WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lancel International SA v. maoxiaowei

Case No. D2013-1268

1. The Parties

Complainant is Lancel International SA of Villars-Sur- Glâne, Switzerland, represented by Winston & Strawn LLP, United States of America.

Respondent is maoxiaowei of Changchun, Jilin, China.

2. The Domain Names and Registrar

The disputed domain names <lancelenligne.com>, <saclancelmagasiner.com> and <saclancelonsale.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2013. On July 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 25, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 25, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondent 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2013. On July 26 and August 1, 2013, the Center received email communications from Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2013. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on August 21, 2013.

The Center appointed Kimberly Chen Nobles as the sole panelist in this matter on September 2, 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

Complainant is Lancel International SA, a Swiss corporation that makes and sells luxury leather goods including bags. Complainant owns a large number of trademark registrations in a variety of jurisdictions worldwide for the mark LANCEL, including in France, the European Community, China, Japan, Republic of Korea, Russia Federation, and the United Arab Emirates. Complainant operates a website featuring its products at “www.lancel.com”. Based on Complainant’s submissions and representations, Respondent is neither a licensee nor an authorized distributor.

Respondent in this matter, according to the Registrar of the disputed domain names, is maoxiaowei. Respondent registered all three of the disputed domain names on May 30, 2012.

5. Parties’ Contentions

A. Complainant

Complainant argues (1) that the disputed domain names are identical or confusingly similar to a mark in which Complainant has rights, (2) that Respondent has no rights or legitimate interests in the disputed domain names, and (3) that Respondent registered and used the disputed the domain names in bad faith.

Complainant argues that the disputed domain names are identical or confusingly similar to Complainant’s “prestigious” and well-known LANCEL mark because the disputed domain names fully incorporate the LANCEL mark, adding only generic English and French words. Specifically, the disputed domain name <lancelenligne.com> adds the French word “enligne”, meaning “bag”, to the LANCEL mark; the disputed domain name <saclancelmagasiner.com> adds the French words “sac” and “magasiner”, meaning “bag” and “shop”, respectively, to the LANCEL mark; and <saclancelonsale.com> adds both the French word “sac” and the English words “on sale” to the LANCEL mark. Complainant further argues that these words added to the disputed domain names further prove confusing similarity because they reference Complainant’s products, namely bags.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names, noting the lack of evidence that Respondent ever used any similar mark or that Respondent’s ever possessed any rights or legitimate interests in the disputed domain names. Complainant further asserts that Respondent’s use of the disputed domain names to publish pay-per-click websites does not constitute a bona fide or legitimate business use. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain names because Respondent has not received any license, permission, or authorization to use the LANCEL mark in any domain names.

Complainant argues that Respondent registered and used the disputed domain names in bad faith because Respondent had actual or constructive knowledge of Complainant’s marks and because Respondent is using the disputed domain names to disrupt Complainant’s business and direct Internet users to pay-per-click websites that trade off the reputation and goodwill of Complainant’s LANCEL mark.

B. Respondent

Respondent did not formally respond to Complainant’s contentions. Respondent in its email communication dated July 26, 2013 stated in English “Hi, what's wrong with this domain? the domain is overdue in 05/30/2013”, and in its email communication dated August 1, 2013 stated in Chinese “这到底是投诉什么内容？这么多文档，没一个看得明白，不知道说什么鬼东西！！” which can be roughly translated to “What is the Complaint about? So many documents, I don’t understand any of them.”

6. Discussion and Findings

A. Language of the Decision

Complainant has requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. While the language of the registration agreement for the disputed domain names is Chinese, Complainant asserts that because the websites resolving from the disputed domain names are in English and the targeted customers are English-speaking, that Respondent understands English. Respondent’s communications via email (one in English and one in Chinese) evidence, first, that Respondent can read and write English at least at a basic level. Second, the content of Respondent’s Chinese email indicates that Respondent knew that he or she had been served with a “Complaint”, such that Respondent had notice of this legal proceeding. Respondent’s statement that he or she could not “understand” any of the documents does not excuse Respondent from seeking legal assistance if needed in responding to the Complaint of which Respondent was admittedly aware. The Panel concludes that English should be the language of the proceeding.

B. Standard for UDRP Proceedings

According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names were registered and are being used in bad faith.

a. Identical or Confusingly Similar

The inclusion of the entire LANCEL mark within the disputed domain names militates strongly against Respondent. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. Here, the disputed domain names standing alone are confusingly similar to Complainant’s mark. “The issue is not whether confusion is likely in the trade mark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trade mark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffman-La Roche AG v. P. Martin, WIPO Case No. D2009-0323. Moreover, the strength and widespread registration of the LANCEL mark supports Complainant’s contention that anyone seeing the disputed domain names would mistake them for domain names owned and operated by Complainant or an authorized retailer.

The Panel concludes that the disputed domain names are confusingly similar to Complainant’s LANCEL mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

b. Rights or Legitimate Interests

The Panel finds that no evidence exists in the record to indicate that Respondent has any rights or legitimate interests in the word LANCEL; further, no evidence exists in the record to indicate that Respondent’s use of the disputed domain names is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain names. Further still, no evidence exists in the record to indicate that Respondent has any association or affiliation with Complainant in the form of a license, permission, or authorization to use the LANCEL mark. Complainant has thus presented a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s case.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

c. Registered and Used in Bad Faith

The disputed domain names are being used to advertise goods or services of third parties. Respondent’s use of the LANCEL marks on the websites at the disputed domain names establishes Respondent’s bad faith in the use of the disputed domain names. As discussed above, the record indicates that Respondent has no rights or legitimate interests in the form of a license or authorization or otherwise in Complainant’s LANCEL mark.

Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts 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, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. By registering the disputed domain names using Complainant’s LANCEL mark, Respondent is intentionally diverting traffic from Complainant’s business and websites. The incorporation of Complainant’s trademark into the disputed domain names combined with the use of generic terms for Complainant’s offerings into the disputed domain names, establishes an intent to deceive consumers into believing that the disputed domain names are associated with, affiliated with, and/or endorsed by Complainant and cannot constitute a bona fide use. Neither the record nor Respondent provides any evidence to the contrary. The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy.

The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. 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, <lancelenligne.com>, <saclancelmagasiner.com> and <saclancelonsale.com>, be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: September 24, 2013