The Complainant is Jeanne Lanvin of Paris, France, represented by Hoche Société Avocats, France.
The Respondent is Yap Su Lang, Lanvin Bridal of Kota Kinabalu, Malaysia.
The disputed domain name <lanvinbridal.com> (the “Disputed Domain Name”) is registered with Network Solutions, 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 Disputed 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 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 18, 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.
The Complainant is a fashion house founded in 1889 in Paris, France by the fashion designer, Jeanne Lanvin. The Complainant manufactures, markets and sells luxury goods such as clothing, including bridal apparel, perfume, shoes, handbags, jewelry, and fashionable accessories under the LANVIN trademark. The Complainant’s products can be found in boutiques worldwide, including in Malaysia.
The Complainant registered LANVIN as a trademark in numerous countries, the earliest registration for which was on August 3, 1961 in France. The Complainant’s LANVIN trademark is also registered in, among other jurisdictions, Israel, Republic of Korea, Singapore, Turkey, United States of America (“United States”), Switzerland, Kazakhstan, Monaco, Austria, Benelux, Switzerland, Czech Republic, Germany, Egypt, Spain, Italy, Liechtenstein, Morocco, Portugal, San Marino, Tunisia, Serbia and Montenegro. Specifically relevant to this case, the Complainant has registered the following trademarks in Malaysia, where the Respondent resides: LANVIN trademark number B67645, registered on February 3, 1975 in Class 25; LANVIN trademark number M/67646, registered on February 3, 1975 in Class 14; LANVIN trademark number M/67647, registered on February 3, 1975 in Class 18; LANVIN trademark number M/71143, registered on March 15, 1976 in Class 9; and LANVIN trademark number M/B71532, registered on April 30, 1976 in Class 24 (hereinafter collectively referred to as the “LANVIN Mark”).
Apart from the registration of the LANVIN Mark, the Complainant also registered “Lanvin” as a commercial name for several companies within the Complainant’s group of companies, including Lanvin Asia Pacific Ltd (Hong Kong), Lanvin Japan, Lanvin Taiwan, Lanvin Inc. (United States), Lanvin Ltd (London), and Jeanne Lanvin Company (France).
The Complainant also uses its registered domain name <lanvin.com> to resolve to its official website and online store at “www.lanvin.com”.
The Respondent registered the Disputed Domain Name on January 25, 2019, 44 years after the Complainant registered and used the LANVIN Mark in Malaysia in 1975, and 23 years after the Complainant registered its domain name and used its official website on June 8,1996. The Disputed Domain Name resolves to a website at “www.lanvinbridal.com”, which offers bridal services such as photography, wedding planning, makeup, as well as the sale of wedding gowns and suits.
On February 12, 2019, the Complainant’s attorney sent a cease and desist letter to the Respondent, but received no reply.
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s LANVIN Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the LANVIN Mark based on longstanding use as well as its numerous trademark registrations for the LANVIN Mark in the United States and in other jurisdictions worldwide. The Disputed Domain Name consists of the LANVIN Mark in its entirety followed by the descriptive word “bridal”, and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LANVIN Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LANVIN Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s LANVIN Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent’s attempt to use the significant goodwill in the LANVIN Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website which appears to be the Complainant’s official site allegedly advertising and seemingly selling genuine Lanvin goods and services, demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondent’s website is sponsored, affiliated with or endorsed by the Complainant.
Second, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s LANVIN Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name 50 years after the Complainant first registered and used the LANVIN Mark, and during which time the Complainant enjoyed a high degree of fame for its couture goods.
The longstanding and public use of the LANVIN Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Third, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be suggestive of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the LANVIN Mark and to disrupt the Complainant’s business.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <lanvinbridal.com> be transferred to the Complainant.1
Lynda M. Braun
Sole Panelist
Date: April 30, 2019
1 This UDRP case is but one of many that have been decided by WIPO panelists in which the domain name at issue in each case was ordered to be transferred to the Complainant, Jeanne Lanvin. See Jeanne Lanvin Company v. Liuliu Liu, WIPO Case No. D2015-0208; Jeanne Lanvin Company v. Lannys Tyndali, WIPO Case No. D2013-1140; Jeanne Lanvin Company v. lin tao, WIPO Case No. D2013-0952; Jeanne Lanvin c. Teresa Lomeli, WIPO Case No. DES2017-0038; Jeanne Lanvin Company v. Ge Muqie, WIPO Case No. D2013-0342; Jeanne Lanvin Company v. mu mengui, WIPO Case No. D2013-0340; Jeanne Lanvin Company v. Vivi Wei, WIPO Case No. D2013-0343; Jeanne Lanvin Company v. Opnqkfe Opnqkfe, WIPO Case No. D2013-1141; Jeanne Lanvin Company v. Li piaosa, WIPO Case No. D2013-0339; Jeanne Lanvin Company v. Jia Nongdeng, WIPO Case No. D2013-0341; and Jeanne Lanvin Company v. Jay Lee, WIPO Case No. D2013-0953.