The Complainant is Lancôme Parfums Et Beauté & Compagnie of Paris, France, represented by Dreyfus & associés, France.
The Respondent is He Peng of Foshan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2014. On January 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2014, 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 January 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 30, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 7, 2014. 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
According to the Complainant, it is a subsidiary of L’Oréal, one of the international leaders and one of the world’s largest groups in the cosmetic industry. At Annex 5 to the Complaint is exhibited an extract from the website of the L’Oréal group which sets out, inter alia, a short history of the Complainant. It exhibits a sample of its advertising for which it has chosen “charismatic and fully accomplished women to be its ambassadresses”.
It points out that it sells a number of “best sellers” for skincare, makeup and fragrance. The trade mark LANCÔME was created in 1935 and achieved international success the same year with the presentation of Lancȏme fragrances at the world exhibition at Brussels in 1935.
Since then, Lancȏme has become well-known all over the world. It is the world’s number one luxury beauty brand on the selective skincare and makeup market. It is viewed as a symbol of French refinement and its skincare makeup fragrance products are successful all over the world as can be seen by the evidence adduced at Annex 7 to the Complaint. Lancȏme is number one in anti-ageing skincare. It is largely and very famous in France. It is also present worldwide and especially in China where the brand is intensively promoted. Innovative means of communication are used by the brand for the Chinese market, for example, a Lancȏme bus tour around key cities in China. The brand LANCÔME has also created “Rose Beauty” the first social network for beauty in China.
The Complainant adduces evidence that it owns numerous trademark registrations for the trade mark LANCȎME throughout the world including in China where the Respondent is located. At Annex 9 to the Complaint are copies of the Complainant’s Chinese trade mark registrations. The Complaint specifically relies upon the following:
1. International trade mark registration No.164395 LANCÔME, first registered on October 6, 1952 in Classes 3 and 21;
2. Chinese trade mark registration No.76096 LANCÔME, registered on October 7, 1987 in Class 3;
3. Chinese trade mark registration No.775926 LANCÔME, registered January 14, 1995 in Class 42;
4. French trade mark registration No.1557084 LANCÔME, registered October 25, 1989, renewed and covering services in Class 3 and 21.
The Complainant also adduces evidence at Annex 10 to the Complaint that the Complainant and its affiliates own many domain names including the trade marks LANCÔME such as:
registered on July 8, 1997
registered on December 9, 1999.
The Complainant submits that it has trade mark rights in the mark LANCÔME.
According to the Complainant, the disputed domain name directs to a website displaying an imitation of the trade mark LANCȎME. Such imitation consists in the use of the trade mark LANCȎME with a raised logo. The Complainant points out that the website appears to distribute diet products and displays images of Penelope Cruz, a film actress, who is one of the advertised ambassadresses of the Complainant’s brand.
The disputed domain name was registered on October 20, 2013.
In the absence of evidence from the Respondent, the expert accepts the truth of the above evidence adduced by the Complainant. 5. Parties’ Contentions A. Complainant
1. The Complainant submits that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. It points out that the generic Top-Level domain (“gTLD”) “.com” is irrelevant, the absence of a circumflex accent on the Respondent’s use of “lancȏmes” does not have any impact on the likelihood of confusion and the addition of a suffix letter “s” to the disputed domain name is insufficient to negate the similarities which exist between the disputed domain name and the Complaint’s trade mark.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant relies upon the fact that the Respondent is not affiliated with the Complainant in any way nor there is authorization by the Complainant to register and use the Complainant’s trade mark. Moreover it points out the Respondent is not known under the trade mark LANCȎME.
3. The disputed domain name was registered and is being used in bad faith. The Complainant relies upon the following:
(a) the Respondent knew or must have known of the Complainant’s trade mark and the date of the registration of the disputed domain name;
(b) the registration of the disputed domain name was not a coincidence;
(c) the disputed domain name is being used in bad faith because the Respondent uses the disputed domain name to direct Internet users to a website designed to look like the official website of the Complainant but which displays an imitation of the Complainant’s trade mark and logo. This is an improper use of the Complainant’s mark and is evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the evidence of use of the trade mark LANCȎME establishes that the Complainant has rights in the trade mark.
In support of the Complainant’s contention that the domain name is identical or confusingly similar to its trade mark LANCÔME, the Panel finds that the absence of the circumflex accent on the letter “o” on the disputed domain name does not have any material impact on the likelihood of confusion. There are previous UDRP decisions in support of this, including L'Oréal and Lancȏme Parfums Et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer,WIPO Case No. D2011-0524, also in LANCȎME PARFUMS ET BEAUTE & CIE L'OREAL v. 10 Selling, WIPO Case No. D2008-0226 where it was held by the panel that the suppression of the circumflex accent in the LANCME trade marks does not affect significantly the appearance or the pronunciation of the domain name and therefore does not have any impact on the likelihood of confusion. The Panel finds that the evidence in this case supports this view and it proposes to follow those earlier UDRP decisions.
The other distinction between the disputed domain name and the trade mark LANCȎME is the addition of the letter “s” in the disputed domain name. The Complainant submits that this is “a mere and obvious attempt to typo-squat the domain name” at issue and that a visual and oral comparison between the disputed domain name and the trade markLANCÔME confirms the assertion that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Complainant relies upon an earlier UDRP decision, F. Hoffman-La Roche AG v. PrivacyP, Domain Admin/Edwin Ilminovic, N/A,WIPO Case No. D2013-0945, which is authority for the proposition that the use of the letter “s” as a suffix at the end of the domain name only produces the impression of a plural form of the trade mark which means that the consumer will still be confused and identify the domain name as owned or related to the complainant.
In the Panel’s view, this decision was rightly decided. On the facts of this case, the Panel finds that the use of the letter “s” as a suffix is insufficient to distinguish the disputed domain name from the Complainant’s trade mark LANCȎME.
The Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the Panel’s view, the Complainant has established that the Respondent is not affiliated with the Complainant in any way nor has the Respondent been authorized by the Complainant to register and use the Complainant’s trade mark nor to seek registration of any disputed domain name incorporating the said trade mark. Moreover, as is pointed out by the Complainant, the registration of the trade mark LANCȎME long preceded the registration of the disputed domain name so there is no evidence of prior rights or legitimate interests for the Respondent in the disputed domain name before the date of the Complainant’s trade mark registrations.
To the contrary, the Complainant submits that the Respondent uses the disputed domain name to direct Internet users to a website selling diet products displaying the logo “lancomes” plus rose which is an imitation of the Complainant’s trade mark. This is additional to utilizing a picture of an “ambassadress” of the Complainant’s brand. The Panel finds that this is evidence that confirms that the Respondent at the date of registration of the disputed domain name was to create an association with the Complainant.
It therefore follows that the Complainant has established that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Complainant submits that it “seems obvious” that the Respondent knew or must have known of the Complainant’s trade mark at the time of the registration of the disputed domain name. It relies upon the fact that the Complainant’s trade mark is well known throughout the world in respect of successful products. It also relies upon the earlier UDRP decisions relating to the trade mark LANCȎME and in particular Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L’Oreal SA, L’Oreal USA Creative v. Therese Kerr,WIPO Case No. D2008-1748 when a panel decided that the trade mark LANCÔME was “well-known”.
Moreover, the Complainant submits that a trade mark search at the time of the registration of the disputed domain name would have revealed details of the Complainant’s trade mark registrations and that was proof of the Respondent’s bad faith. Even if the Respondent did not know how to perform a trade mark search online, a simple search on the Internet to a search engine such as Google would have revealed details of the Complainant’s presence and trade marks.
The Panel accepts this argument. On the evidence adduced by the Complainant and referred to in Section 4 above, it is abundantly clear to the Panel that the Complainant’s trade mark LANCÔME is well-known throughout the world and that in these circumstances (as is submitted by the Complainant) it is unlikely that registration of the disputed domain name would be coincidental. In these circumstances, the Panel finds that the disputed domain name was registered in bad faith.
The Complainant also submits that the disputed domain name was used in bad faith and in particular that the disputed domain name is used to direct Internet users to a website which is designed to look like an official website of the Complainant offering LANCÔME products and including a buying system. It submits that there is little doubt that many Internet users attempting to go to the Complainant’s website have ended up at the Respondent’s website. There is no reason for the Panel to doubt this. The website at the disputed domain name is clearly designed to at least create an association with the Complainant’s own online trading website.
The Complainant submits that this constitutes an improper use of its trade mark and is evidence of bad faith. The Panel is therefore entitled to and does find that the Respondent was using the disputed domain name to intentionally gain commercially by attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark. Alternatively, the Respondent intended to create “an impression or association with the Complainant and its products and services and profit therefor”.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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.
Clive Duncan Thorne
Sole Panelist
Date: February 20, 2014
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