WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancel International SA v. hu ziliu
Case No. D2013-1202
1. The Parties
The Complainant is Lancel International SA of Villars-Sur-Glâne, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is hu ziliu of Shijiazhuang, Hebei, China.
2. The Domain Names and Registrar
The disputed domain names <lancelangelina.com>, <lancelfrenchflair.com>, <saclanceladjanisale.net>, <saclanceloccasion.com> and <saclancelre.org> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 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 July 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 12, 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, 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 on October 26, 2012. They currently resolve to websites offering for sale products that the Complainant believes are counterfeit and/or which directly compete with those of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to the LANCEL trademarks because: (i) they fully incorporate the LANCEL marks, and merely add the descriptive French word “sac” (bag), and/or the English words “French”, “flair”, “Angelina” and “Adjani sale” (which are specific lines of bags offered by the Complainant), “occasion” and/or the French prefix “re”; and (ii) the addition of the generic Top-Level Domain “.net” or “.org” does not render the disputed domain names less confusing.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names because: (i) the Respondent always uses the email “[…]@hotmail.com” and has referred to himself in the WhoIs database as “hu ziliu” and 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 he may have come to be known; (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 them, as he is using them to resolve to websites offering for sale counterfeit products and/or products which directly compete with those offered by the Complainant; and (iii) the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the LANCEL trademark.
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 registration 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 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 LANCEL, 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.
The Respondent did not reply to the Complainant’s contentions.
6. 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 the descriptive French word “sac” (bag), and/or the English words “French”, “flair”, “Angelina” and “Adjani sale” (each of which is a specific line of bags offered by the Complainant.) In one of the disputed domain names the word “occasion” is added and in another the French prefix “re” is added at the end of one of the disputed domain names. The dominant element of each of the disputed domain names is the Complainant’s trademark LANCEL. The Panel finds the addition of the various descriptive words and the prefix 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 describe the particular goods sold by the Complainant. 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 to websites offering goods that purport to be the Complainant’s goods but most likely are counterfeits of the Complainant’s goods. 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 the 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.
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 <lancelangelina.com>, <lancelfrenchflair.com>, <saclanceladjanisale.net>, <saclanceloccasion.com> and <saclancelre.org> be transferred to the Complainant.
Andrew F. Christie
Date: August 27, 2013