NATIONAL ARBITRATION FORUM

DECISION

LELABO HOLDINGS, LLC v. Alex Dinh / HDG Comporation / Bền Sơn / Cao Thi Huong / Thi Huong / hoang van ha / van ha / Nguyen Van Hien / Nong Duc Manh / Duc Manh

Claim Number: FA2309002060824

PARTIES

Complainant is LELABO HOLDINGS, LLC ("Complainant"), New York, USA. Respondent is Alex Dinh / HDG Comporation / Bền Sơn / Cao Thi Huong / Thi Huong / hoang van ha / van ha / Nguyen Van Hien / Nong Duc Manh / Duc Manh / Cao Ngoc Vu ("Respondent"), Vietnam.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <lelabo.asia>, <lelabo.sale>, <lelaboauthentics.asia>, <lelabofrance.com>, <lelabomalaysia.asia> and <storelelabo.website>, registered with Gmo Internet Group, Inc. D/B/A Onamae.Com; Nhan Hoa Software Company Ltd.; and Godaddy.Com, Llc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 7, 2023; Forum received payment on September 7, 2023.

On October 25, 2023, October 26, 2023 and November 13, 2023, Gmo Internet Group, Inc. D/B/A Onamae.Com, Nhan Hoa Software Company Ltd., and Godaddy.Com, Llc confirmed by e-mail to Forum that the <lelabo.asia>, <lelabo.sale>, <lelaboauthentics.asia>, <lelabofrance.com>, <lelabomalaysia.asia> and <storelelabo.website> domain names are registered with Gmo Internet Group, Inc. D/B/A Onamae.Com, Nhan Hoa Software Company Ltd. and Godaddy.Com, Llc and that Respondent is the current registrant of the names. Gmo Internet Group, Inc. D/B/A Onamae.Com, Nhan Hoa Software Company Ltd. and Godaddy.Com, Llc have verified that Respondent is bound by the Gmo Internet Group, Inc. D/B/A Onamae.Com, Nhan Hoa Software Company Ltd. and Godaddy.Com, Llc registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 21, 2023, Forum served the Complaint and all Annexes, including a Japanese and English Written Notice of the Complaint, setting a deadline of December 11, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@lelabo.asia, postmaster@lelabo.sale, postmaster@lelaboauthentics.asia, postmaster@lelabofrance.com, postmaster@lelabomalaysia.asia, postmaster@storelelabo.website. Also on November 21, 2023, the Japanese and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On December 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PRELIMINARY ISSUES: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." The question therefore is whether the named Respondents, because of their use of several alleged aliases, can be said in reality to be "the same domain name holder", which the Complainant submits they are.

Complainant has shown that all of the domain names were registered during a comparatively short period of time, they all clearly aim at one trademark owner and its trademarks, they are all in Vietnam and mostly in Hanoi, they all seem to be part of the one modus operandi, all seem to be promoting the one fraud and it would be a remarkable coincidence if they all embarked on it individually at roughly the same time.

Having regard to all of those considerations and the whole of the evidence, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and are therefore "the same domain name holder". The proceeding may therefore go forward on that basis. For reasons of convenience, the nominal Respondents will hereafter be referred to as "Respondent".

LANGUAGE OF THE PROCEEDING

Complainant requests that pursuant to UDRP Rule 11(a) this administrative proceeding should be conducted in the English language. Complainant makes this request in light of the fact that the Registration Agreements to which the disputed domain names relate are expressed in the English, Japanese and Vietnamese languages and at least two of them are in English. The Complainant submits that as the proceeding should if possible be in the one language and as the Panel finds that all of the domain names are held by the one domain name holder, English is a more appropriate language in which to conduct the proceeding.

It is also established practice, when such a request is made under Rule 11 (a), to consider all the circumstances and to take Rules 10(b) and (c) into consideration to ensure fairness and justice to both parties.

Further, the Panel may weigh the relative time and expense in enforcing the language of the registration agreement, which might result in prejudice toward either party because of the need, at least in part, to translate documents and evidence to be used in the proceeding into that language.

In the present case, Complainant relies on the grounds that all of the disputed domain names have English words added to the Complainant's trademark, at least two of them have registration agreements in English, some of the contents of the resolving websites are in English, using words such as "perfume" and "hot deal", the website for the domain name <lelabomalaysia.asia> uses English language content for About Le Labo, Client Care and Shipping, pop ups show different phone numbers and successfully ordered products in English, the websites contain English copyright details and the contact email address on the website uses the English word "perfume."

The Panel adds that the Respondent seems to be aiming at an English-speaking audience.

Finally, if the proceeding were to be conducted, even in part, in Japanese and Vietnamese, a lot of the evidence would have to be translated into those languages, which would put the Complainant to unjustified and unnecessary expense and time.

Applying those principles, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that Respondent is conversant and proficient in the English language. After considering all of these circumstances, the Panel therefore finds that the proceeding should be conducted in the English language and it so orders.

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1. Complainant is a United States company owned by the prominent The Estee Lauder Companies engaged in the international provision of fine fragrances, personal care products and related goods and services.

2. Complainant has rights in the LE LABO trademark by virtue of its having been registered in the name of the Complainant with the United States Patent and Trademark Office ("USPTO") on December 23, 2014 as Registration No. 4659463 together with numerous other USPTO and international registrations for LE LABO and the related marks ROSE 31, SANTAL 33 and ANOTHER 13 (collectively "the LE LABO trademark").

3. Complainant produces a range of fine fragrances and personal care products under the LE LABO trademark.

4. Complainant is also the owner of several domain names including <lelabofragrances.com> which it uses in its business including for the website at www.lelabofragrances.com.

5. Respondent registered the following domain names on the following respective dates:

(a) <lelabo.asia> on January 12, 2023;

(b) <lelabo.sale> on April 23, 2023;

(d) <lelabofrance.com> on January 4, 2023;

(e) <lelabomalaysia.asia> on March 19, 2023; and

(f) <storelelabo.website> on April 14, 2023,

(collectively "the disputed domain names").

6. In so doing, Respondent has incorporated into the disputed domain names the Complainant's LE LABO trademark, without any authority to do so, and has added in each case a generic Top Level Domain, a generic and non-descriptive word or a geographic indicator, more particularly appearing from the foregoing disputed domain names.

7. By reason of the matters aforesaid, each of the disputed domain names is confusingly similar to the LE LABO trademark.

8. Each of the disputed domain names was registered significantly after the Complainant registered and commenced to use the LE LABO trademark.

9. With respect to the disputed domain names <lelabo.asia>, <lelabo.sale>, <lelabofrance.com>, <lelabomalaysia.asia> and <storelelabo.website>, the Respondent has caused the domain names to resolve to websites the contents of which imply a connection with the Complainant by prominently using the LE LABO trademark, claiming to sell products containing one or more of the Complainant's marks and passing itself off as the Complainant.

10. With respect to the disputed domain name <lelaboauthentics.asia>, it does not currently resolve to an active website, but to the message "This site can't be reached," although prior thereto the Respondent had caused the domain name to resolve to a website prominently using the LE LABO trademark, claiming to sell products containing one or more of the Complainant's marks and passing itself off as the Complainant.

11. By reason of the matters aforesaid the Respondent has no right or legitimate interest in any of the disputed domain names.

12. The disputed domain names have been registered and used in bad faith. That is so because:

(a) in the case of the disputed domain names <lelabo.asia>, <lelabo.sale>, <lelabofrance.com>, <lelabomalaysia.asia> and <storelelabo.website>, the Respondent has caused the disputed domain names to divert internet customers from the Complainant's website to the websites to which the domain names resolve by causing confusion between the LE LABO trademark and the disputed domain names, thereby disrupting the Complainant's business;

(b) with respect to those domain names, the Respondent is intentionally attempting to attract, for commercial gain, internet users to the Respondent's websites by creating confusion with the LE LABO trademark as to the sponsorship, affiliation or endorsement of the Respondent's websites;

(c) in the case of the <lelaboauthentics.asia> disputed domain name, the Respondent is using the domain name to host an inactive website; and

(d) the Respondent had actual knowledge of the Complainant's rights in the LE LABO trademark when it registered the disputed domain names.

13. Accordingly, the disputed domain names should be transferred to the Complainant.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

2. Complainant has established its rights in the LE LABO trademark by virtue of its having been registered in the name of the Complainant with the United States Patent and Trademark Office ("USPTO") on December 23, 2014 as Registration No. 4659463 together with numerous other USPTO and international registrations for LE LABO and its related marks ROSE 31, SANTAL 33 and ANOTHER 13 (collectively "the LE LABO trademark").

3. Respondent has registered the following domain names on their respective dates: <lelabo.asia> on January 12, 2023; <lelabo.sale> on April 23, 2023; <lelaboauthentics.asia> on May 25, 2023; <lelabofrance.com> on January 4, 2023; <lelabomalaysia.asia> on March 19, 2023; and <storelelabo.website> on April 14, 2023 (collectively "the disputed domain names").

4. Respondent has caused the disputed domain names, save for the domain name <lelaboauthentics.asia>, to resolve to websites designed to perpetrate a fraud on potential purchasers of goods offered for sale on the websites by falsely implying a connection with the Complainant, purporting to offer for sale goods sold under one or more of the Complainant's trademarks, claiming to sell authentic but in fact counterfeit products, and passing itself off as the Complainant. In the case of the domain name <lelaboauthentics.asia>, it does not resolve to an active website, but produces the message "This site can't be reached."

5. By reason of the matters aforesaid, the disputed domain names are confusingly similar to the Complainant's LE LABO trademark, the Respondent has no rights or legitimate interests in the domain names and the domain names have been registered and used in bad faith.

6. Accordingly, the disputed domain names should be transferred to the Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a

trademark or service mark on which it may rely. Complainant has established its rights in the LE LABO mark by virtue of its having been registered in the name of the Complainant with the United States Patent and Trademark Office ("USPTO") on December 23, 2014 as Registration No. 4659463 together with numerous other USPTO and international registrations for LE LABO and related marks (collectively "the LE LABO trademark").

The LE LABO mark has been established by Complainant's Exhibits E and F which the Panel has examined and finds to be in order. Thus, the Complainant has proved by evidence that the LE LABO trademark has been registered nationally in the United States and internationally. Registration of a trademark with a recognized national authority such as the USPTO or an international trademark registration authority as in the present case is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Since Complainant has registered and has established its rights in the LE LABO trademark through its registration of the mark, the Panel finds that the Complainant has rights in the LE LABO trademark under Policy ¶ 4(a)(i).

The next question that arises is whether the disputed domain names are confusingly similar to Complainant's LE LABO trademark. Complainant argues that the disputed domain names are confusingly similar to the LE LABO trademark because they include the mark in its entirety and because the Respondent has added in each case a generic Top Level Domain, a generic and non-descriptive word such as "authentics" or "store" and a geographic indicator such as "France" or "Malaysia."

The Panel agrees with that submission.

The domain names are similar to the mark and confusingly so, meaning that they generate the impression that they are official domain names of the Complainant and its trademark, which they are not.

Under Policy ¶ 4(a)(i), the addition of a generic or descriptive word to a trademark, or a geographic identifier, does not negate the confusing similarity which is otherwise present between the domain name thus created and a trademark, as it is in the present case. Also, adding a generic Top Level Domain cannot negate the confusing similarity that is otherwise present between a domain name and the trademark, as it is in the present case. That is so because they are part of all domain names. Taken as a whole, the domain names clearly mean and would be interpreted by internet users to mean that they are invoking the Complainant's LE LABO mark and are being used legitimately to enhance the notion of the mark being used in connection with a legitimate business associated with the trademark and its owner. See, Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD '.com' and the letter 'l' to create a common misspelling of the word 'bank.'). In the present case, the domain names are similar to the trademark and confusingly so.

The Panel therefore finds that the disputed domain names are confusingly similar to Complainant's LE LABO trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take the Complainant's LE LABO trade mark and to use it in its domain names without permission and well after the Complainant had acquired its trademark rights, adding only the generic non-descriptive words and geographic indicators referred to above and the various gTLDs, which do not negate the confusing similarity between the domain names and the trademark, and which generate the clear impression that they are referring to and invoking the LE LABO mark and the company related to it, the Complainant, and that the registrant of the domain names is authorized to do so, which is not true.

(b) The Respondent registered the disputed domain names on the respective dates set out in the Contentions section of this decision.

(d) In that regard, the evidence shows that Respondent has caused the disputed domain names <lelabo.asia>, <lelabo.sale>, <lelabofrance.com>, <lelabomalaysia.asia> and <storelelabo.website> to resolve to websites the contents of which falsely imply a connection with the Complainant by prominently using the LE LABO trademark, claiming to sell allegedly authentic products but which are counterfeit products, containing one or more of the Complainant's marks and passing itself off as the Complainant. In the course of perpetrating that scheme, Respondent has been impersonating Complainant and will no doubt keep on doing so unless it is stopped. It is clear that the Respondent's intention has been and is to give the false impression that it is offering genuine products of the Complainant which they clearly are not.

(e) The Panel has looked closely at the Complainant's Exhibit H and finds that the resolving websites frequently use the LE LABO trademark, promote products that purport to be genuine products of the Complainant including the trademarked products ROSE 31, SANTAL 33 and ANOTHER 13, carry a shopping cart symbol and pictures of credit cards that may allegedly be used when buying the products, the email address "lalaboperfumes@gmail.com, the expressions "premium products" and "order now" and a form designed to solicit the personal information of buyers.

(j) The evidence shows that Respondent is not commonly known by the disputed domain names within the meaning of Policy ¶ 4(c)(ii), not authorized to use Complainant's LE LABO trademark and not affiliated with or licensed by the Complainant.

` (k) There is no evidence that the Respondent is engaged in a legitimate non-commercial or fair use of the domain name within the meaning of Policy 4(c)(iii) and all the evidence shows that it is not. The evidence shows that the Respondent's conduct is illegitimate in every sense, purely commercial, not a fair use of the domain names and evidence which in any event does not entitle the Respondent to use the domain names at all.

(l) Respondent has engaged in the foregoing conduct without the consent or approval of the Complainant.

(m) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions but it has not attempted to do so.

All of these matters go to make out the prima facie case against Respondent.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and that they have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

First, the circumstances in the present case all show that the Respondent has been engaged in the improper registration and use of the disputed domain names in bad faith.

Secondly, the evidence shows that as the Respondent registered the disputed domain names to mimic the appearance of a legitimate website operated by the Complainant by displaying the LE LABO mark, showing by the evidence in the Complainant's Exhibit H that Respondent had actual knowledge of the Complainant's mark and therefore that it has acted in bad faith and with the intention of disrupting the business of the Complainant within the meaning of Policy ¶4(b) (iii).

Thirdly, the evidence also shows that the Respondent has attempted to create confusion with the Complainant's LE LABO trademark and its products sold under its ROSE 31, SANTAL 33 and ANOTHER 13 trademarks as to the authenticity of the Respondent's websites and the goods and services offered through them within the meaning of Policy ¶4(b)(iv).

Fourthly, the Complainant's trademarks were registered well before the registration of the disputed domain names, showing that the Respondent had actual knowledge of the LE LABO and other marks at the time it registered and whilst it has been using the disputed domain names.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain names using the LE LABO and other trademarks and in view of the conduct that the Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.

Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also cited many prior UDRP decisions that support its contentions.

The Complainant has therefore made out all of the elements it is required to establish under the Policy and is entitled to the relief that it seeks.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <lelabo.asia>, <lelabo.sale>, <lelaboauthentics.asia>, <lelabofrance.com>, <lelabomalaysia.asia> and <storelelabo.website> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC

Panelist

Dated: December 14, 2023