WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratoires La Prairie SA v. Domain Administrator, see PrivacyGuardian.org / Alexander Vucic
Case No. D2019-2668
1. The Parties
The Complainant is Laboratoires La Prairie SA, Switzerland, represented by Bar & Karrer, Switzerland.
The Respondent is Domain Administrator, see PrivacyGuardian.org, United States of America (the United States”) / Alexander Vucic, United States.
2. The Domain Name and Registrar
The Disputed Domain Name <laprairiestore.com> is registered with NameSilo, LLC (the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center”) on October 30, 2019. On October 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name and another domain name. On October 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 20, 2019, withdrawing the other domain name from the Complaint.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on December 18, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 23, 2019. 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 Laboratories La Prairie SA is based in Switzerland. The Complainant produces and trade cosmetic and pharmaceutical products in Switzerland and in 90 different countries around the world.
In addition, the Complainant owns several LA PRAIRIE trademarks, inter alia:
- LA PRAIRIE Switzerland trademark office, Registration No. P-521666, registered in June 18, 2004; and
- LA PRAIRIE European Union trademark registration, registered on January 22, 1999.
Moreover, the Complainant is the owner of the following domain names, <laprairie.com>, <laprairieswitzerland.com>, and <laprairiegroup.ch>.
The Respondent registered the Disputed Domain Name <laprairiestore.com> in October 18, 2019. The Disputed Domain Name is used for a website offering LA PRAIRIE products with huge discount prices up to 75 %.
5. Parties Contentions
The Complainants contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Respondent has completely integrated the trademark LA PRAIRIE in the Disputed Domain Name with the mere addition of the generic term store”, which does not distinguish the Disputed Domain Name from the Complainant‘s trademark.
Rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In addition, there is no evidence of the Respondent‘s use of, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant further submits that the Respondent is pretending to be an official sales channel of the Complainant. Moreover, the Complainant states, that the website is fraudulently used by the Respondent since, the alleged original prices on the website are much lower that the regular market prices.
Furthermore, the Complainant alleges that the Respondent has never been commonly known in the normal course of business by the Complainants trademark and there is no evidence of a non-commercial or fair use of the Disputed Domain Name by the Respondent. Therefore, the Respondent is acting exclusively for commercial gain and has no legitimate interest in the Disputed Domain Name.
Registration and use in bad faith
The Complainant contends that the Disputed Domain Name was registered and used in bad faith by the Respondent, since the Respondent created confusion with the Disputed Domain Name and the Complainant´s trademark and is further trying to deceive consumers into believing that the website is an official sales channel of the Complainant. Thus, the Disputed Domain Name was registered in order to attract Internet Users to its website for commercial gain.
The Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Addition of a Domain Name to the Proceeding
The Panels decision not to accept the addition of the Additional Domain Name, <thelaprairie.com>, to this proceeding is based on consideration of the following:
On December 24, 2019 the Complainant requested the addition of the domain name <thelaprairie.com> (Additional Domain Name”) to this proceeding.
The Panel instructed the Center to obtain a registrars verification request for the Additional Domain Name from the concerned Registrar and the Panel has received confirmation that the Respondent is not the registrant of the Additional Domain Name.
The issue of the consolidation of multiple respondents has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0”), section 4.11 and earlier decisions including Mou Limited v Zeng Xiang / Debra Nelis / Privacy Protection Service Inc. d/b/a PrivacyProtect.org, WIPO Case No. D2016-0759, et al.
In order to file a single complaint against multiple respondents, the complaint must meet the following criteria:
(i) the domain names or the websites to which they resolve are subject to common control; and
(ii) the consolidation would be fair and equitable to all parties.
The Panel finds that the Complainant has not provided enough evidence to establish that both the Disputed Domain Names, <laprairiestore.com> and the Additional Domain Name <thelaprairie.com> are subject to common control.
In addition, there are differences in the content of both domain names: the website at the Disputed Domain Name <laprairiestore.com> apart from LA PRAIRIE products, also sells products from other brands (LANCÔME and LA MER), while, the Additional Domain Name <thelaprairie.com> only sells LA PRAIRIE products.
Furthermore, the Disputed Domain Name <laprairiestore.com> was registered through NameSilo and the registrant is “Alexander Vucic”. Whereas, the Additional Domain Name <thelaprairie.com> was registered through NameCheap, and the registrant is “Alen White”.
Finally, the look and feel of both websites is totally different from each other and the Complainant did not provide arguments or evidence regarding the connection between the Disputed Domain Names and the Respondents.
Accordingly, the Panel rejects the Complainant’s request to add the Additional Domain Name <thelaprairie.com> to this proceeding.
6.2. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <laprairiestore.com> is confusingly similar to the Complainants LA PRAIRIE trademark. The Disputed Domain Name wholly incorporates the Complainants trademark.
Furthermore, the addition of the descriptive term “store” does not suffice to avoid the confusing similarity between the Disputed Domain Name and the LA PRAIRIE trademark.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondents registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainants contention.
The Respondent is using the Disputed Domain Name without authorization of the Complainant in order to offer LA PRAIRIE products. Furthermore, there is no disclaimer on the website disclosing the relationship between the Complainant and the Respondent.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on October 18, 2019, while the Complainants LA PRAIRIE European Union trademark registration was granted on January 22, 1999. Furthermore, the fact that the Respondents website is connected to an unauthorized commercial website offering LA PRAIRIE products, the Respondent cannot claim not to have knowledge of the legal rights in the trademark LA PRAIRIE at the time of the registration. Thus, the Panel concludes the Respondent registered the Disputed Domain Name in bad faith.
The Panel also finds that the Respondent uses the Disputed Domain Name in bad faith.
The Respondent operates its website, offering LA PRAIRIE products without the authorization of the Complainant and without disclosing its relationship with the Complainant. The addition of the term store” strengthens the impression that the Disputed Domain Name is that of, or is related to the Complainant. Thus, is likely to be perceived as denoting a website of the Complainant, through which the Complainants products can be purchased. This conduct qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondents use of the Disputed Domain Name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the Respondents website.
Thus the Panel concludes the Respondent also uses the Disputed Domain Name in bad faith.
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) 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 <laprairiestore.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: January 27, 2020