The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / zhou mu yao, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 28, 2021. The Center verified that the Complaint, together with the amended 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 July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2021. The Center appointed Jon Lang as the sole panelist in this matter on August 6, 2021. 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 French industrial group specializing in the field of cosmetics and beauty. It has a portfolio of 36 brands, employs 86,000 employees, and is present in 150 countries. Lancôme Parfums Beauté et Cie (hereafter Lancôme), a subsidiary of the Complainant, was created in 1935 by Armand Petitjean. Lancôme is well known all over the world with a presence in 130 countries, including China and communicates with its customers there through the website at “www.lancome.cn” that resolves to “www.lancome.com.cn”. China is Lancôme’s second-biggest country in terms of sales. It owns over 169 shops in more than 80 cities all over China. The Complainant owns numerous trademark registrations around the world for LANCOME including International trademark O LANCÔME No. 666567, registered on December 26, 1996, designating, amongst other countries, China, and European Union trademark; LANCOME No. 018240688, registered on September 3, 2020. Lancôme also owns the China trademark LANCÔME No. 76096, registered on October 7, 1977. In addition, the Complainant and its affiliates operate, amongst others, the following domain names: The Domain Name The following is brief summary of the main assertions of the Complainant. General Lancôme has quickly become the number one luxury beauty brand in the selective women’s skincare and make-up market. It is number one in anti-ageing skincare and successfully combines scientific expertise and an intuitive understanding of women's needs. Its skincare, make-up, and fragrance products are successful all over the world. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights The Domain Name reproduces entirely the LANCÔME trademark but also includes the generic term “lady”. The Domain Name is identical or at least confusingly similar to the Complainant’s LANCÔME trademark. The Domain Name differs from the Complainant’s trademark only by the absence of a circumflex accent on the letter “o” and the presence of the generic term “lady”. However, the absence of the circumflex accent does not have any impact on the likelihood of confusion. As for the generic term “lady”, the use of this term only increases the likelihood of confusion since it corresponds to the main consumer base of the Complainant’s brand. Thus, the Domain Name could mislead Internet users into believing that it is owned by the Complainant in order to promote its products. As such, there might be a risk of phishing which constitutes a security risk to the Complainant’s customers. The extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and Domain Name. By registering the Domain Name, the Respondent has created a likelihood of confusion with the Complainant’s trademark and it is likely that it could mislead Internet users into thinking that it is, in some way, associated with the Complainant. The Respondent has no rights or legitimate interests in respect of the Domain Name The Respondent has no prior rights or legitimate interests in the Domain Name. Registration of the LANCÔME trademark preceded registration of the Domain Name. The Domain Name is so similar to the famous LANCÔME trademark that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the Domain Name. The Respondent is not commonly known by the name “lancome” or 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 such trademark. The Domain Name resolves to a page containing pornographic videos and links in Chinese, redirecting to gambling websites. Such content is harmful to the Complainant’s reputation and presents a security risk for its clients given that the Respondent could be engaged in a phishing scheme. The Domain Name is not therefore used in any type of legitimate business or services. It deceives consumers, who incorrectly believe that they are being directed to the Complainant’s bona fide goods and services. The Respondent has failed to show any noncommercial or fair use of the Domain Name. Moreover, the Respondent registered the Domain Name with a privacy shield service to hide its identity and prevent the Complainant from contacting it. Such behaviour highlights the lack of rights or legitimate interests in the Domain Name. The Domain Name was registered and is being used in bad faith Registration in bad faith Given the worldwide reputation of the Complainant and its trademarks, it is implausible that the Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the Domain Name. In light of the reputation of the Complainant’s LANCÔME trademark, its reproduction in the Domain Name in its entirety clearly proves that the Respondent was aware of its existence. Knowledge of a complainant’s intellectual property rights, including trademarks, at the time of registration of a disputed domain name proves bad faith registration. Bad faith has been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of the Complainant’s trademark, registration in bad faith can be inferred. Moreover, a trademark search on “lancome” would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do such as search is a contributing factor to its bad faith. The Respondent registered the Domain Name through a privacy shield service to hide his identity and contact details, thus preventing the Complainant from contacting him. Deliberate concealment of identity and contact information may in itself indicate registration in bad faith. Use in bad faith The Respondent does not make any legitimate use of the Domain Name since it resolves to a page displaying pornographic videos and links in Chinese to online gambling sites. Such use of the Domain Name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation. In the absence of any license or permission from the Complainant to use such a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. The Domain Name is confusingly similar to the Complainant’s LANCÔME trademark and in these circumstances, a likelihood of confusion can be presumed. Such confusion will result in the diversion of Internet traffic from Complainant’s site to the Respondent’s site. It is more likely than not, that the Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest of confusion. This behaviour is likely to mislead Internet users to link the site to which the Domain Name resolves to that of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in the LANCÔME and LANCOME trademarks. Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the LANCÔME or LANCOME trademarks followed by the word “lady”. As the LANCÔME or LANCOME trademarks and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “…in cases where a domain name incorporates the entirety of a trademark, (…) the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The LANCÔME or LANCOME trademarks are incorporated in their entirety within the Domain Name. The trademarks are clearly recognizable within the Domain Name. The addition of the word “lady” and the omission of the circumflex accent on the letter “o” in the LANCÔME mark do not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademarks. See sections 1.8 and 1.9 of the WIPO Overview 3.0. The Panel finds that the Domain Name is confusingly similar to the LANCÔME and LANCOME trademarks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. The Domain Name resolves to a pornographic site with links to online gambling sites. It seems likely that the Respondent uses the Domain Name in this way for commercial gain. In any event, such use can hardly be described as “fair” or anything other than misleading, given the confusingly similar nature of the Domain Name which is bound to mislead Internet users into believing that any website to which it points, relates in some way to the Complainant, if not an official site of the Complainant. An Internet user is bound to be surprised at where they end up and whilst no doubt appreciating they have been duped and that the site they arrive at is not that of, or affiliated with the Complainant, there is clearly a risk of reputational damage and tarnishment of the LANCÔME or LANCOME trademarks. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Whilst adult sites which are not illegal may constitute a bona fide offering of goods and services, where a respondent has chosen a domain name confusingly similar to a well-known mark and the website to which it resolves may well have the effect of tarnishing the reputation of a complainant (and no explanation has been provided by the respondent), a panel is entitled to conclude that there is no bona fide use. There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests in the Domain Name. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. Such scenarios are simply illustrative. It is not necessary for a Complainant to demonstrate that the Respondent’s conduct falls precisely within any one scenario, as long as there is evidence demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark. Such behaviour would satisfy the general principle underlying the bad faith requirement of the Policy. Previous UDRP Panels “have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 of the WIPO Overview 3.0). That is the case here, the LANCÔME and LANCOME trademarks being famous and widely known. Moreover, it can readily be inferred by the composition of the Domain Name that the Respondent was well aware of the Complainant and its trademark rights at the time of registration. Previous Panels have also found that use of another’s mark in a domain name which resolves to a pornographic website is an indication of bad faith. The purpose of registration of the Domain Name appears to have been to attract Internet users to the Respondent’s pornographic website by misleading them into believing that they will arrive at the Complainant’s site or at least a site connected in some way with the Complainant. Such use may well result in the Complainant suffering detriment in terms of reputational damage and tarnishment of its LANCÔME or LANCOME trademarks. In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name Jon Lang
Sole Panelist
Date: August 20, 2021
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