The Complainant is Lancel International SA of Bellevue, Geneva, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Ret Rete a/k/a Che Too of Shanxi, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , and are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 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. On July 9, 2013, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of the proceeding. On July 9, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the 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 the Respondent of the Complaint, and the proceedings commenced on July 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 12, 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. 4. Factual Background
The Complainant, Lancel International SA, and its affiliates operate the house of Lancel for more than 100 years.
The house of Lancel was established in 1876 and has become a prestigious brand for luxury leather goods. Lancel goods are distributed exclusively through a worldwide network of boutiques and authorized retailers.
The Complainant operates more than 60 boutiques in the Americas, Europe, the Middle East, Africa and Asia.
The Complainant is the owner of numerous trademark registrations for the LANCEL marks around the world. For example:
Japanese registration No. 730237 – LANCEL, with the registration date of January 18, 1967; French registration No. 1359817 – LANCEL, with the registration date of June 20, 1986; Japanese registration No. 2475127 – LANCEL & design, with the registration date of November 30, 1992; Community Trademark No. 010587293 – LANCEL, with the registration date of June 21, 2012; Chinese registration No. 646749 - LANCEL, with the registration date of June 21, 1993; and etc.
The Complainant, through its affiliates, has also developed a presence on the Internet and is the owner of the domain name .
The disputed domain names , , , , , , , , and were registered by the Respondent on July 9, 2012.
The disputed domain names resolve to a parking webpage with links to third parties websites. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademark LANCEL.
The Complainant further argues that the LANCEL mark is very famous and well-known around the world and is identified with the Complainant.
The Complainant further contends that the additional terms, included in the disputed domain names, are merely generic words in English or French that do not avoid a finding of confusing similarity.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its LANCEL trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant argues that the disputed domain names were improperly registered and are being improperly used. The Complainant argues that some of the disputed domain names are being used to advertise third party websites that offer for sale products of the Complainant’s competitors or counterfeit goods.
The Complainant further argues that the disputed domain names are being used to passively hold disputed domain names containing the famous LANCEL mark.
The Complainant further argues that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.
The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s well-known trademark when registering the disputed domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue - Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain names is Chinese.
The Complainant requested that the language of proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain names ,, , , , , , , and are primarily in English as they include words in the English language, namely, “shop”, “store”, “mall”, “my”, in addition to the term “lancel”.
b) The disputed domain names are comprised of Latin characters.
c) The Respondent did not object to the language of the proceeding being English.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the mark LANCEL around the world. For example: Japanese registration No. 730237 – LANCEL, with the registration date of January 18, 1967; French registration No. 1359817 – LANCEL, with the registration date of June 20, 1986; Japanese registration No. 2475127 – LANCEL & design, with the registration date of November 30, 1992; Community Trademark No. 010587293 – LANCEL, with the registration date of June 21, 2012; Chinese registration No. 646749 - LANCEL, with the registration date of June 21, 1993; and etc.
The Complainant, through its affiliates, is also the owner of the domain name .
The disputed domain name differs from the registered trademark LANCEL by the additional prefix “fr”, the additional suffix “sac” and the additional generic Top-Level Domain (“gTLD”) “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional words “pas cher” and “mall”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional words “pas cher” and “shop”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional words “pas cher” and “store”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional words “sac” and “mall”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional words “sac” and “shop”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional words “sac” and “store”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional hyphen, the additional word “store”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional word “my”, and the additional gTLD “.com”.
The disputed domain name differs from the registered trademark LANCEL by the additional prefix “my”, the additional suffix “shop” and the additional gTLD “.com”.
The Panel finds that the Complainant’s trademark, LANCEL, is the dominant element in the disputed domain names.
The difference between the disputed domain names and the Complainant’s trademark are the additional descriptive terms “store”, “shop”, “mall” and “my” in the English language, and the descriptive terms “sac” (bag) and “pas cher” (cheap) in the French language. The addition of these descriptive terms does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s mark LANCEL (See Hungry Machine, Inc. v. Zhao Fuzhi,WIPO Case No. D2011-1201; and Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Kwang W. Choi,WIPO Case No. D2010-0854).
Similarly, the addition of the brevity “fr”, referring to France or French goods, does not serve to sufficiently distinguish between the disputed domain name and the Complainant’s trademark. On the contrary, the lack of distinctiveness is especially noticeable regarding the addition of the brevity “fr”, as the Complainant’s goods are known to be originating from France.
Previous UDRP panels have found that the mere addition of a non-significant element does not sufficiently differentiate the domain names from the registered trademarks: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Also, the addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLDs “.com” is without legal significance since the use of a gTLD is technically required to operate the domain names.
Therefore, under the circumstances of this case, the Panel finds that the Complainant has met its burden of establishing that the Respondent’s disputed domain names are confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests of respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its LANCEL trademark or a variation thereof. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns trademark rights in the LANCEL mark that were registered as early as 1967.
The Respondent’s bad faith is suggestive, in these particular circumstances, in which the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain names, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain names are resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain names resolved to.
As determined earlier, the disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent’s use of the highly distinctive trademark, owned by the Complainant, within the disputed domain names is suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:
“By registering and using the Domain Name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent” (See Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint. The failure to respond in this case, leads the Panel to conclude that the disputed domain names were registered and are being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
The Complainant submitted evidence showing that the Respondent was and still is using the disputed domain names to promote third party goods, some of which are, on their face, identical or competitive to the goods being offered by the Complainant.
In the Panel’s view, using the disputed domain names to promote similar or identical goods to the goods being offered by the Complainant, without the approval or authority of the Complainant and without any disclosure as to the relationship (or lack thereof) between the Complainant and the Respondent, is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Finally, the Panel considers the mere addition of the brevity “fr” indicating the origin of the goods to be a further misleading element specifically selected in bad faith to mislead consumers and create a likelihood of confusion which will result in the diversion of Internet traffic to the disputed domain names, all for the commercial benefit of the Respondent.
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the distinctiveness of the Complainant’s trademark and the Respondent’s use of the disputed domain names, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 names , , , , , , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: August 22, 2013
Full & Egal Universal Law Academy