L'Oréal v Le Van Thanh

WIPO Case No. D2025-0401

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Le Van Thanh

Case No. D2025-0401

1. The Parties

The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.

The Respondent is Le Van Thanh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <lancome-th.store> (the “Disputed Domain Name”) is registered with

Mat Bao Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on registrar verification in connection with the Disputed Domain Name. On February 4, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Domain Admin) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 7, 2025.

On February 6, 2025, the Center informed the parties in Vietnamese and English, that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On February 7, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

The Center verified that the Complaint together with the amended 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Vietnamese and English of the Complaint, and the proceedings commenced on February 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2025.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on March 20, 2025. 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

The Complainant, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty. established in Thailand in 2000 and in Vietnam in mid-2007.

Lancôme, a brand of the Complainant, was founded in 1935, and over the decades, has become a leading luxury beauty brand in the world and notably number one in anti-ageing skincare.

The Complainant is the owner of several registered trademarks including the sign LANCÔME, alone or
combined with another element, including but not limited to International Trademark Registration No. 157412
for LANCÔME, registered on November 12, 1951; International Trademark Registration No. 514803 for
LANCÔME, registered on July 21, 1987; and Vietnamese Trademark Registration No. 4-0171183-000 for

LANCÔME PARIS, registered on September 7, 2011.

The Complainant is also the owner of the domain name <lancome.com> registered on July 8, 1997.

The Disputed Domain Name was registered on November 21, 2024.

The Disputed Domain Name resolves to an active website with the pop-up notification showing the content “Trang tạm ngừng hoạt động! Landing page tạm thời không thể truy cập do quá hạn sử dụng. Vui lòng gia hạn tài khoản để khôi phục hoạt động” (in English: “The landing page is temporarily closed. The landing

page is temporarily inaccessible due to expired license. Please renew your account to restore operation”).

However, the background of the website is in Thai language offering Complainant’s LANCÔME products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the
Complainant has rights.

The Complainant contends that the Disputed Domain Name is virtually identical or at least confusingly similar to Complainant’s LANCÔME trademark and the official domain name, in which the Complainant has rights.

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The Complainant notes that the addition of a suffix “th”, intersected by a hyphen, which is the two-letter International Organization for Standardization (“ISO”) country code and the two-letter country code top level domain (“ccTLD”) abbreviation corresponding to Thailand does not alleviate any potential confusion but significantly increases the likelihood that consumers might mistakenly believe that the products offered are associated with a Thai affiliate of the Complainant, especially when the content of the website is in Thai language. Further, the Complainant argues that the mere adjunction of a generic Top-Level-Domain (“gTLD”) such as “.store” is irrelevant as the gTLD is insufficient to avoid a finding of confusing similarity.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

First, the Complainant asserts that the Complainant’s LANCÔME trademark preceded the registration of the

Disputed Domain Name for years.

Second, the Respondent is not commonly known by the name “LANCÔME”, in any way affiliated with domain name incorporating said trademark.

Third, the Complainant submits that the Respondent did not demonstrate, use of, or demonstrable preparations to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a website reproducing Complainant’s trademark and logo without its authorization and offering Complainant’s alleged products for sale, creating a false affiliation with the Complainant. Consequently, the Disputed Domain Name is not used in any type of legitimate business or services and the Respondent fails to show any intention of noncommercial or fair use of the Disputed Domain Name.

In addition, the Complainant asserts that the Respondent has not been authorized nor licensed to use the trademark LANCÔME, to seek registration of any domain name incorporating said mark, or to sell products of this brand.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, the Complainant submits that the Disputed Domain Name was registered in bad faith because the Respondent already knew of the existence of the Complainant’s trademark at the time the Disputed Domain Name was registered for the following reasons: (i) the Complainant’s trademark LANCÔME is well-known throughout the world, including Viet Nam where the Respondent is located; (ii) the composition of the Disputed Domain Name entirely reproduces the Complainant’s trademark; (iii) the Complainant’s LANCÔME trademark registrations significantly predate the registration date of the Disputed Domain Name; (iv) a quick trademark search on “LANCÔME” would have revealed to the Respondent the existence of the Complainant and its trademark; and (v) the Respondent does not make any legitimate use of the Disputed Domain Name presently since the Disputed Domain Name directs to a website reproducing the Complainant’s trademark and logo in the tab without its authorization and offering Complainant’s alleged product for sale.

Second, the Complainant submits that the Respondent uses the Disputed Domain Name to direct the Internet users to a website displaying the Complainant’s logo and offering the Complainant’s products for sale. Such use of the Disputed Domain Name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation.

Therefore, the Complainant considers that the Respondent both registered and used the Disputed Domain

Name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the
Complainant.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Vietnamese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be

English for several reasons, including the fact that:

i. The Complainant is unable to communicate in Vietnamese and the use of another language other than

English would delay the proceedings and impose a burden on the Complainant.

ii. The Disputed Domain Name includes only Latin characters, which strongly suggests that the Respondent

has knowledge of the English language.

iii. English is the primary language for international relations and it is one of the working languages of the

Center.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Complainant has evidenced that it has rights in and to the LANCÔME trademark, which was registered in several countries before the registration of the Disputed Domain Name.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain
Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term “th” and the hyphen may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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In addition, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.store” to the viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s LANCÔME trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “LANCÔME”. Thus, the Panel finds that the Respondent has no rights in the LANCÔME trademark.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., (“Oki Data”), WIPO Case No. D2001-0903 including:

- the Respondent must actually be offering the goods or services at issue;

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- the Respondent must use the site to sell only the trademarked goods or services (otherwise, there is the
possibility that the Respondent is using the trademark in a domain name to bait consumers and then switch

them to other goods or services);

- the site itself must accurately and prominently disclose the Respondent’s relationship with the trademark

owner; and

- the Respondent must not try to “corner the market” in domain names that reflect the trademark, thus
depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel conducted an independent search on “ and found that the Disputed Domain Name, at least on January 31, 2025, resolved to an online shop advertising and selling cosmetics bearing the Complainant’s LANCÔME trademark. On such website, the Panel found that the

Respondent did not place any statement or disclaimer disclosing accurately and prominently its relationship with the Complainant. This indication accordingly may mislead Internet users into believing in a connection or association between the Respondent and the Complainant, where such connection or association does
not exist in reality.

With such a view, the Panel finds that the use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds no evidence indicating that the Respondent, whether as an individual, business, or entity, is commonly known by the Disputed Domain Name, nor is the Respondent making a legitimate noncommercial or fair use of it. In fact, by incorporating

the Complainant’s distinctive trademark in its entirety within the Disputed Domain Name, the composition of the Disputed Domain Name affirms the Respondent’s intention of taking unfair advantage of the likelihood of confusion between the Disputed Domain Name and the Complainant as to the origin or affiliation of the
website at the Dispute Domain Name, contrary to the fact, which cannot constitute fair use.

In particular, the Disputed Domain Name fully replicates the Complainant’s LANCÔME trademark with the addition of the suffix “th” which is the two letter ISO country code and the two-letter ccTLD abbreviation corresponding to Thailand where the Complainant has commercial establishment since 2000. Considering the Complainant’s broad presence, it is likely that consumers might mistakenly believe that the products offered are associated with a Thai affiliate of the Complainant. Therefore, the Panel confirms the findings that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or

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(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or

service on your website or location.”

In the present case, the Panel finds that the Complainant has put forth evidence that the Respondent has
registered and used the Disputed Domain Name in bad faith. The Respondent did not formally reply to the
Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s LANCÔME trademark has been registered and put in use in several countries worldwide. These trademark registrations well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the Complainant’s LANCÔME trademark in its entirety. Given the extensive use of the LANCÔME trademark for cosmetics by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name, the Panel is of the view that the Respondent obviously knew of the Complainant and its LANCÔME trademark when it registered the Disputed Domain Name. The Panel considers the registration of the Disputed Domain Name as an attempt by the Respondent to take unfair advantage of the Complainant’s goodwill and the reputation of the LANCÔME trademark.

The Disputed Domain Name resolves to an active website with a pop-up notification showing the content in Vietnamese “Trang tạm ngừng hoạt động! Landing page tạm thời không thể truy cập do quá hạn sử dụng. Vui lòng gia hạn tài khoản để khôi phục hoạt động” (in English: “The landing page is temporarily closed.

The landing page is temporarily inaccessible due to expired license. Please renew your account to restore operation.”). However, it is well proven and evidenced by the Complainant and the Center that the website under the Disputed Domain Name used to offer for sale cosmetic products bearing LANCÔME trademark. In addition to adoption of the LANCÔME trademark as a uniquely distinctive part in the Disputed Domain

Name, the Respondent used the Complainant’s LANCÔME trademark on the website thereunder.

The Panel takes the view that any Internet users seeking to purchase the Complainant’s LANCÔME Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website on its website, which is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

products would likely mistakenly believe that the Respondent is either connected to or associated with the

The Panel finds that the Complainant has established the third 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 <lancome-th.store> be transferred to the Complainant.

/Pham Nghiem Xuan Bac/
Pham Nghiem Xuan Bac
Sole Panelist
Date: April 1, 2025