WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancôme Parfums Beauté et compagnie v. Lv Shao Peng / YinSi BaoHu Yi KaiQi
Case No. D2016-0445
1. The Parties
The Complainant is Lancôme Parfums Beauté et compagnie of Paris, France, represented by Dreyfus & associés, France.
The Respondents are Lv Shao Peng of Zhengzhou, Henan, China / YinSi BaoHu Yi KaiQi of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <lancomehair.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2016, 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.
On March 9, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 10, 2016, 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 and 4, the Center formally notified the Respondents of the Complaint in English and Chinese, and the proceeding commenced on March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 14, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 21, 2016. 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 a French industrial group specialized in the field of cosmetics and beauty. It does business around the world, including China, where it established a subsidiary in 1997 and has also opened a research center. The Complainant distributes consumer products under various brands including Lancôme. Its Lancôme range includes "Lancôme Hair Sensation" shampoo and conditioner.
The Complainant is the owner of various registrations of the LANCÔME trademark including International trademark registration no.164395, registered in 1952 in respect of goods in classes 3 and 21; Chinese trademark registration no. 76096, registered in 1977 in respect of goods in class 3 and Chinese trademark registration no. 775926, registered in 1995 in respect of services in class 42. These registrations are still effective. The Complainant also operates websites at "www.lancome.com" and "www.lancome.com.cn", among others.
The Respondents are the registrant of the disputed domain name and a privacy shield (collectively, the "Respondent"). The disputed domain name was registered on February 3, 2015 and does not resolve to any active website.
5. Parties' Contentions
The disputed domain name is identical or confusingly similar to the Complainant's LANCÔME trademark. It substantially reproduces the Complainant's trademark in its entirety, omitting only the circumflex and adding a generic term and the generic Top-Level Domain ("gTLD"). The generic term "hair" does not dispel any likelihood of confusion; on the contrary it increases the level of confusion since it corresponds to the Complainant's brand "Lancôme Hair Sensation".
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's trademark registrations precede the domain name registration by several years. The disputed domain name is so similar to the Complainant's famous trademark that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity with that name. The Respondent is not commonly known by the name "lancôme", in any way affiliated with Complainant, nor authorized or licensed to use the LANCÔME trademark or to seek registration of any domain name incorporating said mark. The Respondent did not demonstrate use or preparations to use the disputed domain name because it resolves only to an inactive page.
The disputed domain name was registered and is being used in bad faith. The LANCÔME trademark is well-known throughout the world, including China, where the Respondent is located. In light of the reputation of Complainant's trademark, the Respondent's reproduction of the LANCÔME trademark in its entirety in the disputed domain name and its association with the generic term "hair", which increases the risk of confusion, clearly proves that the Respondent was aware of the existence of the Complainant's trademark. The disputed domain name is confusingly similar to the Complainant's trademark and such use was not authorized by the Complainant. The disputed domain name resolves only to an inactive page.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese and that use of a language besides English would impose a significant burden on the Complainant. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2 Analysis and Findings
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the word "LANCÔME".
The disputed domain name incorporates the Complainant's trademark in its entirety and the Complainant's trademark is the dominant element of the disputed domain name.
There are two additional elements in the disputed domain name and one missing element. The first additional element is the word "hair", which is merely a generic word. A generic word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. The other additional element is ".com", which is a gTLD. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei， WIPO Case No. D2014-0080. The missing element in the disputed domain name is the circumflex above the "o" in the Complainant's trademark but this is a minor difference that is insufficient to dispel the confusing similarity. See Lancôme Parfums Beauté et compagnie v. 湖南澳利经贸发展有限公司, WIPO Case No. D2015-1071.
Consequently, the only distinctive element of the disputed domain name for the purposes of this comparison is the Complainant's LANCÔME trademark, minus the circumflex.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances, the disputed domain name does not resolve to any active website and there is no evidence of any preparations to use it in any active way. Therefore, the Panel does not consider that the facts of this dispute fall within the first or third circumstances of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "Lv Shao Peng" and the name of a privacy shield, not "lancome". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden of production now shifts to the Respondent to show that it does have rights or legitimate interests but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the Panel observes that the Respondent registered a domain name that entirely incorporates the Complainant's LANCÔME trademark, minus the circumflex. The disputed domain name includes an additional element "hair" that specifically relates to products that the Complainant sells under the LANCÔME trademark. The disputed domain name registration postdates the Complainant's trademark registrations by many years, including in China, where the Respondent is located. There is no evidence that the Respondent was authorized by the Complainant to register the disputed domain name. In view of these circumstances, the Panel finds that the Respondent's choice to register a domain name confusingly similar to the Complainant's trademark was deliberate.
With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademark which is widely known, especially in the cosmetics industry, through use in connection with its skincare and beauty products. The disputed domain name includes the Complainant's trademark in its entirety but the evidence does not show that the Respondent is authorized to use it. The combination of "lancome" and "hair" resembles the Complainant's "Lancôme Hair Sensation" brand for hair products which increases the likelihood of confusion of the disputed domain name with the Complainant's trademark and products. Given these circumstances and those described in Section 6.2.B, the Panel finds that the Complainant has demonstrated that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 name, <lancomehair.com>, be transferred to the Complainant.
Date: April 27, 2016