WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION L'OREAL v. Larry Huston Case No. D2008-1249 1. The Parties
The Complainant is L'OREAL of Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Larry Huston, of Covington, Kentucky, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain. On August 18, 2008, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2008. On September 15, 2008 the Complainant requested suspension of the proceedings for days. On October 15, 2008, the proceedings were reinstated. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2008.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on October 27, 2008. 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 is a French industrial group which specializes in the field of cosmetics and beauty. It was created in 1909 by a French chemist by the same name. The Complainant is present in over 130 countries and markets over 500 brands. It has more than 2,000 products in all sectors of the beauty industry, such as hair colour, styling aids, cosmetics, cleansers, and fragrances. The Complainant employs over 3,000 people of 60 nationalities who work in 30 different disciplines.
According to the documentary evidence and contentions submitted, the Complainant owns a number of trade mark registrations for the L'OREAL trade mark in the United States of America (the location of the Respondent). For example, the L'OREAL trade mark was applied for in the United States of America on June 25, 1956 (Reg. No. 0661746). The complainant is also the proprietor of many domain names featuring the mark L'OREAL or similar marks, for example, and .
The notoriety of the L'OREAL trade mark has been demonstrated in prior WIPO UDRP decisions. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix,WIPO Case No. D2006-0869; L'Oreal v. Liao quanyong,WIPO Case No. D2007-1552; L'oreal v. Domain Park Limited,WIPO Case No. D2008-0072; L'Oreal v. Lewis Cheng,WIPO Case No. D2008-0437.
On April 4, 2008, the representatives for the Complainant wrote to the Respondent, requesting immediate cessation of use of the Domain, transfer of the Domain to the Complainant, an undertaking not to use the mark L'OREAL without authorization and payment of costs. On April 16, 2008 the Respondent sent a message by fax to the representatives of the Complainant stating that “you are free to have the name. Frankly, I did not know that [we] filed for it”. On April 23, 2008, the representatives of the Complainant replied and asked the Respondent to contact its Registrar to unlock the Domain and provide the Complainant with necessary information to initiate the transfer of the Domain. The Respondent replied the same day saying he was travelling and would do so once he returned to the office.
Following the initiation of the proceedings, the Respondent sent an email to the Center on August 22, 2008 stating that “we suspended our ownership… I have sent an email to that effect”. On September 3, 2008 the Respondent sent a similar email stating “i repeat my earlier message that we asked our domain provider to release the url”.
Following these emails, the Complainant suspended the proceedings and sought to communicate with the Respondent on September 24, October 2, 6, and 13, 2008. It appears that no reply was received and so the Complainant resumed the proceedings.
The Respondent did not reply to the Complainant's contentions. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that the Domain is identical or confusingly similar to its trade marks. The Complainant submits that the Domain reproduces its trade mark in its entirety.
The Complainant submits that the only difference between the Domain and its trade marks are:
- the suppression of the apostrophe to L'OREAL's trademarks;
- the addition of a generic term “innovation”; and
- the addition of a gTLD “.com”.
The Complainant alleges that the suppression of the apostrophe on the Complainant's trade marks after the “L” of L'OREAL is due to technical reasons which prevent the registration of domain names with an apostrophe.
Regarding the addition of the descriptive or generic term “innovation”, the Complainant asserts that the term does not avoid the likelihood of confusion between the Domain and the trade mark L'OREAL. Moreover, the term is indicative of a common value of the Complainant and its suppliers, which is “innovation”. Accordingly, the Domain includes both a trade mark of the Complainant and a word highly associated with, and a common value of, the Complainant.
Accordingly, the Complainant submits that the Domain reproduces the Complainant's trade mark it its entirety and that the Domain as a whole is confusingly similar to the Complainant's trade marks. Rights or Legitimate Interests
First, the Complainant submits that Respondent is not affiliated with nor authorized by the Complainant in any way.
Second, the Complainant submits that Respondent has no prior rights or legitimate interests in the disputed Domain name and that Respondent has never used the term “L'Oreal” in any way before or after the Complainant obtained its trade marks. In addition, the Respondent was never known under the name subject of the Domain, indeed, the Respondent admitted that it did not know it had the Domain. Moreover, the Respondent never claimed to have any legitimate interests in the Domain, and stated the Complainant was free to have it, but a transfer did not ensue.
Third, the Complainant submits that the Domain directs to a webpage from where the Respondent is likely to be obtaining “click through” fees onto other websites. The Complainant submits that such use neither constitutes a bona fide offering of goods or services, nor non commercial or fair use, and so does not constitute legitimate interest. Registered and Used in Bad Faith
With respect to registration, first, the Complainant submits that the Complainant has previously demonstrated the notoriety of the Complainant's trade marks before UDRP panels (see cases referred to above).
Second, the Complainant submits that the fact the Respondent chose to register the Domain featuring the Complainant's trade mark shows the Respondent had the Complainant in mind when it did so. Accordingly, this knowledge of the Complainant's trade mark constitutes bad faith when the Domain was registered.
Third, the Respondent did not deny knowledge of the Complainant's trade marks. Notwithstanding any such contention, the Complainant submits that had an employee of the Respondent typed “L'OREAL” into an Internet search engine, the search results would have been websites about the Complainant. The Respondent stated he was unaware of the Domain. The Complainant submits that even if an employee of the Respondent registered the Domain, it is the Respondent's responsibility.
With respect to use, first, the Complainant submits that the Domain is directed to a webpage which contains links to other pages and that this constitutes bad faith use as the Respondent will be profiting from the reputation and goodwill of the Complainant and generating click-through fees.
Second, the Complainant submits that use of a well known name by someone with no connection with that name suggests opportunist bad faith. B. Respondent
No formal Response has been submitted by the Respondent. 6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested (Policy, paragraph 4(a)):
(i) the Domain is identical or confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain; and
(iii) the Domain has been registered and used in bad faith, A. Identical or Confusingly Similar
First, the Domain incorporates the L'OREAL trade mark in its entirety. Numerous UDRP panels have found that a domain name that wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. The dominant and memorable part of the Domain is the Complainant's trade mark.
The Panel finds that the suppression of the apostrophe from the L'OREAL trade marks, the addition of a descriptive term “innovation” and the addition of a gTLD “.com” are not sufficient to escape the finding that the Domain is confusingly similar to the trade marks and does not change the overall impression of the designation as being connected to a trade mark of the Complainant.
Several prior UDRP panels have held that the addition of a non-distinctive, descriptive or generic term like “innovation” does not change the overall impression of a mark. The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137. Indeed, the adjunct “innovation” tends, if anything, to increase the likelihood of confusion, because the word is descriptive of some of the business operated by the Complainant under the L'OREAL mark.
The Panel finds that the Domain is confusingly similar to the Complainant's trade mark L'OREAL, for the purposes of paragraph 4(a)(i) of the Policy. The Panel finds that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
The Respondent made no submission asserting rights or legitimate interests in the Domain. Indeed, the Respondent effectively conceded that it did not have rights in the Domain (see factual summary above).
The Respondent has not demonstrated that before any notice of the dispute, it used, or had made preparations to use, the Domain or a name corresponding to the Domain in connection with a bona fide offering of goods or services. The Respondent has not demonstrated that it had been commonly known by the Domain. The Respondent has not demonstrated it is making a legitimate non commercial or fair use of the Domain, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trade mark at issue.
A complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in a domain name. A prima facie case has been made by the Complainant and, in the absence of any response from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the Domain for the purposes of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant's trade mark registrations of record confirm the Complainant's submissions that it had long had rights in its L'OREAL trade marks when the Domain was registered. The Panel finds persuasive the Complainant's allegation that the Respondent must have been aware of the Complainant's rights in the mark L'OREAL when it registered the Domain.
The Domain directs to a webpage which contains links to other pages from which the Respondent may be making profits from “click-throughs” and will be thus profiting from the reputation and goodwill of the Complainant. The use of a well known name by someone with no connection with that name is evidence of bad faith where the domain name is used to intentionally attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location.
Accordingly, for the purposes of paragraph 4(a)(iii) of the Policy the Panel finds the Domain was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain name, be transferred to the Complainant.
Charters Macdonald-Brown
Sole Panelist
Dated: November 10, 2008
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