WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L'Oréal S.A. v. Cong Ty Co Phan Phununet Case No. D2010-0603 1. The Parties
Complainants are Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie and L'Oréal S.A., of Paris, France, represented by Dreyfus & Associés, France.
Respondent is Cong Ty Co Phan Phununet of Hanoi, the Socialist Republic of Viet Nam. 2. The Domain Names and Registrar
The disputed domain names , and
are registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2010. On April 19, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain names. On April 20, 2010, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 17, 2010.
The Center appointed Nayiri Boghossian as sole panelist in this matter on May 27, 2010. 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 L'Oréal S.A. is one of the world's leading cosmetics and perfume companies, and Complainants Lancôme Parfums Et Beauté Et Compagnie and Laboratoire Garnier Et Compagnie are members of Complainant L'Oréal S.A.'s corporate group.
Complainant Lancôme Parfums Et Beauté Et Compagnie owns the following International trademark registrations designating Vietnam:
- LANCÔME (word and device) no. 497443 registered October 28, 1985 (renewed) in classes 3, 5, 14, 18, 21, 24, 25 and 42;
- LANCÔME (word) no. 157412 registered November 12, 1951 (renewed) in classes 1 through 34.
Complainant Laboratoire Garnier Et Compagnie owns the following International trademark registrations designating Vietnam:
- GARNIER (word) No. 248215 registered October 7, 1961 (renewed) in classes 1, 2, 3, 5, 8, 21 and 26;
- LABORATOIRES GARNIER PARIS (word and device) No. 520114 registered January 26, 1988 (renewed) in classes 3 and 5;
- GARNIER EXPERT (word) No. 608364 registered October 13, 1993 (renewed) in classes 3 and 5.
Complainant L'Oréal S.A. owns the following registrations:
- MAYBELLINE (word), Vietnamese trademark registration No. 29219 filed February 20, 1992 (renewed) in class 3;
- MAYBELLINE (word), International trademark registration No. 959892 registered January 9, 2008 in classes 3 and 5.
Complainants are also owners of several domain names, including:
, registered July 8, 1997;
, registered March 21, 1999;
, registered August 28, 1999;
, registered November 14, 2003;
, registered June 2, 2006;
, registered October 20, 1998;
, registered April 27, 2000;
, registered December 29, 1998;
, registered August 15, 2006;
, registered December 31, 1997;
, registered November 11, 2003; and
, registered August 7, 2006.
The three disputed domain names were registered on October 14, 2009. The disputed domain names do not resolve to active websites.1 5. Parties' Contentions A. Complainants
Complainants aver that they sent a letter on December 23, 2009 through their legal counsel requesting that Respondent immediately cease using the disputed domain names and transfer them to Complainants. Respondent allegedly answered the letter with an email stating that the registration and use of the disputed domain names was in accordance with “the regulations by ICANN”, that Respondent had consulted its legal advisor, and that further correspondence with Complainants would follow. Complainants aver that their legal counsel sent multiple reminders to Respondent over a period of subsequent months, but no further communications from Respondent were received.2
Complainants request transfer of the disputed domain names on the basis of the following allegations.
First, Complainants contend that the disputed domain names are confusingly similar to their trademarks due to the complete inclusion of the trademarks in the disputed domain names. Complainants also note that the addition of the geographic term “vietnam” does not add distinctive value to the disputed domain names. Complainants contend that even though the circumflex and other diacritic marks present in the trademarks do not appear in the disputed domain names, the disputed domain names are confusingly similar to the trademarks because their appearance and pronunciation are similar, even omitting the diacritic marks.
Second, Complainants aver that Respondent has not been authorized to use their trademarks in the disputed domain names, that Respondent makes no bona fide use thereof and therefore that Respondent has no legitimate rights or interests in the disputed domain names.
Finally, Complainants allege that Respondent registered and uses the disputed domain names in bad faith; Respondent was aware of Complainants' trademarks when the disputed domain names were registered. Complainants explain that their trademarks are famous (citing decisions under the Policy) and note that a simple Internet or trademark search would have revealed their trademark rights. Complainants add that Respondent's registration on the same day of the three disputed domain names and the fact that their trademarks are widely used in business in Asia and Vietnam also demonstrate that Respondent knew of Complainants' trademark rights and registered in bad faith. Complainants also allege that a variety of factors demonstrate use in bad faith, most importantly Respondent's apparent intention to benefit unfairly from the value of Complainants' famous trademarks and Respondent's passive holding of the disputed domain names. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Complainants are all members of the same commercial group seeking remedies from the same Respondent. Respondent included major trademarks of each member in the registrations of the disputed domain names on the same day. Under the circumstances, the Panel concludes that a single proceeding against Respondent is appropriate and that Complainants are an “entity” for purposes of instituting this action under the Rules paragraph 3(a). E.g., L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869 (citing decisions).
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). For each disputed domain name, Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainants must establish these elements even if Respondent does not respond to the allegations of the Complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Although the disputed domain names are not identical to Complainants' trademarks referenced above, the Panel agrees with Complainants and concludes that the disputed domain names are confusingly similar to the trademarks.
The disputed domain names , and
are simply made up of the combination of Complainants' trademarks and the term “vietnam.”
Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. Gopan P.K.,WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”). Moreover, WIPO UDRP panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The Panel finds that the addition of the term “vietnam” to Complainants' trademarks does not alter the confusion with Complainants' marks that Internet users would experience.
The Panel also agrees with Complainants that the omission from the disputed domain names of the accents and circumflex appearing in Complainants' trademarks does not reduce the apparent similarity between the trademarks and the disputed domain names. As noted by another WIPO UDRP panel, “Although domain names are no longer restricted to the ASCII alphanumeric character set, it remains a common practice to reduce words comprising diacritics (eg, accents, circumflexes) to their lowercase alphanumeric ASCII forms for registration as domain names. It is also still not possible to include punctuation marks (except for the hyphen) in domain names. Words like “L'oréal” and “Lancôme” naturally become “loreal” and “lancome” respectively in domain name form.” L'Oreal, Lancôme Parfums et Beaute & Cie v. InfoChina ltd.,WIPO Case No. D2008-0981 (citing LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling,WIPO Case No. D2008-0226).
It follows that the disputed domain names are confusingly similar to Complainants' trademarks.
Therefore, the Panel concludes that the Complaint makes the required showing under Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) using the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainants allege that Respondent is not affiliated with Complainants and that Respondent did not have authorization to use the trademarks in the disputed domain names. In the absence of a response by Respondent, the Panel accepts these factual allegations as true. Complainants also allege that Respondent does not use the domain names for a bona fide offering of goods or services.
The Panel agrees. Respondent is not actively offering goods or services, or making use of the sites for any sort of other information or commentary that might support a finding of bona fide or fair use.
The Panel finds that the Complaint establishes a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain names.
The Panel rules therefore that Complainants have established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
These circumstances are not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, whether there are no conceivable legitimate uses of the disputed domain name by respondent, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainants' trademarks when Respondent registered the disputed domain names, for the following reasons.
First, Complainants' marks and associated businesses are well known. Second, Respondent registered three domain names incorporating Complainants' LANCÔME, GARNIER, and MAYBELLINE trademarks on the same day. Third, Complainants had pre-existing domain name registrations corresponding to each of these marks under the “.vn” ccTLD for Viet Nam well before registration of the disputed domain names. The Panel finds, therefore, that Respondent was aware of Complainants' trademarks when the disputed domain names were registered, and the Panel concludes that Respondent registered the disputed domain names in bad faith.
The Panel must still determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain names in bad faith.3 The record contains scant evidence relating to the four illustrative circumstances in paragraph 4(b) of the Policy, but the Panel nevertheless concludes that Respondent is also using the domain names in bad faith.
In many decisions involving inactive websites or so-called “passive holding,” WIPO UDRP panels have adhered to the approach outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In Telstra, the panel explored the question of which circumstances of inaction, or passive holding, beyond those identified in paragraphs 4(b)(i), (ii) and (iii) of the Policy, constituted use of a domain name in bad faith.
The Telstra panel explained that
“[t]his question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith.”
Following the approach of Telstra, the Panel finds that circumstances indicating bad faith use in this case include (1) Respondent's lack to employ the websites to make good faith use of the domain names, 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223; See Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, NAF Claim No. 94970; Revlon Consumer Prods. Corp. v. Yosef,WIPO Case No. D2000-0468 (citing cases in which panels found inaction constitutes bad faith); (2) the incorporation of Complainants' well-known trademarks in the disputed domain names; (3) Respondent's failure to respond to the Complaint; (4) Respondent's failure to respond further to Complainant's cease and desist and reminder letters despite its written promise to do so; and (5) a lack of conceivable legitimate uses of the disputed domain names by Respondent that would not be in violation of Complainants' trademarks.
Having refrained from replying to the allegations of the Complaint, Respondent has failed to rebut Complainants' contention that the registrations are being used in bad faith. The Panel therefore concludes under the circumstances that the disputed domain names were registered and are being used by Respondent in bad faith and that the requirements of the third element of Policy paragraph 4(a) are fulfilled. 7. Decision
For all 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 be transferred to Complainants as follows:
1. is to be transferred to Complainant Lancôme Parfums Et Beauté Et Compagnie.
2. is to be transferred to Complainant Laboratoire Garnier Et Compagnie.
3. is to be transferred to Complainant L'Oréal S.A.
Nayiri Boghossian
Sole Panelist
Dated: June 11, 2010
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