Nguyen Thi Kim Phuong, Đoàn Thanh Tùng and Nguyen Ba Tung
WIPO Case No. D2023-3697
•13-12-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Estée Lauder Cosmetics Ltd. and Estée Lauder Inc. v. Nguyễn Thế Anh,
Nguyễn Văn Vũ, Nguyễn Trọng Huy, Ngo Xuan Dinh, Nguyễn Quyết Thắng,
Nguyen Thi Kim Phuong, Đoàn Thanh Tùng and Nguyen Ba Tung
Case No. D2023-3697
1. The Parties
The Complainants are Estée Lauder Cosmetics Ltd., Canada, and Estée Lauder Inc., United States of
America (“United States”), represented by Fross Zelnick Lehrman & Zissu, P.C., United States.
The Respondents are Nguyễn Thế Anh, Viet Nam, Nguyễn Văn Vũ, Viet Nam, Nguyễn Trọng Huy, Viet Nam,
Ngo Xuan Dinh, Viet Nam, Nguyễn Quyết Thắng, Viet Nam, Nguyen Thi Kim Phuong, Viet Nam,
Đoàn Thanh Tùng, Viet Nam, and Nguyen Ba Tung, Viet Nam.[1]
[1]All the Respondents will collectively be referred to as the “Respondent”, unless reference is made to any of them with their respective
2. The Domain Names and Registrar
The disputed domain names <esteelauderchinhhang.store>, <esteelaudercompanies.store>,
<esteelauderphp.store>, <esteelauderstore.online>, <esteelauderstore.xyz>, <esteelauderstorevn.online>,
<esteelaudervietnam.asia>, <esteelaudervietnam.store>, <esteelaudervn.net>, <esteelaudervnn.store>,
<esteethailand.store>, <estelauder.online>, <estelauder.store> are registered with Mat Bao Corporation (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2023.
On September 5, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On September 6, 2023, the Registrar transmitted by email to
the Center its verification response, disclosing registrant and contact information for the disputed domain
names <esteelauderchinhhang.store>, <esteelaudercompanies.store>, <esteelauderphp.store>,
<esteelauderstore.online>, <esteelauderstorevn.online>, <esteelauderstore.xyz>,
<esteelaudervietnam.asia>, <esteelaudervietnam.store>, <esteelaudervn.net>, <esteelaudervnn.store>
<estelauder.online>, <estelauder.store> which differed from the named Respondent and contact information
in the Complaint. On October 5, 2023, the Registrar transmitted by email to the Center its verification
response, disclosing registrant and contact information for the disputed domain name <esteethailand.store>,
confirming that Nguyen Thi Kim Phuong is the registrant and providing contact details.
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The Center sent an email communication to the Complainants on October 5, 2023, with the registrant and
contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the
Complainant to either file separate complaint(s) for the disputed domain names associated with different
underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity.
The Complainant filed an amended Complaint on October 12, 2023.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 18, 2023. In accordance with the Rules, paragraph
5, the due date for Response was November 7, 2023. The Respondents Nguyễn Quyết Thắng, Nguyễn Văn
Vũ and Nguyễn Trọng Huy sent email communications to the Center on October 20, 2023, October 21, 2023
and October 23, 2023. On November 13, 2023, the Center informed the Parties that it would proceed to
panel appointment.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 29, 2023.
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 Complainants are part of a group of companies, namely The Estée Lauder Companies Inc., which
operates in the cosmetic industry since 1946 under its flagship brands ESTEE LAUDER and ESTEE. The
Complainants’ group further use other trademarks to designate cosmetics, skin care, and fragrance products,
including CLINIQUE, MAC, and ORIGINS. The Complainants’ products are available in over 135 countries
and territories around the world, both in stores and online, at over 22,000 retail locations and in numerous
merchant websites. In Viet Nam (the country where the registrants of the disputed domain names are
located according to the Registrar’s verification), the Complainants have six retail locations and two online
storefronts. Per the Complaint, during 2022, the Complainants’ group sales totaled more than USD 17.7
billion worldwide.
The Complainants own numerous trademark registrations for their brands ESTEE and ESTEE LAUDER
covering more than 100 countries and jurisdictions, including:
| - | United States Trademark Registration No. 71,575,412, ESTEE LAUDER (figurative), registered on |
| September 5, 1950, in class 51; | |
| - | United States Trademark Registration No. 3,049,827, ESTEE (word), registered on January 24, 2006, in |
| class 3; and | |
| - | Viet Nam Trademark Registration No. 4-0008235-000, ESTEE LAUDER (figurative), registered on May |
| 14, 1993, in class 3. |
The aforementioned trademark registrations will collectively be referred to as the “ESTEE LAUDER mark”
and the “ESTEE mark”, respectively.
Prior decisions under the Policy have recognized the international reputation and famous character of the
ESTEE LAUDER mark.[2]
[2]See, e.g., Estee Lauder Inc. v. Frank Nkafu, WIPO Case No. D2020-0647; and Estée Lauder Inc., and Estée Lauder Cosmetics Ltd.
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The Complainants’ online stores are conducted through a main website at “ as well
as through numerous country and language specific websites, including at “ for
Viet Nam.[3] To this effect, the Complainants and/or their group own various domain names corresponding to
[3]Other Complainants’ country and language specific websites mentioned in the Complaint are: “
their trademarks, including <esteelauder.com> (registered on August 14, 1997), and <esteelauder.com.vn>.
The disputed domain names were registered within less than a year (between August 17, 2022 and June 3,
2023), as follows:
Disputed Domain Names Date of registration esteelauderchinhhang.store December 7, 2022 esteelaudercompanies.store December 26, 2022 esteelauderphp.store February 2, 2023 esteelauderstore.xyz February 2, 2023 esteelauderstore.online June 3, 2023 esteelauderstorevn.online June 3, 2023 esteelaudervietnam.asia December 14, 2022 esteelaudervietnam.store September 24, 2022 esteelaudervn.net March 2, 2023 esteelaudervnn.store November 17, 2022 esteethailand.store August 17, 2022 estelauder.online September 28, 2022 estelauder.store September 25, 2022
All the disputed domain names, except the disputed domain name <esteelauderphp.store>, are apparently
inactive resolving to Internet browser error messages.
The disputed domain name <esteelauderphp.store> resolves to a website, in English language, that
purportedly commercializes ESTEE LAUDER products. This website includes the ESTEE LAUDER mark at
its heading, as well as the image of a seal that indicates that it is the “guaranteed ESTEE LAUDER
authentic” and “official site”. This website contains various promotional material and photographs of ESTEE
LAUDER cosmetics, their description and prices, as well as forms and links for their purchase. In order to
buy any of the products, the user is requested to provide personal information. This website does not
include information about its owner, and/or its relationship or lack of relationship with the Complainants and
the ESTEE LAUDER mark. It contains phrases such as “Welcome to the world of Estee Lauder”, as well as
“Pictures of Estée Lauder’s showroom”, and complete information about the Complainants’ group and the
ESTEE LAUDER mark.
5. Parties’ Contentions
A. Complainants
The Complainants contend that they have satisfied each of the elements required under the Policy for a
transfer of the disputed domain names.
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Notably, the Complainants contend that the ESTEE LAUDER and ESTEE marks are well known and famous
worldwide, the disputed domain names are confusingly similar to these trademarks, and the Respondent has
no rights or legitimate interests in the disputed domain names. There is no relationship between the Parties,
the Respondent is not authorized to use the Complainants’ trademarks, and is not commonly known by any
of the disputed domain names. Nearly all of the disputed domain names are inactive, and the only active
website, at the disputed domain name <esteelauderphp.store>, falsely claims to be an “official site”. The
Respondent registered and is using the disputed domain names in bad faith, and has configured email
servers for them, which indicates an intention to potentially use the disputed domain names for purposes
other than hosting a website, including potentially for constructing an email composition containing the
disputed domain names, to be used for deceiving purposes.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
In separate email communications, under different registrants’ names (Nguyễn Quyết Thắng, Nguyễn Văn
Vũ and Nguyễn Trọng Huy), the Respondent gave consent for the transfer or cancellation of some of the
disputed domain names indicating that they were no longer needed.
6. Discussion and Findings
The Complainants have made the relevant assertions as required by the Policy and the dispute is properly
within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements
in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and
allegations, and performing some limited independent research under the general powers of the Panel
articulated, inter alia, in paragraph 10 of the Rules.
A. Preliminary Issue: Consolidation of Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The
Complainants allege that the disputed domain names registrants are the same entity or mere alter egos of
each other, or the disputed domain names are under common control. The Complainants request the
consolidation of multiple Respondents pursuant to paragraph 10(e) of the Rules.
The disputed domain names registrants did not comment on the Complainants’ request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that
the domain names are registered by the same domain name holder.
In addressing the Complainants’ request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that (i) all the disputed domain names are registered with the
same Registrar, they all use the same name servers, and they are all registered by registrants located in Viet
Nam; (ii) all the disputed domain names were registered within a short period of time (less than a year), and
some of them on the same dates; (iii) the names of the registrants are similar, as well as the composition of
all the disputed domain names, all starting with the mark ESTEE, ESTEE LAUDER, or a typographical
mistake of these marks; and (iv) the use of all the disputed domain names is also similar (almost all
inactive).
As regards fairness and equity, the Panel sees no reason why consolidation of the Respondents would be
unfair or inequitable to any Party.
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Accordingly, the Panel decides to proceed on a consolidated basis regarding the nominally different disputed
domain names registrants (referred to below as “the Respondent”) in a single proceeding.
B. 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 Complainants’ trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
Based on the available record, the Panel finds the Complainants have 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 ESTEE and ESTEE LAUDER marks are recognizable within the disputed domain
names. Accordingly, the disputed domain names are confusingly similar to these trademarks for the
purposes of the Policy.
All the disputed domain names contain the ESTEE mark and/or the ESTEE LAUDER mark, or common
typosquatting mistakes of these marks (omitting the final letter “e” of the term “estee”), and some disputed
domain names add geographical terms or abbreviations (“thailand”, “vietnam”, “vn”, “vnn”, or “php”), the
terms “store”, “companies”, or the term “chinhhang” (equivalent to the Vietnamese word “chính hãng” that
means “genuine” or “authentic”). Although the addition of other terms may bear on assessment of the
second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain names and the Complainants’ trademarks for the purposes of the
Policy. WIPO Overview 3.0, sections 1.7, 1.8, and 1.9.
Therefore, based on the available record, the Panel finds the first element of the Policy has been
established.
C. 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 Complainants have established a prima facie case
that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has
not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence
demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the
Policy or otherwise. Furthermore, the Respondent, under the names of three of the named registrants for
the disputed domain names, has communicated its consent to the cancellation or transfer of some of the
disputed domain names to the Complainants.
The Panel notes that the disputed domain names share no similarity with the names given by the
Respondent for their registration, and the Respondent is not authorized to use the Complainants’
trademarks.
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The Panel further notes that the disputed domain names are not used in connection to a bona fide offering of
goods or services or to a legitimate purpose. The only active website linked to one of the disputed domain
names (<esteelauderphp.store>) falsely suggests being the “official site” for the purchase of ESTEE
LAUDER products, instead of informing about its lack of relationship with the Complainants and their
trademarks. This website falsely generates a risk of confusion and affiliation that can never confer rights or
legitimate interests under the Policy. Furthermore, the composition of all the disputed domain names carries
a risk of implied affiliation.
Therefore, based on the available record, the Panel finds the second element of the Policy has been
established.
D. 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.
In the present case, the Panel finds that all circumstances of this case point to bad faith of the Respondent.
The Panel notes that the ESTEE and ESTEE LAUDER marks are famous worldwide and internationally
used, including in Viet Nam, where the Respondent is located according to the Registrar verification. The
Complainants’ trademarks have a strong presence over the Internet where the Complainants’ group
commercializes its products through a main website as well as through numerous country and language
specific websites, including at “ for Viet Nam”.[4]
The Panel finds that the Respondent knew or should have known about the Complainants and their famous
trademarks and targeted these marks in bad faith. Furthermore, the use of one of the disputed domain
names (<esteelauderphp.store>) corroborates the Respondent’s bad faith. The false allegation at the
Respondent’s website indicating that it is an “official site” for the purchase of ESTEE LAUDER products, and
all content of this site enhances the risk of confusion or affiliation, which corroborates the Respondent’s bad
faith.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet
users by generating a likelihood of confusion with the Complainants and their trademarks.
Regarding all other disputed domain names, which are apparently inactive, panels have found that the non-
use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith
under the doctrine of passive holding. The Panel finds the non-use of most of the disputed domain names
does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at
the totality of the circumstances in each case, factors that have been considered relevant in applying the
passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated
good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in
breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available
record, the Panel notes the distinctiveness or reputation of the Complainants’ trademarks, and the
composition of the disputed domain names, and finds that in the circumstances of this case the passive
holding of the disputed domain names does not prevent a finding of bad faith under the Policy.
Therefore, based on the available record, the Panel finds that the Complainants have established the third
element of the Policy.
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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 names <esteelauderchinhhang.store>, <esteelaudercompanies.store>,
<esteelauderphp.store>, <esteelauderstore.online>, <esteelauderstorevn.online>,
<esteelauderstore.xyz>,<esteelaudervietnam.asia>, <esteelaudervietnam.store>, <esteelaudervn.net>,
<esteelaudervnn.store>,<esteethailand.store>, <estelauder.online>, <estelauder.store> be transferred to the
Complainant.
/Reyes Campello Estebaranz/ Reyes Campello Estebaranz
Sole Panelist
Date: December 13, 2023
name.
v. Dang Xuan Hoa, WIPO Case No. D2023-3307.
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