The Complainant is Lancôme Parfums Beauté et compagnie of Paris, China.
The Respondent is 湖南澳利经贸发展有限公司 (a limited company) of Changsha city, Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2015. On June 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2015, 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 June 24, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On June 26, 2015, the Complainant confirmed by email to the Center its request that English be the language of the proceeding. The Respondent did not submit any comment within 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 in English and Chinese, and the proceedings commenced on July 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on August 11, 2015. 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 is a subsidiary of L'Oreal, a French group specialized in the field of cosmetics and beauty care. The latter was formed in 1909 and is today one of the world's largest groups in the cosmetics business. It is present in over 130 countries with 77,000 employees.
The Complainant states the LANCôME trade mark is a top brand in the market of cosmetics and skincare products for women and a well-known mark all over the world. The LANCôME trade mark is intensively promoted in many countries including in China. The Complainant owns numerous trade mark registrations for LANCôME throughout the world. It has an International Registration (No. 164395) dating from October 6, 1952 as well as Chinese Registrations (Nos. 76096 of October 7, 1977 and 775926 of January 14, 1995).
The Complainant is also the owner of many domain names comprising the LANCôME trade mark, including which was registered on July 8, 1997.
The disputed domain name was registered on November 26, 2014. It resolves to an inactive page.
Prior to the filing of the Complainant, the Complainant sent a cease and desist letter on March 27, 2015 to the Respondent via registered mail and email, requesting a transfer of the disputed domain name to the Complainant. No reply was received from the Respondent despite reminders sent. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical and/or confusingly similar to its LANCôME trade mark (paragraph 4(a)(i) of the Policy). The disputed domain name reproduces the Complainant's well-known LANCôME mark in its entirety. The absence of the circumflex accent in the letter "o" in the disputed domain name does not have any impact on the issue of confusing similarity and neither does the generic Top-Level Domain, since it is necessary for the registration of the disputed domain name.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). This is supported by the fact that:
(i) the disputed domain name was registered long after the LANCôME trade mark was registered;
(ii) the LANCôME trade mark is so famous that the Respondent cannot reasonably pretend to be legitimately developing an activity through the disputed domain name;
(iii) the Respondent is not commonly known by the name Lancôme, is not in any way affiliated with the Complainant, nor authorized or licensed to use the LANCôME trade mark in a domain name registration;
(iv) there is no evidence that the Respondent has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and
(v) the Respondent never replied to the Complainant's cease and desist letter.
Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). It is implausible that the Respondent was unaware of the Complainant and its rights in the LANCôME mark when it registered the disputed domain name. In light of the reputation of the LANCôME mark, the Respondent's reproduction of the mark in its entirety in the disputed domain name proves it was aware of the Complainant's mark. It is hard to believe, in this day and age of the Internet and advancements in information technology whereby the reputation of brands and trade marks transcends national borders, that the Respondent was unaware of the Complainant and its trade mark at the time it registered the domain name. The Respondent neither tried to defend its rights nor explained its choice of the disputed domain name. The fact that the disputed domain name is not put to active use does not mean that it is being used in good faith. A passive holding of the disputed domain name does not preclude a finding of bad faith. The reproducing of a famous trade mark in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules states that: "[u]nless 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 Registration Agreement in this case was Chinese. The Complainant requested that English be the language of the proceeding as it is located in France and has no knowledge of the Chinese language. The translation costs involved would very likely be higher than the overall cost of the administrative proceeding and impose a considerable burden on the Complainant. Moreover, English is the primary language for international relations and one of the working languages of the Center.
Paragraphs 10(b) and (c) of the Rules provide that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case"; and
"(c) The Panel shall ensure that the administrative proceeding takes place with due expedition …".
The Panel determines that it would be appropriate in this instance for English to be the language of the proceeding. The Panel notes that the disputed domain name comprises a word that is not only in Latin characters but the name of a well-known brand of cosmetics of European origin. It reflects (albeit not conclusively) a level of familiarity and/or interest (on the Respondent's part) in brands or items emanating from the west. The Panel is mindful of the importance of ensuring that the administrative proceeding takes place with due expedition. Requiring the Complainant to translate all the documents would delay matters significantly. Considering that the Respondent was given the opportunity to respond on the issue but did not object to the Complainant's request, the Panel concludes that it would be equitable to proceed with English being the language of the proceeding. B. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark LANCôME. The entire mark has been adopted in the disputed domain name. The fact that the circumflex accent does not appear over the letter "o" in the disputed domain name is generally of no relevance to the issue of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark. The absence of the accent alone cannot avoid a finding of confusing similarity and the internationalized Top-Level Domain ".网址", which means "Internet site" or "network", may be disregarded when contemplating the issue of whether paragraph 4(a)(i) of the Policy has been satisfied by the Complainant.
The Panel finds that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The LANCôME trade mark is, without doubt, a well-known trade mark in cosmetics and on the face of it, one cannot envisage that the Respondent has been commonly known by the disputed domain name. There is also no evidence that the Respondent has been making preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant is required to establish a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). The burden of production accordingly shifts to the Respondent to show how it has rights or legitimate interests in the disputed domain name. Bearing in mind the extent of fame of the LANCôME trade mark, the Respondent would have had to establish with concrete and persuasive evidence of how it, especially as a Chinese legal entity, could have rights or legitimate interests in the disputed domain name.
In failing to file a Response, the Panel has no basis to find otherwise than that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel agrees with the Complainant that this is a case of opportunistic bad faith and the circumstances herein are such that the Panel finds that the disputed domain name has been registered and used in bad faith.
In this regard, the Panel finds guidance from the principles mentioned in the case of Lego Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494, wherein the panel held as follows:
"This Panel agrees with previous Policy decisions to the effect that 'knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith". Caixa D'Estalvis i Pensions de Barcelona ('La Caixa') v. Eric Adam,WIPO Case No. D2006-0464. See also Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Reuters Limited v. Global Net 2000, Inc., supra. Also, as indicated in another UDRP case, 'it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products'. BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325.
[…]
The consensus view in the WIPO URDP Panel decisions has been that '[t]he lack of active use of the domain name does not as such prevent a finding of bad faith', and that a panel must examine such circumstances as 'complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name'. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2). See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. María José Catalán Frias,WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, supra."
The global fame of the trade mark in this instance is such that it calls on the Respondent to explain its choice of the disputed domain name. In the absence of any Response from the Respondent, the only reasonable conclusion the Panel can arrive at is that by registering the disputed domain name, the Respondent's intention has been ultimately to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark (paragraph 4(b)(iv) of the Policy).
The Panel finds that the Complainant has established the requirements of 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.
Francine Tan
Sole Panelist
Date: August 13, 2015
Full & Egal Universal Law Academy