauté et Compagnie v. Shi Jiaqi, WIPO Case No. D2011-0390).
(iv) The Complainant also submits that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names. It submits that the mere adjunction of a generic Top Level Domain (gTLD) such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity.
(v) The Complainant additionally submits that the absence of circumflex accent on the letter “o” in the disputed domain names does not have any impact on the likelihood of confusion. The lack of the circumflex does not change the pronunciation. The Complainant has submitted that previous UDRP panels have considered that the addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes are insignificant changes, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy. The Complainant also uses similar submissions for the disputed domain names which include more figures suffix (“315”, “12315”), where there has been an addition of letters for one of the disputed domain names.
(vi) Finally, in relation to the addition of geographical term to the disputed domain name <lancomes-china.com>, the Complainant asserts that it is insufficient to avoid a finding of similarity. The addition of the “-China” suffix is not enough to avoid similarity, nor does it add anything to avoid confusion.
5.2 The Complainant contends that the Respondents have no rights and legitimate interests in the disputed domain names for the following reasons:
(i) The Respondents are not affiliated with the Complainant in any way, nor have Respondents been authorized by the Complainant to register and use the Complainant’ s LANCÔME trademark or to seek registration of any domain name incorporating said marks. The Complainant submits that this fact is on its own sufficient to prove the second criterion of the Policy and relies upon the previous UDRP decision of LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
(ii) The registration of the Complainant’s trademark LANCÔME had long preceded the registration of the disputed domain names.
(iii) The Respondents have no prior rights or legitimate interests in the disputed domain names..
(iv) The Respondents are not known under the name “LANCÔME” or any similar terms.
(v) The disputed domain names are so identical to the famous LANCÔME trademark of the Complainant, that the Respondents cannot reasonably pretend they were intending to develop a legitimate activity through the disputed domain names.
(vi) The Respondents have all of the disputed domain names to direct Internet users to a website selling diet products and displaying a logo LANCÔME + rose which is an imitation of the Complainant’s trademark.
5.3 The Complainant, lastly, contends that the disputed domain names were registered and are being used in bad faith for the following reasons:
(i) The Complainant submits that “with regards to registration in bad faith, it seems obvious that Respondents knew or must have known Complainant’s trademarks at the time of the registration of the domain names”.
(ii) The Complainant also submits that the “Complainant’ trademark is in a leadership position throughout the world and enjoy a large success”.
(iii) The Complainant contends that the notoriety of the Complainant’s trademarks has been acknowledged by several previous UDRP panels and that this notoriety was recently underlined by the panel in Lancôme Parfums Et Beauté Et Compagnie, v. Shi Jiaqi, supra.
(iv) The Complainant further submits that a simple search on the Internet through any search engine, such as “Google”, would have revealed the Complainant’s presence and trademarks.
(v) The Complainant contends that the litigious websites connected to the disputed domain names also provide evidence that the Respondents knew about the Complainant and its trademark. This is so because the websites have displayed a clear imitation of the trademark LANCÔME and its rose logo. The Complainant pointed out that the fact that the websites depict the Complainant’s well-known trademark is a clear evidence of the fact that the Respondents were well aware of the Complainant’s existence and activities well before this conflict arose.
(vi) Finally, the Complainant assets that it is unlikely that the registration of the 6 disputed domain names including the trademark belonging to the Complainant and the direction to identical or highly similar websites can be a coincidence. The Complainant submits that the fact that the Respondents have chosen to register so many disputed domain names containing the Complainant’s trademarks clearly show bad faith registration. It relies upon the decision of L’Oreal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524.
The Complainant requests a decision that all the disputed domain names be transferred.
5.4 The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Respondent Consolidation
6.1 The Panel is satisfied that all the disputed domain names and websites to which they resolve in this case are subject to common control and that it is equitable and fair to all Parties to render the present decision against all the Respondents in this case.
B. Language of Proceedings
6.2 The Complaint was filed in the English language. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
6.3 The Center has been informed by the concerned Registrars that the language of the registration agreement of <lancome315.com> and <lancomess.com> is in English. It is therefore proper and in accordance with paragraph 11(a) of the Rules that the default language of proceedings for these two disputed domain names are to be in English.
6.4 The Center has been informed by the concerned Registrars that the language of the registration agreement for each of the remaining disputed domain names is Chinese. The default language of proceedings is therefore Chinese, being the language of the registration agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.
6.5 According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.6 The Complainant has submitted that because one of the disputed domain names <lancome315.com> has been acquired from an American registrar whose website is in English with no translation in Chinese, this strongly suggests that the Respondents master the English language. This is surprising submission is not a logical argument let alone a properly constructed legal submission. As there is no valid reasoning backed by jurisprudence, the Panel is unable to accept such an illogical submission. (See L’Oreal v. Zhongshengpengfei, zhaohui wu, WIPO Case No. D2012-0520).
6.7 The Complainant indicated that the fact that one of the disputed domain names, <lancome-slim.com>, includes an English term is enough to suggest that the Respondents have knowledge of this language. It continued to submit that the same conclusion may be deducted from the use of china in the disputed domain name <lancomes-china.com>. Again, with the greatest respect, the Panel does not agree that this is enough to conclude that the Respondents proficient with the English language and has therefore to decline to follow such submission.
6.8 Finally, the Complainant then indicated because it was located and registered in France, it had no knowledge of the Chinese language. It then submitted that if it were to proceed in the Chinese language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. It then concluded to say that the use of another language than English in the proceeding would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings. Previous panels have ruled against this very disingenuous line of submission. (See L’Oreal v. Zhongshengpengfei, zhaohui wu, supra).
6.9 What in fact the Complainant is suggesting is that because of its lack of knowledge in the Chinese language, it is unable to deal with the dispute resolution process as it does not want to spend any costs on translation. This is a rather contradictory position to take as if it were correct; it would mean that the Complainant has admitted that it does not understand what has been stated in any of the websites associated with the disputed domain names that are written in the Chinese language. The conclusion would then have to be that it brought these proceedings without knowing what has been represented in the Chinese language websites and documents. This Panel cannot accept such a contradictory submission and would remind future complainants not to raise such extraordinary submissions in their request of persuading panels from ignoring paragraph 11(a) of the Rules.
6.10 In the Panel’s view, the fact that the Complainant has to retain specialised translation services at a cost that is likely to be higher than the overall cost for the present proceedings is not a legal reason at all that can be accepted by any panel. At the end of the day, it is up to any complainant to secure the services of counsel that can communicate in the language in which the language of the registration agreement is to be based. The Panel has however reviewed the Chinese language documents in the course of these proceedings and has satisfied itself at each of the three limbs that the Complainant has to satisfy.
6.11 Although the inability of the Complainant’s representative to communicate in the Chinese language is not and cannot solely be a proper legal basis for not adopting the default language of proceedings, the Panel views that it is significant that there has not been an objection made by the Respondents on the issue of language. (See Compagnie Gervais Danone v. yunengdonglishangmao (beijing) youxiangongsi, WIPO Case No. D2007-1918).
6.12 The Panel considered this issue carefully bearing in mind its broad powers given to him by paragraph 11(a) of the Rules. Therefore, in consideration of all the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceedings in this case. However, based on the Panel’s discretion, Chinese language documents have been reviewed by the Panel.
C. Overall Review of Formalities
6.13 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondents to lodge a Response.
6.14 The Respondents have been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that it accepts the claims of the complainant, or even that it does not wish to respond or defend its perceived interest in the domain name. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove its case in accordance with the Policy and the Rules. The burden of proof falls upon and remains on the Complainant.
6.15 In such case of silence by the Respondents, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). Notwithstanding the default of the Respondents, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
D. Identical or Confusingly Similar
6.16 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.17 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark rights; and that the disputed domain names are identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.18 The Complainant has appended to the Complaint a list of registered trademarks for the mark LANCOME. It is quite clear that the Complainant is the owner of a number of trademarks that simply comprise LANCÔME. The Respondent’s registration consisting of the Complainant’s LANCÔME trademark in its entirety with the exception of numerals or words added to the trademark do not prevent the disputed domain names from being confusingly similar to the Complainant’s registered mark.
6.19 Given this, the Panel has little difficulty in concluding that the disputed domain names are confusingly similar to a number of trademarks in which the Complainant has rights.
6.20 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
E. Rights or Legitimate Interests
6.21 The Panel accepts that the Complainant has satisfied it in the Complaint the Respondents do not use the disputed domain names in connection with a bona fide offering of goods or services. At the heart of the Complaint is the Complainant’s contention that the Respondents have taken the trademark of the Complainants with a view to attracting Internet users to a website offering services, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website. The Respondents had even displayed on the website the Complainant’s trademark LANCÔMES + rose. The Panel accepts that such activity clearly does not provide the Respondents with a legitimate interest in the disputed domain names.
6.22 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondents have no rights or legitimate interests in the disputed domain names. However, it is the prevailing view among UDRP panels that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain names, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the disputed domain names.
6.23 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
6.24 As this Panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.25 The Respondents have not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain names. There is no evidence on the record of this proceeding to suggest that the Respondents have been commonly known by the disputed domain names, or that the Respondents have made noncommercial or fair use of the disputed domain names. The Respondents have also not used the disputed domain names in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names which are confusingly similar to the Complainant’s mark.
6.26 Under these circumstances, the Panel takes the view that the Respondents have no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
F. Registered and Used in Bad Faith
6.27 The Panel has not been provided with any supporting submission to link up and support the Complainant’s submission that it seems obvious to them that the Respondents knew or must have known Complainant’s trademarks at the time of the registration of the disputed domain names. However, having gone through the materials that have been provided, the Panel does accept that the Complainant’s trademark is very well-known throughout the world and does indeed appear to be immensely successful.
6.28 The Panel does not accept the Complainant’s assertion that findings of fact by other UDRP panels in previous UDRP decisions should be automatically accepted as conclusive in this case. The Complainant bears the burden of proving whatever allegations it chooses to make in any new case.
6.29 The Panel however accepts that the Respondents registered the disputed domain names with the likely knowledge of the Complainant’s business and its use of the trademark LANCÔME and its rose logo does show that the Respondents are using the disputed domain names to intentionally gain commercially by attracting Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark.
6.30 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.31 Given that the Respondents have failed to demonstrate (for the reasons set out under paragraph 8.B.above) that they are using the disputed domain names genuinely for their own goods or services and that it have also failed to disclose on the site the true relationship between them and the Complainant, the Panel concludes that the Respondents in this case did intentionally attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondents, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.32 The Panel comes to the conclusion that the Respondents most likely registered the disputed domain names in order to prevent the Complainant from adopting the trademark in corresponding domain names. This has been done in bad faith.
6.33 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondents registered and are using the disputed domain names in bad faith.
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 <lancomes-china.com>, <lancomess.com>, <lancomes-slim.com> <lancomes315.com>, <lancome12315.com> and <lancome315.com>> be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Dated: March 21, 2013