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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancôme Parfums et Beauté & Cie v. Lili
Case No. D2001-0724
1. The Parties
The Complainant in this administrative proceeding is LANCOME PARFUMS ET BEAUTE & CIE located at 29 rue du Faubourg-Saint-Honoré, 75008 Paris, France.
The Respondent is LILI, Lili Pudaric, Ulica 32, Blato Korcula 20271, Croatia.
2. The Domain Name and Registrar
The domain name in dispute is <lancomeparis.com>.
The Registrar with which the domain name is registered is Register.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on May 31, 2001, by e-mail and on June 5, 2001, in hardcopy. The Center acknowledged receipt thereof on June 6, 2001.
On June 8, 2001, the Center sent the corresponding Request for Registrar Verification in connection with this case to Register.com. On that same date the Registrar’s verification response confirmed that the Registrant was Lili and that the domain name <lancomeparis.com> was in "active" status.
On June 15, 2001, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail and courier the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On July 9, 2001, the Center issued by e-mail and courier the Notification of Default to the Respondent for having failed to submit a response to the Complaint within the deadline granted.
On July 12, 2001, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on July 11, 2001, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on July 12, 2001, by e-mail and registered post, hard copy of which was received by the undersigned few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complaint is based upon several trademark registrations, "LANCOME" and "LANCOME PARIS", which are the following (Complainant’s Annex III):
- International Trademark LANCOME No. 2R 157.412, registered on November 12, 1951 and duly renewed in classes 1 through 34;
- French Trademark LANCOME No. 1.557.084, registered on February 8, 1935 and duly renewed in classes 3 and 21;
- American Trademark LANCOME No. 425.129, registered on November 5, 1946 and duly renewed in class 3;
- French Trademark LANCOME PARIS No. 1.517.959, registered on April 10, 1979 and duly renewed in classes 3, 5, 14, 18, 21, 25, 42.
The trademark LANCOME has been used since 1935 in the areas of cosmetics and perfumes as a trademark and as the corporate and business name of the Complainant. The trademark LANCOME PARIS appears on all the packaging as Paris refers to the place where Lancôme has its headquarters.
The trademark is also used as a domain name such as "LANCOME.COM" which is the official web-site of the trademark (Complainant’s Annex IV).
5. Parties’ Contentions
The Complainant submits the following:
(i) the domain name <lancomeparis.com> is identical to the trademark LANCOME PARIS and also confusingly similar to the trademark LANCOME in which the Complainant has rights;
(ii) the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint : the Respondent does not maintain any web site or online presence and the domain name in dispute is not the corporate name of the Respondent; in addition, there is no relation between the Respondent and the Complainant and the former is not a licensee nor he otherwise obtained an authorization to use the latter's trademark; and
(iii) the domain name should be considered as having been registered and used in bad faith; the Respondent, when registering the disputed domain name, could not ignore the Complainant's trademark rights over LANCOME and LANCOME PARIS and related fame and goodwill associated thereof for more than forty year.
Moreover, the Complainant explains that a friend of the Respondent recently contacted the Complainant in the aim of selling him the domain name "lancomeparis.com" for the amount of 1000.00 (Complainant’s Annex V); the Complainant submits that even if the Respondent’s friend did not specify if he was referring to 1000.00 US dollars or another money he pointed out that he "would keep 200.00 and send 800.00 to Croatia" which from the Complainant's point of view means that he intended to make profit (see Complainant’s Annex V).
The Respondent has not submitted any response to the Complaint.
However, the Respondent's representative, Lili Pudaric, advised the Center on July 12, 2001, as follows:
"As we informed administrator from Lancôme Paris months ago, we want to transfer the domain name to above company. Please send necesery documents and they will be sign and sent to you, as we indicated months ago. All we wanted is to be compacated (sic) for our cost, nothing more. To many people are getting involved and aperently representing your company. We received your mail. We will deal with you."
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In his communication of July 12, 2001, stated above, the Respondent has expressed its wish to transfer the domain name subject to this administrative proceeding but, apparently, against compensation.
Unlike some other cases such as, for example, Deutsche Bank AG vs. Carl Seigler (WIPO Case No. D2000-0984), Juventus F.C. S.p.A. vs. Sergio Bragança (WIPO Case No. D2000-1466), or Interbrew S.A. vs. Adanb (WIPO Case No. D2000-1365), the Respondent in this case did actually neither undertake any step for the transfer of the domain name at issue, nor point it out that this would be for documented out-of-pocket costs directly related to the domain name, within the meaning of Paragraph 4(b)(i) of the Policy.
It is therefore necessary to examine whether the requirements laid down in Paragraph 4(a) of the Policy having been met in this matter.
A. Identity or Confusing Similarity
There is no doubt that there is identity - or at least confusing similarity - between the Complainant’s trademarks "LANCOME" and "LANCOME PARIS" and the domain name <lancomeparis.com>. As rightly pointed out by the Complainant in his Complaint, the difference in the top-level domain name is of no relevance in this regard (see e.g. WIPO Cases Nos. D2000-0489 and D2000-0490).
The Complainant has also established its rights in the trademarks "LANCOME" and "LANCOME PARIS" with various registrations worldwide (see Complainant’s Annex III).
B. Rights or Legitimate Interests of the Respondent
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see e.g. WIPO Case Nos. D2000-0009, p.6, or D2000-0867, p.6).
It is the Sole Panelist’s finding that the Complainant has established that the trademarks "LANCOME" and "LANCOME PARIS" have been known in Europe and the United States for a long period of time. Furthermore, absent evidence to the contrary and as rightly submitted by the Complainant, the latter has not granted any license or otherwise permitted the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks.
Under those particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your web site or location.
As already pointed out, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.
The evidence submitted by the Complainant (Complainant's Annex V) is particularly illustrative in this respect: in an e-mail dated May 21, 2001, to the Complainant, the Respondent's agent admits that the Respondent is perfectly conversant with the Complainant's field of business operations; the Respondent could therefore not ignore the Complainant's trademark rights; such behavior can be consequently considered as bad faith registration within the meaning of the Policy.
In addition, the fact that, in the e-mail mentioned above, the Respondent has explained to the Complainant that it would cost less to pay "1000" than flying over to him for a meeting to find an arrangement for the transfer, added to the threat to sell the domain name to someone else, and also pointing out that some other 200 domain names had been bought by the Respondent for that same purpose, amount to bad faith use pursuant to the Policy, in particular according to Paragraph 4(b)(i), in the Sole Panelist's view.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4(i) of the Rules, the Sole Panelist requires that the registration of the domain name <lancomeparis.com> shall be transferred to the Complainant.
Dated: July 25, 2001