The Complainant is Jeanne Lanvin Company of Paris, France, represented by Hoche Societé d'Avocats, France.
The Respondent is Xizhang Jiang of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2013. On February 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2013, 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.
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 the Respondent of the Complaint, and the proceedings commenced on February 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on March 28, 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.
The proceedings were conducted in English as this is the language of the registration agreement for the disputed domain name. 4. Factual Background
The Complainant is an haute couture house founded in Paris, France in 1889 by French fashion designer Jeanne Lanvin, which is in the business of creating, producing, advertising, and marketing designer clothing, shoes, handbags, fragrances, jewelry, fashionable accessories, and luxurious goods.
The Complainant’s products can be found in boutiques all over the world, including China, the Respondent’s country of record.
The Complainant registered the mark LANVIN in France in 1961 and currently holds numerous LANVIN trademark registrations worldwide, including China.
The Respondent, for its part, registered the disputed domain name on January 7, 2011.
At the time of this decision, the disputed domain name is inactive but once resolved to a website allegedly selling Complainant’s authentic LANVIN products, together with goods from Complainant’s competitors, and multiple apparel firms. 5. Parties’ Contentions A. Complainant
The Complainant’s factual and legal contentions can be summarized as follows:
i. The Complainant is the owner of the LANVIN mark, which is both registered and well-known in a number of countries throughout the world, and whose registration long predates that of the disputed domain name;
ii. LANVIN is also the commercial name of several companies affiliated with Complainant such as the Jeanne Lanvin Company in France, Lanvin Ltd. in the United Kingdom of Great Britain and Northern Ireland, Lanvin Asia Pacific in Hong Kong, China, Lanvin Japan, and Lanvin Inc. in the United States of America, etc;
iii. According to previous UDRP decisions, the fact that the disputed domain name incorporates Complainant’s LANVIN trademark in its entirety, is in itself sufficient to warrant a finding of confusing similarity;
iv. The association of the term “shop” to the LANVIN mark reinforces the likelihood of confusion as the disputed domain name refers to the action of selling, similarly to Complainant’s activity;
v. The Complainant’s prior trademark rights precede the registration of the disputed domain name by over 50 years and the Respondent is not an authorized seller or licensee of LANVIN products;
vi. The Complainant enjoys a widespread reputation in many countries throughout the world, including China, with regard to its LANVIN products such as bags, clothes, and shoes;
vii. In the absence of contrary evidence and satisfactory explanations from Respondent, the LANVIN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of association with the Complainant;
viii. Because the LANVIN mark benefits from a large media exposure, and the Complainant’s trademark registration for LANVIN in China, it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark rights at the time of registration of the disputed domain name;
ix. The disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of association with the Complainant’s LANVIN products;
x. The bad faith use of the disputed domain name results from the sale of counterfeit products on Respondent’s website;
xi. The products sold on the Respondent’s website are imitations of Complainant’s genuine LANVIN goods as demonstrated by the fact that some of the items pictured therein do not exist as such in Complainant’s catalogue, and are offered for sale at a substantially lower price;
xii. In summary, by registering and using a domain name that is confusingly similar to the Complainant’s widely known trademarks in order to sell counterfeit LANVIN products, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The gateway questions under paragraph 4(a)(i) of the Policy are whether the Complainant has trademark rights and the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain names resolve will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant proves to hold registered trademark rights as well as longstanding and widespread reputation in the mark LANVIN. The Complainant goes on to allege that the disputed domain name is confusingly similar to its registered trademark because the disputed domain name incorporates the Complainant’s mark in its entirety.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In adopting the consensus view, the Panel finds that “lanvin” is immediately recognizable within the disputed domain name as the Complainant’s well-known trademark.
Now, in comparing the LANVIN mark to “lanvinshop” being the relevant portion of the disputed domain name, and taking into account both the distinctiveness and the substantial goodwill of the Complainant’s mark, the Panel finds that the disputed domain name is confusingly similar to the LANVIN mark as the latter is wholly embodied in the disputed domain name. See Verizon Trademark Services LLC v. The Helard Group,WIPO Case No. D2012-0277 (several previous UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to complainant’s mark). A finding of confusing similarity is all the more warranted where, as here, the mark incorporated in the disputed domain name is well-known. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Ply, Ltd., WIPO Case No. D2001-0110 (The incorporation of a complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the complainant's trademark).
The presence of the generic word “shop” only reaffirms the confusing similarity between and the Complainant’s LANVIN mark, as Internet users are misled into believing that the Complainant’s fashionable goods are for sale on the website at the disputed domain name. See Kookai v. Somjit Pornpatcharapong,WIPO Case No. D2012-1429 (“shop” is a generic word, and as such, it does nothing to distinguish the disputed domain name from the complainant’s KOOKAI mark, but rather increases confusion amongst Internet users that it may be associated with the complainant, given that the complainant is in the fashion retail business).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LANVIN mark.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element of a complaint is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that: Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate the respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
“i. before any notice to you of the dispute, your use of, or 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 mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden of proof is on the Complainant to establish the Respondent’s absence of rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306.)
The Complainant asserts that the Respondent is not known by the disputed domain name, but nonetheless uses the latter for commercial purposes despite lacking any right to do so. On these credible assertions and the evidence presented by the Complainant regarding the use to which the disputed domain names has been subjected, the Panel finds that the Complainant has established a prima facie case against the Respondent.
In the absence of a Response, this Panel may draw appropriate inferences from the Respondent’s default. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Further, the screenshot tendered by the Complainant shows that, at least on February 18, 2013, the disputed domain name resolved to a website trading allegedly genuine LANVIN goods, together with goods marketed by Complainant’s competitors, and goods identified by multiple third party brands.
The items once advertised on the website at the disputed domain name are presumed by this Panel to be non-genuine because first, they were offered at a quarter of their regular price, as noted by Complainant; second, they were marketed outside of their regular distribution channels, namely exclusive boutiques and Complainant’s own online store; third, a particular lady’s shoes model pictured in the website is not even listed in the Complainant’s catalogue; and fourth, a number of features of that very same shoes model set apart by the Complainant, do not correspond to the features of genuine LANVIN shoes. See Jean Cassegrain S.A.S. v. Abel Magee,WIPO Case No. D2011-1572 (the panel agrees with the complainant that given that the bags shown in the respondent’s sites are offered in large numbers and at prices substantially lower than those of genuine Longchamp bags, the goods offered by the respondent are most likely counterfeit).
The offering of presumably spurious goods for sale is certainly not bona fide within the meaning of paragraph 4(c)(i) of the Policy, as it likely involves an illegal activity. See Guccio Gucci S.p.A. v. Edardy Ou,WIPO Case No. D2011-1028 (use of a trademark to sell what appears to be counterfeit goods using the complainant’s Gucci brand and other well-known brands is clearly not a bona fide use in relation to goods or fair use and is not noncommercial.)
As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or have 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] web site or location or of a product or service on your [the respondent’s] web site or location.”
The Complainant alleges that the Respondent registered the disputed domain name to create an impression of association with the Complainant’s LANVIN products. The Complainant further submits that in light of the widespread reputation of its LANVIN mark, the Respondent could not have been unaware of the Complainant’s trademark rights at the time of registration of the disputed domain name. Also because of the LANVIN mark’s extended reputation, the Complainant contends that Internet users are likely to be confused into thinking that the website at the disputed domain name has a connection with the Complainant.
Lastly, the Complainant puts forward that the Respondent was using the disputed domain name to offer what appears to be counterfeit goods bearing the LANVIN mark, with a clear intent for commercial gain.
In view of the global and longstanding use of the LANVIN mark, it is only reasonable for the Panel to assume that, under the circumstances, the Respondent registered the disputed domain name to cash in on the fame of the LANVIN mark, and on the reputation of Complainant, who is hailed as one of the oldest fashion houses in France still in operation. From these self-apparent motives, it is inferable that the disputed domain name was indeed registered in bad faith. See Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (where the selection of the disputed domain names is so obviously connected to the complainant’s well-known trademark, their very use by someone with no connection with the complainant suggests opportunistic bad faith.)
As for the counterfeiting allegation made by Complainant, even if unsupported with direct evidence or expert testimony, the Panel finds said contention plausible for the reasons explained in section 6.B supra. The presumption of counterfeiting has been held to constitute bad faith use within the meaning of the Policy. See IM Production v. 50448207 Qiang Pa MAXINTRADING(at)LIVE DOT COM,WIPO Case No. D2011-2098. (the respondent's use of the disputed domain name to sell presumably counterfeit goods under the complainant’s mark is evidence of bad faith use).
By the same token, in the Panel’s view, the unsavory association with presumably fake goods to which the Complainant’s LANVIN mark has been exposed is indicative of bad faith use under paragraph 4(b)(iv) of the Policy. See Lacoste Alligator S.A. v. Monique Marcil, Molou Hudong,WIPO Case No. D2012-0851 (by engaging in the sale of counterfeit imitations of the complainant’s LACOSTE products, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites, in violation of paragraph 4(b)(iv) of the Policy); see also Moncler S.r.l. v. Daniel Park,WIPO Case No. D2011-0488 (the respondent used the complainant’s known trademark to attract users to websites offering counterfeited MONCLER products, which constitutes evidence of the intention by the respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service on the respondent’s website).
In the premises, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith within the purview of the Policy.
The Complainant has therefore sustained its burden with respect to paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: April 11, 2013
Full & Egal Universal Law Academy