The Complainant is Jeanne Lanvin of Paris, France, represented by Hoche Societé Avocats, France.
The Respondent is Tammi Lopez of Camden, New Jersey, United States of America (“United States”).
The disputed domain name <lanvinenligne.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2019. On March 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 20, 2019, 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.
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 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on May 1, 2019. 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.
Founded in 1885 in Paris, the Complainant is one of the oldest French fashion houses still in activity. After opening her first workshop as a milliner in 1885, Jeanne Lanvin went on to becoming a fully-fledged couturier when she opened a ladies and girls clothes department in her store. The name LANVIN has been continuously used as a commercial name and brand in connection with its products since 1885. The Complainant now has a global presence and the brand LANVIN is a registered trade mark in many jurisdictions all over the world. The earliest trade mark submitted in evidence dates back to 1953 in the United States (the “Trade Mark”). The Complainant’s official website and online shop is found at “www.lanvin.com” since June 8, 1996.
The Respondent registered the Domain Name on February 26, 2019. It is made up of a combination of the words “lanvin” and “en ligne” which means “online” in French. The Domain Name resolves to a website which has the name LANVIN displayed prominently on the home page and appears to sell counterfeit LANVIN products (the “Website”). The products offered for sale are at a heavily discounted price. Photographs of LANVIN products of the Fall/Winter 2019 Collection are also displayed on the Website.
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety together with the French word “enligne”. The addition of this word does not prevent a finding of confusing similarity. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that 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 the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the Website purports to offer for sale the Complainant’s products. The Respondent is not an authorized seller of the Complainant’s products. Yet the Website suggests that the Respondent is an authorized agent and also uses images that belong to the Complainant. The prominent display of the Trade Mark increases the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website.
It would appear to the Panel that the products on sale on the Website are counterfeit goods as they are prices substantially lower than those of genuine products.
There can be no legitimate interests in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when she registered the Domain Name. The Complainant has provided sufficient evidence that the registration of the Domain Name postdates the Trade Mark.
WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The very incorporation of the Trade Mark in the Domain Name and the display of the Trade Mark and the offer for sale of non-genuine LANVIN products on the Website confirm the Respondent’s awareness of the Trade Mark. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name are also significant factors to consider. The Panel finds that registration is in bad faith.
The products offered for sale on the Website are likely to be counterfeit LANVIN products for reasons set out in section 6C above. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
The Panel also finds that the actual use of the Domain Name is in bad faith. The content of the Website is also calculated to give the impression that it has been authorized by or connected to the Complainant when this is not the case. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
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, <lanvinenligne.com>, be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 13, 2019