Complainant is Lancôme Parfums et Beauté et Compagnie of Paris, France, represented by Dreyfus & associés of France.
Respondent is Shi Jiaqi of JiangSu, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Guangzhou Ming Yang Information Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 1, 2011, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the disputed domain names. On March 2, 2011, Guangzhou Ming Yang Information Technology Co., Ltd 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 3, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 4, 2011, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of 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 March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. The Center received an email communication from the Respondent on March 10, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on April 11, 2011. 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 A. Complainant
Complainant, Lancôme Parfums et Beauté et Compagnie, is a compagnie incorporâtes in Paris, France. It is a subsidiary of L’Oreal, one of the world’s largest groups in the cosmetics industry (Annex 8 to the Complaint).
Complainant owns numerous LANCÔME trademark registrations throughout the world, including China (registered the mark covering goods in class 3 on October 7, 1977; registered the mark covering services in class 42 on January 14, 1995). B. Respondent
Respondent registered the disputed domain name on May 19, 2010 and on May 22, 2010, and used the websites to sell LANCÔME branded products and the Complainant competitor’s products. 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
Complainant owns numerous LANCÔME trademark registrations throughout the world, including trademark registrations in China in 1977 and 1995, trademark registration in the United States in 2005, and international trademark registration in 1952 (Annex 15-17 to the Complaint).
Complainant, its parent company and its affiliates also own numerous domain names incorporating the trademarks LANCÔME, such as , , , (Annex 18 to the Complaint).
The disputed domain names and are identical or at least confusingly similar with Complainant’s trademark.
The disputed domain names and incorporate Complainant’s trademark LANCÔME in its entirety.
The addition of a hyphen and the letters “us” or “use” in the disputed domain names are a minor difference. This addition is more likely to increase likelihood of confusion than to prevent confusion because Complainant has developed an active website at the address”www.”.
Regarding the suffix “.com” gTLD in the disputed domain names, it has been held in numerous decisions that the addition of the gTLD suffix does not affect the likelihood of confusion merely because it is necessary for the registration of the domain name itself.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names;
Respondent is not affiliated with Complainant in any way.
Complainant has not authorized Respondent to use and register its trademark or to seek the registration of any domain name incorporating said mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has never used the term “Lancôme” in any way before or after Complainant started its business.
The registration of numerous trademarks predated the registration of the disputed domain names by many years.
Respondent is not known under the name “Lancôme” or any similar term.
Respondent has so far neither used nor made any demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services.
In its email communication, Respondent explained that the disputed domain names have been parked and offered for sale at a price exceeding their registration cost (Annexes 3 and 13 to the Complaint).
Respondent is using the disputed domain names for generating revenues via pay-per-click advertising due to their proximity with Complainant’s mark LANCÔME and/or via the sale of the disputed domain names as the parking pages include a link to make an offer for the domain name.
The disputed domain names resolves to pages of commercial links in the field of cosmetics. Some of the links reproduce Complainant’s trademarks and marks of competitors. Some of the links direct to products of Complainant’s competitors.
The disputed domain names are identical to Complainant’s trademark and its official website “www.”, Respondent could not reasonably pretend it was intending to develop a legitimate activity.
(c) The disputed domain names were registered and are being used in bad faith.
(c.1) Registration in bad faith
Respondent knew or must have known Complainant’s trademarks LANCÔME at the time it registered the disputed domain names.
Complainant’s trademarks are well-known throughout the world. Complainant ranks first in the Chinese market (Annex 9 to the Complaint).
Respondent never denied knowledge of Complainant’s trademarks in its communications.
Respondent appears to have engaged in a pattern of conduct of registering domain names identical or similar to trademarks belonging to third parties to park such domain names, such as , , , and .
All these domain names resolves to pages of pay-per-click sponsored links (Annexes 4 and 30 to the Complaint).
(c.2) Use in bad faith
It is almost certain Respondent is aware of Complainant and its trademark. In light of this knowledge,
Respondent uses the disputed domain names to direct Internet users to pages of sponsored links in the field of cosmetics.
Respondent is taking advantage of the notoriety of Complainant’s mark and misleads Internet users as to the source, sponsorship, affiliation, or endorsement of its web pages.
The only purpose of the use of the disputed domain names on Respondent’s side appears to be to make financial gains via click-through commissions taking advantage of the notoriety and goodwill associated with Complainant’s trademark.
Respondent offered to sell the disputed domain names to Complainant, and Respondent’s parking pages still include a link to post a monetary offer for the disputed domain names. B. Respondent
Respondent claimed that disputed domain names and , do not have too many official connections or relationships with LANCÔME.
The existence of the disputed domain names does not harm the benefits of LANCÔME.
Complainant intended to keep the disputed domain names, and Respondent intended to recover his losses as well.1 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Respondent is familiar with the English language:
Respondent has replied to Complainant in English (Annex 3 to the Complaint).
Respondent had first registered the disputed domain names with the registrar Melbourne IT, Ltd, an Australian registrar whose website is in English only and whose registration agreement is in English as well. At that time, Respondent was also using a technical contact Yahoo Domains located in United States (Annex 4 to the Complaint),
The disputed domain names resolve to pages displaying many commercial links in English and few links in French, including a link to a form in English to contact the owner of the domain names.
The disputed domain names included the terms “us” and “usa”. These terms evoke United States where the official language is English.
(b) Complainant is located in France and has no knowledge of the Chinese language.
(c) The use of Chinese in the proceeding would impose a burden on Complainant.
(d) English is the language most widely used in international relations and one of the working languages of the Center.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0.”) further states: “ in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that the Complainant is a French company, and the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain names include English words “us” and “usa” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese speaker. In an email to Complainant (which was written in Chinese), Respondent mentioned he/she does not have a high level of English proficiency. (Annex 12 to the Complaint). However, the Panel finds evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) Respondent has replied to Complainant in English (Annex 3 to the Complaint and an email received from Respondent since filing of the Complaint); (b) Respondent had first registered the disputed domain names with an Australian registrar whose website is in English only and whose registration agreement is in English. At that time, Respondent was also using a technical contact Yahoo Domains located in United States (Annex 4 to the Complaint); (c) The disputed domain names resolve to pages displaying many commercial links in English and a few links in French, including a link to a form in English to contact the owner of the domain names; (d) the websites appear to have been directed to users in United States (particularly English speakers) rather than Chinese speakers; (e) the Center has notified the Respondent of the proceedings in both Chinese and English, and the Respondent has indicated no objection to the Complainant’s request that English be the language of the proceeding; (f) the Center informed the Respondent that it would accept a Response in either English or Chinese.
In addition, according to the WIPO Overview 2.0, “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” (paragraph 4.3.). The Panel did undertake limited factual research and visited the websites at the disputed domain names, and found that the disputed domain names indeed resolve to pages displaying many commercial links in English and a few links in French, including a link to a form in English to contact the owner of the domain names. It seems that the websites at the disputed domain names are two English-based websites and Respondent is apparently doing business in English through these websites.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademark LANCÔME (the “Trade Mark”) acquired through registration. The Trade Mark has been registered worldwide including in China, and enjoys a widespread reputation in the cosmetics industry (Annex 8 to the Complaint).
The disputed domain names and comprise the Trade Mark in its entirety. The disputed domain names only differ from Complainant’s trademark by the suppression of the circumflex accent on the “o” of LANCÔME, the addition of a hyphen in both domain names and the addition of “us” in one domain name and “usa” in the other.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065). In a previous case involving Complainant’s parent company in respect of the domain name , the panel found similarly that the addition of the word ‘china’ to the word ‘loreal’ does not serve to distinguish it from Complainant’s L’OREAL marks (L’Oreal v. Liao Quanyong,WIPO Case No. D2007-1552).
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the Trade Mark.
The Panel therefore holds that the Complaint fulfils the first condition 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 Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the disputed domain names; and
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview, paragraph 2.1 and cases cited therein)
Complainant has rights in the Trade Mark (since 1977) which precede the Respondent's registration of the disputed domain names (in 2010) by over 30 years. According to Complainant, Respondent is not an authorized dealer of LANCÔME branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “lancome” in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the Trade Mark or to apply for or use any domain name incorporating the Trade Mark;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names on May 19, 2010 and on May 22, 2010. The disputed domain names are identical or confusingly similar to Complainant’s Trade Mark and its official website”www.”.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, the disputed domain names resolve to pages of commercial links in the field of cosmetics. Some of the links reproduce Complainant’s Trade Mark and marks of competitors. Some of the links directs to products of Complainant’s competitors.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant enjoys a widespread reputation in the Trade Mark with regard to its products. Complainant has registered its LANCÔME trademark worldwide, including registration in China since 1977. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel therefore finds that the Trade Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
In its communications, Respondent explained that the disputed domain names have been parked and offered them for sale at a price exceeding their registration cost (Annexes 3 and 13 to the Complaint). Based on the evidence provided by Complainant, Respondent is using the disputed domain names for generating revenues via pay-per-click advertising due to their proximity with Complainant’s mark LANCÔME and/or via the sale of the disputed domain names as the parking pages include a link to make an offer for the domain names. It seems that these also fit in the circumstances analogous to paragraph 4(b)(i). (See National Spiritual Assembly of the Bahá'ís v. Buy This Name,WIPO Case No. D2001-1302; Deutsche Telekom AG v. AdImagination,WIPO Case No. DWS2006-0001).
Moreover, Respondent has chosen not to formally respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered by Respondent in bad faith with the intent to create an impression of an association with Complainant’s products. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering the Complainant’s LANCÔME products.
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the Trade Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve. In other words, Respondent has through the use of confusingly similar domain names created a likelihood of confusion with the Trade Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepages of the disputed domain names, potential partners and end users are led to believe that the websites at the disputed domain names and are either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondent has not formally responded to the Complaint. The Panel therefore concludes that the disputed domain names were used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use domain names which are confusingly similar to Complainant’s well-known Trade Mark, intended to ride on the goodwill of Complainant’s Trade Mark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites on to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 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 and be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: April 26, 2011
1 Based on a translation of the email that the Respondent sent to the Center on March 10, 2011.
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