WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lancôme Parfums Beauté et compagnie and L'Oréal v. Din Mont and Yunleng Mercyk

Case No. D2016-1721

1. The Parties

Complainants are Lancôme Parfums Beauté et compagnie of Paris, France and L'Oréal of Paris, France, represented by Dreyfus & Associés, France.

Respondents are Din Mont of Guangzhou, China and Yunleng Mercyk of Heibei, China.

2. The Domain Names And Registrar

The disputed domain names <kiehlscn.com> and <lancame.com> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2016. On August 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on September 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2016. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on September 28, 2016.

The Center appointed Richard Hill as the sole panelist in this matter on October 3, 2016. 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

Complainants own the marks and LANCOME and KIEL'S and use them to market cosmetic and beauty products around the world, including in China. In this context, the Complainants own inter alia the international trademark registration no. 164395 for LANCÔME, registered on October 6, 1952 and Chinese trademark registration no. 5122859 for KIEHL'S, registered on June 14, 2009. The marks are widely known, including in China.

The disputed domain name <kiehlscn.com> was registered on July 31 2015; the disputed domain name <lancame.com> was registered on December 2, 2015.

Complainants have not licensed or otherwise authorized Respondents to use their marks.

Respondents are using the disputed domain name to point to websites that offer for sale unauthorized versions of Complainants' products as well as competing products.

5. Parties' Contentions

A. Complainants

Complainants in this administrative proceeding are Lancôme Parfums Beauté et compagnie, a French company, which has its registered office in Paris, France and L'Oréal which also has its registered office in Paris, France. L'Oréal and Lancôme Parfums Beauté et Compagnie are two companies belonging to the same group.

Complainants argue that their separate complaints against two distinct domain names can be heard together and cite prior UDRP decisions to that effect.

Complainants state that L'Oréal is a French industrial group specialized in the field of cosmetics and beauty. It is today one of the world's largest groups in the cosmetics business. Present in over 130 countries with over 82,000 employees, L'Oréal creates and distributes products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances. It is present and successful in every continent. Since 1997, L'Oreal has entered the Chinese market. With advanced marketing methods and accurate grasp of Chinese consumers and the market, L'Oreal's business in China by leaps and bounds, the country has created nearly 30,000 jobs. At present, its Chinese subsidiary L'Oreal China has become one of the market's most well-known multinational corporations.

Complainants further state that Lancôme Parfums Beauté & Compagnie is a subsidiary of L'Oreal. Lancôme has become the leading brand in the women selective cosmetic market. Today, it is well-known all over the world. It is the world's number one luxury beauty brand on the selective skincare and makeup market. It is viewed as a symbol of French refinement and its skincare, make-up; fragrance products are successful all over the world. Lancôme in 1993, formally entered the Chinese market in Tianjin in 1993. , opened its first counter, it is also from that time, Chinese women began to have its first high-end luxury creams and the first branch lipstick, Lancôme is also the first Chinese female cognition high-end cosmetics brands. Lancôme is number one in anti-ageing skincare. It is very famous in France and in other countries. It is largely present worldwide and especially in China where this brand is intensively promoted.

Complainants allege that they own the trademarks LANCOME and KIEHL'S with rights dating back, respectively, to 1952 and 2001. The marks are registered in China as well as elsewhere around the world. The marks are famous.

According to Complainants, the disputed domain names are similar to their marks. The disputed domain name <lancame.com> differs from the mark LANCÔME only by substituting a single character: an "ô" is replaced with an "a". The disputed domain name <kiehlscn.com> incorporates in its entirety the mark KIEL'S, omitting the apostrophe, and adds the geographic designator "cn", which is the country code and Top-Level Domain ("ccTLD") for China. Complainants cite previous UDRP decisions to support their position.

Complainants allege that Respondents have no prior rights or legitimate interests in the disputed domain names. Moreover, the disputed domain names are so similar to the famous trademarks of Complainants that Respondents cannot reasonably pretend they were intending to develop a legitimate activity through the disputed domain names.

Furthermore, say Complainants, Respondents are not commonly known by the disputed domain names. Respondent are not in any way affiliated with Complainants, nor authorized or licensed to use the trademarks LANCÔME and KIEHL'S, nor to seek registration of any domain names incorporating said marks.

Complainants allege that Respondents did not demonstrate use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Indeed, Respondents use the disputed domain names for directing traffic to websites having falsely the appearance of official websites. The trademarks LANCÔME and KIEHL'S are displayed at the top of each the webpage and products bearing the trademarks are displayed for sale. In other words, the websites at the disputed domain names are imitative and misleadingly suggestive of an association with Complainants and their products.

According to Complainants, it can be inferred that Respondents are diverting consumers and opportunistically using Complainants' well-known trademarks LANCÔME and KIEHL'S to attract Internet users to their illegitimate websites. Thus Respondents have no rights or legitimate interests in the disputed domain names. Complainants cite previous UDRP decisions to support their position.

Complainants allege that, given that their marks are famous, Respondents registered the disputed domain names in bad faith. Complainants cite previous UDRP decisions to support their position.

Further, say Complainants, such use of their marks to confuse consumers and to generate revenue from Internet traffic garnered solely from Complainants' goodwill and Internet users' inaccurate guessing of the correct domain names associated with Complainants constitutes bad faith use of the disputed domain names. Complainants cite previous UDRP decisions to support their position.

B. Respondent

Respondents did not reply to Complainants' contentions.

6. Discussion and Findings

6.1. Preliminary Matter: Consolidation

Before addressing the three elements of the Policy, the Panel must first address a procedural issue, namely whether to accept in the present procedure a complaint by two Complainants against two distinct Respondents.

The question of the multiplicity of marks, domain names, complainants and respondents being consolidated in one single complaint has been addressed in previous UDRP decisions. Panels have held that "when a complainant (or, as in this case, a group of closely related entities) are seeking redress against a single respondent and their complaint is based on the same set or similar sets of facts and on the same legal basis, it seems appropriate to allow them to proceed in this way", see Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336;see also L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

Members of the same group of companies may constitute an "entity" for the purposes of initiating a UDRP proceeding. See Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L'Oréal S.A. v. Cong Ty Co Phan Phununet, WIPO Case No. D2010-0603; L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869; and Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226.

Paragraph 3(c) of the Policy provides that "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder". Paragraph 10(e) of the Policy provides that "A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules".

Paragraphs 3(c) and 10(e) of the Policy are not mutually exclusive. Panels have the authority to order the consolidation of multiple domain name disputes under paragraph 10(e) in all circumstances involving differently named domain name holders. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654.

Multiple domain names controlled by a single person or entity may be treated as a single respondent for purposes of the Policy and Rules, see Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729.

Different circumstances have been regarded as illustrations of common control. Previous UDRP panels have inter alia previously found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common "homepage". See CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071;and Sharman Licence Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659.

In the present case, the following elements indicate that the two disputed domain names are under common control: (1) the email addresses of the registrants are identical; (2) the two disputed domain names point to similar websites that have the appearance of official websites of the concerned brand selling products marked with the concerned brand; (3) each website displays the same phone numbers for customer service at the bottom of each page; (4) the registrar of the disputed domain names is the same; (5) the host company of the two websites is the same.

Consequently, considering the facts in the present case, the Panel finds that it is appropriate to consider the complaint filed against both Respondents in the present proceeding.

A. Identical or Confusingly Similar

The disputed domain name <lancame.com> differs from the mark LANCÔME only by substituting a single character: an "ô" is replaced with an "a". This is a clear case of typosquatting, see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

The disputed domain name <kiehlscn.com> incorporates in its entirety the mark KIEHL'S, omitting the apostrophe, and adds the geographic reference "cn", which is the country code and ccTLD for China. Previous UDRP panels have held that the omission of the apostrophe in the trademark is insignificant. Typographic differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity. See L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721; and L'Oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd, WIPO Case No. D2010-1318. Further, adding a geographic reference to a complainant's mark does not negate confusing similarity between a trademark and a domain name, see L'Oréal v. Haya Manami, WIPO Case No. D2015-0924.

The Panel finds that Complainants have satisfied their burden of proof for this element of the Policy and that the disputed domain names are confusingly similar to Complainants' marks.

B. Rights or Legitimate Interests

Respondents are not commonly known by the disputed domain names. Respondents are not in any way affiliated with Complainants, nor authorized or licensed to use the trademarks LANCÔME and KIEHL'S. Respondents use the disputed domain names to direct traffic to websites having falsely the appearance of official websites of Complainants. Thus Respondents are diverting consumers and opportunistically using Complainants' well-known trademarks LANCÔME and KIEHL'S to attract Internet users to their illegitimate websites. Consequently the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names. See Lancôme Parfums Et Beauté & Cie v. He peng, WIPO Case No. D2014-1944;and L'Oréal v. Privacy protection service - whoisproxy.ru / Denis Mishin, WIPO Case No. D2015-1091.

The Panel finds that Complainants have satisfied their burden of proof for this element of the Policy.

C. Registered and Used in Bad Faith

Respondents (who did not reply to Complainants' contentions) have not presented any plausible explanation for their use of Complainants' widely-known marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondents' failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondents were aware of Complainants' rights and did not have a legitimate use in mind when registering the disputed domain names.

As noted above, the disputed domain names are being used to confuse consumers and to generate revenue from Internet traffic garnered solely from Complainants' goodwill. Previous UDRP panels have held that such exploitation of the goodwill associated with a trademark in order to obtain revenue from the diversion of Internet traffic constitutes bad faith use in the sense of the Policy. See Lancôme Parfums Et Beauté & Cie v. He peng,supra;and L'Oréal v. Privacy protection service - whoisproxy.ru / Denis Mishin,supra.

The Panel finds that, by using the disputed domain names, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents' websites, by creating a likelihood of confusion with Complainants' marks as to the source, sponsorship, affiliation, or endorsement of Respondents' websites and the products offered for sale on those websites.

This constitutes bad faith use under the Policy.

The Panel finds that Complainants have satisfied their burden of proof for this element of the Policy.

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 disputed domain name <kiehlscn.com> be transferred to Complainant L'Oréal and the disputed domain name <lancame.com> be transferred to Complainant Lancôme Parfums Beauté & Cie.

Richard Hill
Sole Panelist
Date: October 6, 2016