The Complainant is Lancel International SA of Bellevue-Geneva, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is eboutique lancel/ code france of France, Paris.
The disputed domain names <eboutique-lancel.net>, <eboutiquelancel.net>, <eboutique-lancel.org>, <fr-lancel.org>, <fr-lancel-soldes.com>, <lancel-fr-1876.com>, <lancel-paris-1876.com>, <lancel-sacamain.net>, <lancel-soldes-paris.com>, <paris-lancel.net>, <paris-lancel.org>, <venteprivee-lancel.org> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 2013 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <eboutiquelancel.net> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed a request to consolidate the respondents.
The Center verified that the Complaint together with the consolidation request 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 July 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on August 9, 2013. 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.
The Complainant is part of a fashion group which makes luxury leather goods. The Complainant is the legal owner of a number of French trademark registrations for LANCEL including, no. 1516835, registered on February 28, 1989, no. 601249, registered on June 2, 1993 and no. 3154992, registered on April 26, 2002. The Complainant markets its goods through its domain name, <lancel.com>. The disputed domain names were all registered on November 30, 2012.
This section contains the Complainant’s submissions with which the Panel may or may not agree.
The Complainant, its affiliate companies and predecessors-in-title have operated the House of LANCEL for more than 100 years becoming one of the most prestigious brands in the world for luxury leather goods including bags. It owns a large number of trademark registrations worldwide for LANCEL. The disputed domain names fully incorporate the LANCEL trademark, merely adding generic French words such as those for “handbag”, “sales” and “private sales” and/or generic English elements such as “eboutique”, “Paris”, “1876” (the year in which the Complainant’s group was founded) and the initials “fr” representing France. The generic words reflect elements of the Complainant’s business.
The Respondent lacks any rights or legitimate interest in the disputed domain names. The Respondent falslely holds itself out as “eboutique lancel”. It has never been commonly known by the LANCEL marks or any variation of them and has never used any trademark or service marks similar to the disputed domain names by which they may have come to be known other the infringing use referred to here. The Respondent has never operated any bona fide or legitimate business under the disputed domain names and is not making a protected non-commercial or fair use of the disputed domain names. In the case of <eboutique-lancel.org>, <fr-lancel-soldes.com>, <fr-lancel.org>, <lancel-soldes-paris.com> and <eboutique lancel.net>, Respondent is using the disputed domain names to offer for sale counterfeit products and/or products that compete directly with those offered by Complainant. The disputed domain name <eboutique-lancel.net> is being used to redirect visitors to <eboutiquelancel.net> for the same purpose. The Respondent is using the disputed domain names, <lancel-paris-1876.com>, <paris-lancel.org> and <venteprivee-lancel.org> as pay-per-click websites containing advertisement links to third-party businesses’ websites. Such uses do not constitute a bona fide or legitimate business use. The Complainant has not granted the Respondent any license, permission or authorization by which it could own or use any domain name registrations which are confusingly similar to the LANCEL marks.
The Respondent registered the disputed domain names with actual or constructive knowledge of the Complainant’s rights in the LANCEL marks by virtue of the Complainant’s prior registration of those marks with the trademark office of the European Union which includes France where the Respondent is located and where the Respondent’s websites are targeted. The registration of confusingly similar domain names despite such actual or constructive knowledge without more evidences bad faith registration. Some of the disputed domain names have been used to publish web sites offering for sale products of the Complainant’s competitors and/or counterfeit knock-offs of the Complainant’s products or to direct visitors to competing goods and services. The Respondent is using several of the disputed domain names to hold domain names passively containing the LANCEL marks. The passive holding of a domain name containing the marks of a complainant where the marks have a strong reputation worldwide and the Respondent has not provided any evidence of an actual or contemplated good faith use of the domain name is evidence of bad faith. There is no reason for the Respondent to have registered the disputed domain names other than to trade off the reputation and goodwill of the Complainant’s trademarks. Had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s various trademark registration in the LANCEL marks and the websites associated with the LANCEL marks and numerous additional references in commerce.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel has reviewed the Case File and notes, as the Complainant contends, that the disputed domain name <eboutique-lancel.net> (registered to “eboutique lancel”) redirects to the website at the <eboutiquelancel.net> domain name (registered to “code france”). Such redirection demonstrates to the satisfaction of the Panel that the domain names are subject to common control, and as the Panel is satisfied that consolidation would be fair and equitable to all parties, the Panel considers both “eboutique lancel” and “code france” to be properly named as Respondent in this matter, and that consolidation is proper in this case. See paragraph 4.16, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Each disputed domain name consists of the Complainant’s trademark, a gTLD suffix and either one or more terms or a date associated with the Complainant’s actual or type of business (<eboutique-lancel.net>, <eboutiquelancel.net>, <eboutique-lancel.org>,<lancel-sacamain.net>, <lancel-soldes-paris.com>, <venteprivee-lancel.org> or references to the city, Paris (<paris-lancel.net>, <paris-lancel.org>) or the accepted French country code for a variety of activities (<fr-lancel.org>) and sometimes a combination of them (<lancel-fr-1876.com> and <fr-lancel-soldes.com>). “Lancel” is a made up word with no independent meaning in French or English. The addition of generic words and a gTLD suffix to a distinctive trademark does not deprive a disputed domain name of its confusing similarity to the trademark.
The Respondent is not called “LANCEL” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For the reasons discussed below, the Panel finds that the Respondent is not making a bona fide or non-commercial use of the disputed domain names. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
All the disputed domain names were registered on the same date many years after the Complainant first registered its trademarks and became a prominent brand. The reference to handbags and the date of formation of the company in three of domain names make it clear that the Respondent knew who the Complainant was and the nature of its business. This is apparent from the disputed domain name <eboutique-lancel.org>.
In this Panel’s view, the Respondent registered the disputed domain names either to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith.
Some of the disputed domain names have been used more actively than others. However, the act of retaining a domain name without any right or legitimate interest in doing so, knowing that it replicates someone else’s trademark and thus prevents that other person from exploiting the name, is itself use in bad faith.
For all these reasons, the Panel concludes that each of the disputed domain names was registered and is being used in bad faith.
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 names, <eboutique-lancel.net>, <eboutiquelancel.net>, <eboutique-lancel.org>, <fr-lancel.org>, <fr-lancel-soldes.com>, <lancel-fr-1876.com>, <lancel-paris-1876.com>, <lancel-sacamain.net>, <lancel-soldes-paris.com>, <paris-lancel.net>, <paris-lancel.org>, <venteprivee-lancel.org> be transferred to the Complainant.
Date: August 23, 2013
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