The Complainant is Lancôme Parfums et Beauté et Compagnie of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Zhangli of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is 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 25, 2013. On July 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 26, 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 August 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2013.
The Center appointed Peter Dernbach as the sole panelist in this matter on September 3, 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of the trademark LANCÔME, which has been registered in many countries, inter alia:
a. Trademark of the United States, Registration No. 3022836, registered on December 6, 2005.
b. Trademark of the People’s Republic of China, Registration No. 76096, registered on October 7, 1977.
(ii) The Complainant has used the trademark LANCÔME on which the Complaint is based, on its cosmetic and perfume products.
(iii) The Disputed Domain Name was registered on July 29, 2009. 5. Parties’ Contentions A. Complainant
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains the “lancome” element which only differs from the Complainant’s trademark by the suppression of the circumflex accent on the O of LANCÔME; therefore, the Disputed Domain Name is at least confusingly similar to the Complainant’s LANCÔME trademark. The incorporation of a common abbreviation “hk” for the geographical area Hong Kong as the prefix to the Disputed Domain Name would merely increase the likelihood of confusion to Internet users that the web site to which the Disputed Domain Name resolves was set up to dedicate for consumers in Hong Kong. The top-level domain “.com” is irrelevant for the purpose of determining whether the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never authorized nor otherwise licensed the Respondent to use the Complainant’s trademark LANCÔME, and yet the Respondent has been offering cosmetics by reference to the LANCÔME trademark for sale via the web site to which the Disputed Domain Name resolves while presenting the copyright notice as “LANCOME BEAUTY INTERNATIONAL GROUP (HONG KONG) LIMITED”.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by offering cosmetic products for sale with reference to a mark “lancome” which is confusingly similar to the Complainant’s LANCÔME trademark. The fact that the web site to which the Disputed Domain Name resolves displays a copyright notice as “LANCOME BEAUTY INTERNATIONAL GROUP (HONG KONG) LIMITED”, creates additional confusion for the public as to the source, affiliation, sponsorship or endorsement of the web site and the products offered for sale thereon, thereby showing that the Respondent registered and is using the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Language of Proceedings
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 Registrar confirmed, in its email of July 26, 2013, that the Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requested, in an email dated July 30, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Complainant is not familiar with Chinese due to its nationality. Second, the fact that the Disputed Domain Name includes Latin characters and the web site to which the Disputed Domain Name resolves contains both English and Chinese suggests that Respondent has knowledge of English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings 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 proceedings. 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). The language finally decided by the Panel for the proceedings should not be prejudicial to either 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 (“WIPO Overview 2.0”) further states:
“[I]n 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”. (See paragraph 4.3 of WIPO Overview 2.0).The Panel notes the following facts:
(i) The Respondent’s web site to which the Disputed Domain Name resolves appears to contain content in English language, which indicates that the Complainant is familiar with the Complainant’s requested language.
(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given the opportunity to object to the Complainant’s request that English be the language of proceeding. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceeding. The Panel finds that the Respondent has been given a fair opportunity to object, and has not done so.
(iii) The Panel finds that the Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(iv) The Respondent has shown no interest in responding and requiring the Complainant to translate the Complaint into Chinese.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has produced registration certificates of the trademark herein establishing that the Complainant is the owner of LANCÔME trademark in many countries and is entitled to act in order to recover and register the Disputed Domain Name. Therefore, the Panel finds that the Complainant has rights in the LANCÔME trademark sufficient to file this UDRP Complaint.
It has been concluded in many previous UDRP decisions that a disputed domain name that incorporates a trademark with the suppression of the circumflex accent in that trademark does not significantly affect the appearance or the pronunciation enough to distinguish the disputed domain name from the trademark in which the complainant has rights (See LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226; Microsoft Corporation v. M a.k.a. Tarek Ahmed,WIPO Case No. D2000-0548; and, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489). Also, it is established that the addition of a descriptive or geographical term to the disputed domain name typically does not sufficiently differentiate the disputed domain name from the trademark (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534; Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the Top-Level Domain (for example, “.com” and “.net”) may be disregarded (GA Modefine SA v. Yonghui Huang,WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194).
In the present case, the Disputed Domain Name contains the element of “lancome” which differs from the Complainant’s LANCÔME trademark only by the suppression of the circumflex accent on the O of LANCÔME, and the addition of a non-distinctive descriptive geographical indicator “hk” as a prefix. The LANCÔME element is still immediately recognizable as the Complainant’s’ trademark. The Panel finds that the Disputed Domain Name is not sufficiently different to distinguish the Disputed Domain Name from the Complainant’s trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the present case, the Complainant has established its ownership of the LANCÔME trademark. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Name or otherwise.
The Panel notes that the registrant of the Disputed Domain Name is “Zhangli”, and there is no evidence in the record to suggest that the Respondent might be commonly known by any name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
Furthermore, the fact that the Respondent uses the Disputed Domain Name to resolve to a web site which offers cosmetic products by reference to a “lancome” mark that is confusingly similar to the Complainant’s LANCÔME trademark for sale without accurate disclosure of the relationship between the Respondent and the owner of the said trademark but with the false suggestion of a copyright notice as “LANCOME BEAUTY INTERNATIONAL GROUP (HONG KONG) LIMITED” is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Disputed Domain Name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production then shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not provide any allegation or evidence indicating that they have rights or legitimate interests in the Disputed Domain Name; therefore, it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet Users to the web site at the Disputed Domain Name and that such use cannot be considered a bona fide offering of goods or legitimate noncommercial or fair use.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[…]
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
In relation to bad faith at the time of registration, the Panel notes that the Complainant’s trademark has been registered in many countries around the world and become well known in many countries prior to the registration of the Disputed Domain Name in 2009. The Respondent’s choice to incorporate the confusingly similar element of LANCÔME as the primary distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith and the subsequent use of the Disputed Domain Name to resolve to a web site which offers cosmetic products for sale by reference to a “lancome” mark that is confusingly similar to the Complainant’s LANCÔME trademark further shows that the Complainant’s trademark was chosen for the Disputed Domain Name in bad faith. Further, the Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the Panel notes that the Disputed Domain Name resolves to a web site offering sales of cosmetic products with reference to a “lancome” mark that is confusingly similar to the Complainant’s LANCÔME trademark and the Respondent obtains commercial advantage by attracting Internet users to the web site to which the Disputed Domain Name resolves. Therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion and the Disputed Domain Name is being used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: September 14, 2013
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