The Complainant is Lancôme Parfums Beauté et compagnie of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Eva Lee of Fushan, Guangdong, China / YinSi BaoHu Yi KaiQi of Beijing, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 10, 2016, 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 March 10, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 11, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 21, 2016.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 27, 2016. 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 belongs to a French industrial group, L'Oréal, which is specialized in the field of cosmetics and beauty.
The Complainant has produced registration information for the following trademarks, inter alia:
1. LANCÔME, International trademark, Registration No. 164395, registered on October 6, 1952; and
2. LANCÔME, Chinese trademark, Registration No. 76096, registered on October 7, 1987.
According to the WhoIs data, the Disputed Domain Name was registered by the Respondent on January 15, 2015, and will expire on January 15, 2020. 5. Parties' Contentions A. Complainant
The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name differs from the Complainant's trademark only by the absence of circumflex accent on the letter "o" and the addition of the generic term "decor". The circumflex does not have any impact on the likelihood of confusion nor does the generic term "decor".
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The registration of the LANCÔME trademark preceded the registration of the Disputed Domain Name for years. The Respondent is not commonly known by the name of LANCÔME, in any way affiliated with the Complainant, nor authorized or licensed to use the LANCÔME trademark, or to seek registration of any domain name incorporating the LANCÔME trademark. The Respondent did not demonstrate use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent further never answered the Complainant's cease-and-desist letter.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
It is implausible that the Respondent was not aware of the Complainant's LANCÔME trademark when the Disputed Domain Name was registered, since LANCÔME trademark is well-known throughout the world including China. Meanwhile, a quick trademark search on "lancôme" would have revealed to the Respondent the existence of the Complainant's LANCÔME trademark. Given that the Disputed Domain Name is confusingly similar to the Complainant's LANCÔME trademark, such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site. Passive holding does not preclude a finding of bad faith. Reproducing the Complainant's famous LANCÔME trademark in a domain name to attract Internet users to an inactive web site 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 6.1 Language of Proceeding
Paragraph 11(a) of the Rules provides 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 Rules allow the Panel to determine the language of the proceeding 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 the proceeding. 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 proceeding should not be 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). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states: "in 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 Registration Agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English:
(1) The Panel finds that the Complainant is not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(2) The Center's communications to the Respondent have used both English and Chinese, and ample opportunity has been given to the Respondent to object to the Complainant's request. The Respondent did not reply to the Center. 6.2 Identity of the Respondent
The Complainant had previously filed its Complaint regarding the Disputed Domain Name against the privacy shield "YinSi BaoHu Yi KaiQi" with the Center. The Complainant was later informed of the identity and contact details of the underlying registrant of the Disputed Domain Name.
According to the paragraph 1 of the Rules, the Respondent means the holder of a domain-name registration against which a complaint is initiated. Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant (see paragraph 4.9 of WIPO Overview 2.0). The Panel also found that since the Registrar has confirmed the identity of the registrant of the Disputed Domain Name as "Eva Lee" and provide her relevant contact information, the Panel considers that the Respondent in this case should be Eva Lee / YinSi BaoHu Yi KaiQi. 6.3 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 established that it is the owner of the LANCÔME trademark.
The Disputed Domain Name incorporates the LANCÔME trademark in its entirety, only without the circumflex accent on the letter "o", the addition of the generic term "decor" and the generic Top-Level Domain ("gTLD") ".com". The addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes are insignificant changes, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy (L'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer,WIPO Case No. Case No. D2011-0524). The generic term "decor" does not distinguish the Disputed Domain Name from the Complainant's LANCÔME trademark, either. The only distinctive part of the Disputed Domain Name is still "lancome". As for the applicable top-level suffix such as ".com" in the Disputed Domain Name, it is a consensus view that it is usually disregarded under the confusing similarity test (paragraph 1.2 of WIPO Overview 2.0).
According to the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's LANCÔME trademark. 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 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 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."
The Complainant has established that it is the owner of the LANCÔME trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant's trademark in the Disputed Domain Name or otherwise.
Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. As such, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent does not provide any allegation or evidence indicating that before any notice of the dispute it used or demonstrably prepared 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. According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent's name or that the Respondent is commonly known by the name used in the Disputed Domain Name. No evidence indicates that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
Having considered the above, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and in the absence of any reply from the Respondent, has therefore 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 provider], 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".
The Complainant's LANCÔME trademark has been registered in many countries, including China long before the Disputed Domain Name was registered. The Respondent chose the LANCÔME trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected "lancome" as used in the Disputed Domain Name for any reason other than the reputation of the trademark. Such intentional registration shows the bad faith of the Respondent. Thus, the Panel concludes that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, while the Disputed Domain Name currently resolves to an inactive web site, the Panel notes the prevailing opinion of numerous WIPO UDRP panels have held that passive holding of a domain name does not prevent a finding of bad faith use. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which is also cited by the Complainant. The Complainant has established that its LANCÔME trademark enjoys a wide reputation. The Respondent did not provide any evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Name. Meanwhile, according to the Center's delivery record of the Complaint to the Respondent, the Respondent has provided or failed to correct, false contact details. The Respondent also failed to respond to the Complaint. Therefore, the Panel concludes that the current passive holding of the Disputed Domain Name constitutes use 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. 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.
Peter J. Dernbach
Sole Panelist
Date: May 5, 2016
Full & Egal Universal Law Academy