WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancôme Parfums et Beautè & Cie Snc v. Value-Domain com, Value Domain
Case No. D2013-0518
1. The Parties
The Complainant is Lancôme Parfums et Beautè & Cie Snc of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Value-Domain com, Value Domain of Osaka-shi, Osaka, Japan.
2. The Domain Name and Registrar
The Disputed Domain Name <lancome-style.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2013. On March 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on March 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2013.
The Center appointed Charné Le Roux as the sole panelist in this matter on April 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.
4. Factual Background
The Complainant is part of the L’Oréal SA Group, operating as part of its luxury product division. It was acquired by L’Oréal in 1964. The Complainant is the owner of a very substantial portfolio of registered international and national trade mark registrations for LANCÔME (and LANCOME), including International and Community Trade Mark registrations filed in November 1951, October 2006 and March 2006 respectively. The Complainant also owns trade mark registrations in Japan, where the Respondent is situated, filed in May 1962, March 1989 and November 1991 respectively. The trade marks are registered in a large number of classes for a broad range of goods and services, with an emphasis on beauty care and fashion accessory items. The Complainant also owns more than 400 domain names in top level and country specific domain name extensions, all comprising the LANCÔME trade mark (or variations of it).
The Disputed Domain Name was registered by the Respondent on January 17, 2012.
On August 27, 2012, the Complainant’s representative wrote to the Respondent requesting it immediately to transfer the Disputed Domain Name and to deactivate the website associated with it. The letter drew attention to its client’s trade mark rights and called for compliance within seven days. Several reminders were subsequently addressed to the Respondent, without any response. At that time, the website linked to the Disputed Domain Name featured the LANCÔME trade mark and, what appeared to be images of LANCÔME products, were offered for sale at discounted prices. The website also incorporated links to commercial websites (all of which were owned by the Respondent), from which competing beauty products of third parties were offered for sale. At the date of the Complaint, the Disputed Domain Name was not redirected to any active website.
5. Parties’ Contentions
The Complainant provided substantial information regarding the development and history associated with its LANCÔME trade mark. It asserts that it has been using this trade mark for over 75 years in connection with luxury beauty products and that Lancôme products are distributed worldwide. The Complainant contends that the LANCÔME trade mark is extremely well-known. It states, in support of this contention, that the mark was included in Interbrand’s 2009 and 2010 Best Global Brands Lists, where it was valued in 2009 at USD 3,235 million. This represented the 91st most valuable trade mark in the world. In 2011 Lancôme sales showed a consistent growth of more than 9%, repeated in 2012 and in the first months of 2013. The Complainant also provided information regarding the significant promotional activities that took place in connection with the LANCÔME trade mark, including promotion through widely read international magazines such as Vogue and Harper’s Bazaar and by famous supermodels, actors and fashion designers, including Julia Roberts, Clive Owen and the like. The Complainant refers in detail to its significant trade mark and domain name portfolio, which was mentioned, in part, above. The Complainant’s primary website featuring its LANCÔME trade mark is “www.lancome.com”.
The Complainant contends that the Disputed Domain Name is confusingly similar to trade marks in which it holds rights. It points out that the Disputed Domain Name incorporates the whole of its LANCÔME trade mark, coupled with a non-distinctive and descriptive element being the word “style”. The Complainant submits that the addition of the term “style” will in fact enhance the likelihood of confusion, no doubt due to its reference to the fashion and beauty industry. The Disputed Domain Name also includes a hyphen and is absent of the circumflex accent which appears on the LANCÔME trade mark, which the Complainant contends are not significant.
The Complainant asserts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent is not a licensee or an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s LANCÔME trade mark;
b) the Respondent is not commonly known by the Disputed Domain Name as an individual or a business or other organization;
c) the Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name. In fact, the Complainant states, the Respondent has been gaining from the sales of the competing products offered for sale on the website corresponding to the Disputed Domain Name and on the other commercial websites linked to the Disputed Domain Name’s website. The Complainant asserts that the Respondent used a domain name corresponding to the Complainant’s trade mark to attract Internet users to its website for its own commercial gain and that it misappropriated the Complainant’s trade mark in this way;
d) the current passive holding of the Disputed Domain Name also does not constitute legitimate, noncommercial or fair use, because an invented word such as LANCÔME will not legitimately be selected, unless the intention is to create an impression of an association with the Complainant;
e) the Respondent did not reply to the cease and desist letter issued by the Complainant’s legal representative or the several reminders following this letter.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith.
It states that the fame associated with its LANCÔME trade mark is so significant that when the Respondent registered the Disputed Domain Name in January 2012, it must have been aware of the Complainant’s rights in the trade mark, a fact borne out by the subsequent listing of products featuring the Complainant’s trade mark on the website associated with the Disputed Domain Name.
The Complainant submits that the Respondent clearly registered the Disputed Domain Name with an intention to refer to the Complainant’s mark in order to capitalize on its reputation, by diverting Internet users seeking information about the Complainant to its own websites, where it could earn revenue through the promotion of products.
The Complainant also contends that the Disputed Domain Name has been used in bad faith, because the website associated with the Disputed Domain Name published the Complainant’s trade marks, offered for sale products bearing the Complainant’s LANCÔME trade mark and redirected Internet users to additional websites that promoted competing products.
The Complainant asserts that the Respondent’s bad faith registration and use for the purposes of the Policy applies also with reference to the Respondent’s (later) passive holding of the Disputed Domain Name.
The Complainant also refers to paragraph 4(b)(ii) of the Policy, stating that the Respondent has a long history of registration and use of domain names comprising third parties’ famous trade marks in combination with generic terms or misspellings. It provided a list of 18 prior proceedings under the Policy, which is attached to this Decision as Annexure 1. It appears from this list that the panels in every one of these proceedings ordered the Respondent to transfer the respective domain names to the complainants.
The Complainant also contends that the failure of the Respondent to respond to its cease and desist letter is an indication of the Respondent’s bad faith.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove:
(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That the Disputed Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the LANCÔME (and LANCOME) trade mark, by virtue of its substantial portfolio of trade mark registrations for it and its considerable use of the mark for over seven decades. The Complainant has also demonstrated that the LANCÔME trade mark is famous, a fact confirmed by a number of other panels in connection with complaints lodged by the Complainant in the following cases:
Lancôme Parfums et Beauté & Cie v. SL, Blancel Web, WIPO Case No. D2001-0028
Lancome Parfums et Beaute & Cie, L’Oreal v. 10 Selling, WIPO Case No. D2008-0226
L'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524
L’Oréal, Laboratoire Garnier et Compagnie, Lancôme Parfums et Beauté et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domains Services, WIPO Case No. D2011-1608
L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627
Ignoring for this purpose the generic domain suffix (as the Panel is entitled to do), the Panel finds that the combination of the Complainant’s well-known trade mark with the descriptor “style” and the hyphen, and sans the circumflex accent, will suffice for the purposes of a finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement.
C. Rights or Legitimate Interests
The Complainant asserts that its LANCÔME trade mark is world famous and that it has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name, or has made any legitimate, noncommercial or fair use of the Disputed Domain Name. The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer.
The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
The Respondent has clearly registered the Disputed Domain Name primarily with an intention to capitalize on the reputation attached to the Complainant’s mark, by diverting Internet users seeking information about the Complainant to the Respondent’s own websites, in order to obtain financial reward through the offer for sale of products promoted on the website linked to the Disputed Domain Name and also on the commercial websites of competing products to which that website links. The subsequent use that the Respondent has made of the Disputed Domain Name corresponds with its intention at registration. The fact that the Respondent subsequently, and at the date that the Complaint was filed, passively held the Disputed Domain Name, is of little assistance to it. The LANCÔME trade mark is famous and it is impossible that the Respondent could not have appreciated that it was a registered and well-known trade mark, that it would have a substantial commercial value and that anyone who would be making unauthorised use of a domain name that incorporates this trade mark would be likely to be infringing the Complainant’s rights.
The Respondent had opportunities, both when the Complainant’s representative sent a cease and desist letter to it and in this administrative proceeding, to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take up these opportunities.
Taking all the above circumstances into account and also the list of cases where the Respondent was found by other panels to have registered well-known trade marks as domain names with the intention of exploiting, in one form or another, the goodwill associated with these trade marks, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii), 4(b)(ii) and 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <lancome-style.com> be transferred to the Complainant.
Charné Le Roux
1. Bachet Sarl v. Value-Domain Com, WIPO Case No. D2012-1180,
2. Accor v. Value-Domain, Inc. , WIPO Case No. D2012-1342,
3. ITT Corporation and ITT Manufacturing Enterprises LLC v. VALUE-DOMAIN COM, VALUE DOMAIN, WIPO Case No. D2012-0529,
4. Barclays Bank PLC v. Value Domain, Value-Domain Com, WIPO Case No. D2012-0296,
5. La Quinta Worldwide, L.L.C. v. VALUE-DOMAIN COM/Value Domain, WIPO Case No. D2012-0005;
6. Delia Ephron v. Value Domain, Inc., WIPO Case No. D2011-1789;
7. Hitachi Ltd. v. Value-Domain Com, Value Domain, WIPO Case No. D2010-0754,
8. Hitachi Ltd. v. Value Domain, WIPO Case No. D2010-1433;
9. Cath Kidston Limited v. Value-Domain Com, WIPO Case No. D2010-0203;
10. Accor v. Value-Domain Com, Value Domain, WIPO Case No. D2009-1797,
11. Alstom v. Value-Domain Com, WIPO Case No. D2009-1249,
12. BACCARAT SA v. VALUE-DOMAIN COM, WIPO Case No. D2009-1186,
13. AXA SA v. Value Domain, WIPO Case No. D2009-1015,
14. Perfetti Van Melle S.p.A. 対VALUE-DOMAIN COM, 事件番号 D2009-0562,
15. F. Hoffmann-La Roche AG v. Value Domain/VALUE-DOMAIN COM, Digirock Inc., WIPO Case No. D2009-0159;
16. Wikimedia Foundation Inc. v. Value Domain and Digirock, Inc., WIPO Case No. D2009-0139,
17. 株式会社レオパレス２１ 対 ヨネクラ ヤスヒロ、VALUE-DOMAIN COM, 事件番号 D2008 - 1608,
18. Moncler Maison S.p.A. 対 Value Domain - Digirock Inc., 事件番号 D2008-0607