The Complainant is Jeanne Lanvin Company of Paris, France, represented by Hoche Societé d'Avocats, France.
The Respondent is Jay Lee of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2013. On May 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 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 May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2013.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on June 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 Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement with the Registrar, a copy of which has been provided by the Complainant. 4. Factual Background
The Complainant is one of the oldest French fashion house still in activity, having been founded in Paris in 1889 by French fashion designer Jeanne Lanvin. Its business activity is to create, manufacture, produce and market designer clothing, shoes, handbags, fragrances, jewelry, fashionable accessories and luxury goods.
The Complainant’s products can be found in boutiques all over the world.
The Complainant registered the mark LANVIN in France in 1961 and currently holds numerous LANVIN trademark registrations worldwide (together, "the Mark").
The Complainant owns and uses for its main website the domain name.
The disputed domain name was registered on April 9, 2012. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights and is confusingly similar to the Mark as the disputed domain name, , contains the Mark in its entirety. The Complainant also asserts that the addition of the generic term “shop” actually increases the confusing similarity as the disputed domain name refers to selling, which is the Complainant's activity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent has never been commonly known by the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and is not making a legitimate noncommercial or fair use of the disputed domain name but instead is using the disputed domain name in connection with a website selling products similar to those offered by the Complainant.
(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain. Furthermore, the Complainant submits that the Respondent acted in bad faith because it knew or should have known about the Complainant's rights in and to the Mark when registering the disputed domain name but nevertheless proceeded for the purpose of creating an impression of being associated with the Complainant, thus sowing confusion as to the source, sponsorship or endorsement of the website to which the disputed domain name resolves.
(v) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent’s registration and use of the disputed domain name obviously exploits the widespread reputation and large media exposure of the Mark.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the deadline set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the assertions made in the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. B. Requirements of Paragraph 4(a) of the Policy (i) Identical or Confusingly Similar
In comparing the Mark with the disputed domain name , it is evident that the latter consists solely of the Mark, followed by the generic term “shop”.
The addition of generic terms does not serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
It is also well-established that the specific generic top level of a domain name such as “.net”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademark.
The Panel finds that the disputed domain name is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing the elements of paragraph 4(a)(ii) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name, or uses a corresponding name in a business.
The disputed domain name resolves to a website that offers for sale products similar to those of the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name and (ii) is not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name. (iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name identical or similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
The Panel notes that passing off as the Complainant generated numerous UDRP proceedings. See Jeanne Lanvin Company v. Li piaosa,WIPO Case No. D2013-0339; Jeanne Lanvin Company v. mu mengui,WIPO Case No. D2013-0340; Jeanne Lanvin Company v. Jia Nongdeng,WIPO Case No. D2013-0341; Jeanne Lanvin Company v. Ge Muqie,WIPO Case No. D2013-0342; Jeanne Lanvin Company v. Vivi Wei,WIPO Case No. D2013-0343 and Jeanne Lanvin Company v. Xizhang Jiang,WIPO Case No. D2013-0344.
The Panel therefore considers that the notoriety of the Mark makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092. Where the respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name, such conduct may also be a demonstration of bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Here, the Complainant has argued that the disputed domain name is used to divert Internet users for commercial gain, which, coupled with the specificity of the Complainant's activity, makes any good faith use utterly implausible.
Besides, some UDRP panels have held that in certain circumstances, persons or entities who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See paragraph 2(b) of the Policy; Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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.
Louis-Bernard Buchman
Sole Panelist
Date: July 12, 2013
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