DECISION

 

Lelabo Holdings, LLC v. Hoang Van Ha / LA VAN LONG / Bui The Anh / Nguyen Dinh Hieu / Nguyen Quoc Nhut / le xuan tuan

Claim Number: FA2407002108178

 

PARTIES

Complainant is Lelabo Holdings, LLC ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is Hoang Van Ha / LA VAN LONG / Bui The Anh / Nguyen Dinh Hieu / Nguyen Quoc Nhut / le xuan tuan ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <lelabofragrances-philippines.website>, <lelaboindonesia.com>, <lelabo-indonesia.com>, <lelaboperfume.shop>, <lelabosale.online>, <lelabo-store.asia> and <lelabo-vn.website> (collectively "Domain Names"), registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 25, 2024; Forum received payment on July 25, 2024.

 

On July 29, 2024, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <lelabofragrances-philippines.website>, <lelaboindonesia.com>, <lelabo-indonesia.com>, <lelaboperfume.shop>, <lelabosale.online>, <lelabo-store.asia> and <lelabo-vn.website> domain names are registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.com registration agreement 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 August 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2024 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@lelabofragrances-philippines.website, postmaster@lelaboindonesia.com, postmaster@lelabo-indonesia.com, postmaster@lelaboperfume.shop, postmaster@lelabosale.online, postmaster@lelabo-store.asia and postmaster@lelabo-vn.website. Also on August 5, 2024, the 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 August 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged 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."  

 

Complainant contends that the registrants for the Domain Names are related because the Domain Names were registered with the same Registrar, refer to the same IP address, use the same nameserver and the (purportedly false) contact details all use Vietnamese addresses. Furthermore, registrants Hoang Van Ha and Tran Thi Tuyet Nhung have been identified in prior UDRP decisions as aliases for one another. Finally, each of the Domain Names, which incorporate the Complainant's LE LABO mark, redirect to similar websites (the "Respondent's Websites"). Each of the Respondent's Websites purports to offer the same limited selection of 3 perfume products from Complainant's much larger fragrance collection and  reproduce Complainant's LE LABO mark in the same stylized form. This evidence, in the Panel's opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that 7 unconnected entities in Vietnam would register 7 similar domain names with the same (non-Vietnamese) Registrar and point them to very similar websites which pass off as Complainant and but only offer the same limited selection of 3 Complainant fragrances.

 

In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as "Respondent" for this Decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant a perfume company, founded in 2006, that offers a range of fragrances and room scents under the Le Labo brand. Complainant has rights in the LE LABO mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,659,463, registered December 23, 2014). Respondent's <lelabofragrances-philippines.website>, <lelaboindonesia.com>, <lelabo-indonesia.com>, <lelaboperfume.shop>, <lelabosale.online>, <lelabo-store.asia> and <lelabo-vn.website> domain names are identical or confusingly similar to Complainant's mark as they each include the mark in its entirety, adding generic terms and/or geographic designations along with a generic top-level domain ("gTLD").

 

Respondent does not have rights or legitimate interests in the Domain Names because Complainant did not authorize or license Respondent to use the LE LABO mark. Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to pass off as Complainant while offering to sell unauthorized products.

 

Respondent registered and uses the Domain Names in bad faith. Respondent uses the Domain Names to pass off as Complainant and offer unauthorized prodcuts for sale. Additionally, Respondent had actual knowledge of Complainant's rights in the LE LABO mark at the time of registration, based on the content of the Respondent's Websites.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the LE LABO mark.  Each of the Domain Names is confusingly similar to Complainant's LE LABO mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

 

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

Complainant has rights in the LE LABO mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 4,659,463, registered December 23, 2014). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

The Panel finds that each of the Domain Names is confusingly similar to the LE LABO mark as they each incorporate the entire LE LABO mark while adding generic terms (such as "perfume") and/or country names and geographical designations (such as "vn", being the country code for Vietnam), along with a gTLD. The addition of generic, descriptive, or geographic terms and a gTLD to a mark is insufficient to distinguish a domain name from the mark it incorporates per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the LE LABO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS information of record lists "Hoang Van Ha / LA VAN LONG / Bui The Anh / Nguyen Dinh Hieu / Nguyen Quoc Nhut / le xuan tuan" as the registrants of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

Each of the Domain Names resolves or has resolved to one of the Respondent's Websites, each of which, through the reproduction of the LE LABO mark and reference to (and photos of) Complainant's products, passes itself off as an official website of the Complainant for the purpose of selling unauthorized versions of Complainant's goods, in direct competition with Complainant's merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant's goods or goods or services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) ("The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests."). See also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between June 2023 and June 2024, Respondent had actual knowledge of Complainant's LE LABO mark since each of the Respondent's Websites passes itself off as an official website of the Complainant and as such reproduces material from Complainant and makes repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register 7 domain names that contain the LE LABO mark and use them to redirect visitors to websites selling goods in direct competition with the Complainant under the LE LABO mark other than to take advantage of Complainant's reputation in the LE LABO mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant's LE LABO mark for commercial gain by using each of the confusingly similar Domain Names to resolve to a website that, through the use of the LE LABO mark and images of Complainant's products, passes itself off as an official website of the Complainant and offers unauthorized versions of Complainant's products in direct competition with the Complainant's products.  Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <lelabofragrances-philippines.website>, <lelaboindonesia.com>, <lelabo-indonesia.com>, <lelaboperfume.shop>, <lelabosale.online>, <lelabo-store.asia> and <lelabo-vn.website> domain names be TRANSFERRED from Respondent to Complainant

 

 

 

Nicholas J.T. Smith, Panelist

Dated: August 27, 2024