WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION L'Oreal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd Case No. D2008-1640 1. The Parties
Complainants are L'Oreal and Laboratoire Garnier & Compagnie, both of France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Australian Internet Investments Pty Ltd, of Australia. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 29, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On October 29, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 25, 2008.
The Center appointed Andrew Mansfield as the sole panelist in this matter on December 11, 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
Complainant L'Oreal 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 color, 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 trademark registrations for the L'OREAL trademark in Australia, numerous countries throughout the world, and has registered International trademarks. Relevant trademarks are described below:
L'OREAL is the owner of numerous L'OREAL trademarks registered in Australia, among which the following:
- Australian trademark L'OREAL (word) n°191519 registered on November 23, 1964 (renew) in class 3.
- Australian trademark L'OREAL (word) n°191520 registered on November 23, 1964 (renew) in class 3.
- Australian trademark L'OREAL SHINE DELICE (word) n°920758 registered on July 23, 2002 in class 3.
- Australian trademark L'OREAL ULTRA VOLUME COLLAGEN (word) n°1254086 filed on July 28, 2008 in class 3.
- Australian trademark L'OREAL PERFECTION (word) n°580466 registered on June 17, 1992 (renew) in class 3.
- Australian trademark L'OREAL PROFESSIONNEL PARIS (word) n° 723088 registered on November 29, 1996 (renew) in class 3, 5, 8, 11, 21, 26, 42.
- Australian trademark L'OREAL, THE FUTURE IS IN YOUR HANDS (word) n°1211517 registered on November 20, 2007 in class 3.
- Australian trademark SI NATURELLE DE L'OREAL (word) n°362618 registered on July 9, 1981 (renew) in class 3.
- n°303321 registered on December 22, 1976 (renew) in class 3.
- n°400253 registered on November 22, 1983 (renew) in class 3.
- n°423266 registered on March 5, 1985 (renew) in class 3.
- Australian trademark L'OREAL RENOVATIVE (word) n°441184 registered on February 24, 1986 (renew) in class 3.
- n°500323 registered on November 24, 1988 (renew) in class 3.
- Australian trademark L'OREAL PROGRESS (word) n°501231 registered on December 9, 1988 (renew) in class 3.
- Australian trademark PURE PLATIN L'OREAL (word) n°507279 registered on March 22, 1989 (renew) in class 3.
- n°539031 registered on July 30, 1990 (renew) in class 3.
- n°577369 registered on April 29, 1992 (renew) in class 3.
- Australian trademark L'OREAL NATURAL TOUCH (word) n°594637 registered on January 21, 1993 (renew) in class 3.
- Australian trademark L'OREAL PERFORMANCE” (word) n°613491 registered on October 11, 1993 (renew) in class 3.
- n°635531 registered on July 21, 1994 (renew) in class 3.
- n°642224 registered on October 4, 1994 (renew) in class 3.
- n°737245 registered on June 19, 1997 (renew) in class 3.
- n°751145 registered on December 16, 1997 (renew) in class 3.
- Australian trademark L'OREAL BECAUSE I'M WORTH IT (word) n°756414 registered on March 3, 1998 (renew) in class 3.
- Australian trademark L'OREAL PROFIL (word) n°783627 registered on January 22, 1999 in class 3.
- Australian trademark L'OREAL COLOUR RICHE (word) n°796088 registered on June 2, 1999 in class 3.
- Australian trademark L'OREAL EXPERTISE (word) n°805798 registered on September 2, 1999 in class 3.
- Australian trademark L'OREAL BRIO (word) n°923355 registered on August 14, 2002 in class 3.
- Australian trademark L'OREAL PERFECT FIRM (word) n°940047 registered on January 14, 2003 in class 3.
- Australian trademark L'OREAL E-STRAT CHALLENGE (word) n°1078743 registered on May 23, 2005 in classes 3, 35 and 41.
- Australian trademark L'OREAL TIME STOP (word) n°1148345 registered on October 9, 2006 in class 3.
- Australian trademark L'OREAL SENSI BALANCE (word) n°1150695 registered on December 5, 2006 in class 3.
Laboratoire Garnier & Compagnie is also the owner of numerous GARNIER trademarks protected in Australia, among which the following:
- Australian trademark GARNIER GOOD (word) n°1198892 registered on July 30, 2007 in class 3.
- (word + image) n°790310 registered on April 6, 1999 in class 3.
- Australian trademark GARNIER (word) n°818094 registered on December 21, 1999 in class 3.
- Australian trademark GARNIER BIOLAB (word) n°818797 registered on December 30, 1999 in class 3.
- Australian trademark LABORATOIRES GARNIER RECOLOR (word) n°830039 registered on March 31, 2000 in class 3.
- Australian trademark GARNIER 100% COLOR (word) n°875622 registered on May 14, 2001 in class 3.
- Australian trademark GARNIER SKIN NATURALS (word) n°880482 registered on June 27, 2001 in class 3.
- Australian trademark GARNIER BODYTONIC (word) n°883352 registered on July 23, 2001 in class 3.
- n°1037265 registered on September 3, 2004 in class 3.
- n°1053415 registered on October 19, 2004 in class 3.
- n°616955 registered on November 24, 1993 (renew) in class 3.
- n°714582 registered on August 7, 1996 (renew) in class 3.
- n°790309 registered on April 6, 1999 in class 3.
- n°611990 registered on September 20, 1993 (renew) in class 3.
- n°494248 registered on August 30, 1988 (renew) in class 3.
- n°507513 registered on March 29, 1989 (renew) in class 3.
- n°553950 registered on April 16, 1991 (renew) in class 3.
- n°555336 registered on May 3, 1991 (renew) in class 3.
- n°577248 registered on April 27, 1992 (renew) in class 3.
- n°611989 registered on September 20, 1993 (renew) in class 3.
Complainants are the owners of numerous L'OREAL and GARNIER trademarks throughout the world and specifically in Australia (Annex 15 to the Complaint):
- International trademark L'OREAL E-STRAT CHALLENGE (word) n°860785 registered on May 23, 2005 in classes 3, 35, and 41.
- International trademark L'OREAL TIME STOP (word) n°902738 registered on October 9, 2006 in class 3.
- n°838888 registered on September 3, 2004 in class 3.
- n°846526 registered on October 19, 2004 in class 3.
International trademark GARNIER GOOD (word) n°933608 registered on July 30, 2007 in class 3.
Complainants also own numerous domain names containing the trademarks L'OREAL and GARNIER, including (Annex 16 to the Complaint):
The notoriety of the L'OREAL trademark has been demonstrated in prior WIPO UDRP decisions. See, e.g., 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; and L'Oreal v. Lewis Cheng,WIPO Case No. D2008-0437. 5. Parties' Contentions A. Complainant
Complainants, as indicated above, indicate that they are the owners of numerous international and Australian trademark rights under the names L'Oreal and Garnier. Complainants allege that these trademarks are very well-known especially in the field of cosmetics.
Complainants state that they noticed the registration of the domain names , and and that they learned that the domain names were registered by Respondent, Australian Internet Investments Pty Ltd. The websites direct Internet users to a website containing links to other websites. On July 7, 2008, the Complainants allege that they sent a cease-and-desist letter to Respondent but never received a response. Complainants allege that no settlement with Respondent was achieved.
Complainants allege that Respondent's domain names , and are identical, and at the least, confusingly similar to Complainants' trademarks. Further, it is alleged that the disputed domain names reproduce Complainants' trademarks in their entirety. Complainants allege and assert that any character differences (such as the lack of an apostrophe or circumflex) between its trademarks and the domain names is due to technical limitations of Internet addressing and that prior panels have indicated these differences are not relevant to a finding of identity or confusing similarity. Finally, the addition of location or generic term identifiers to a trademark within a domain name are alleged to have no affect on a fining of identity or confusing similarity under prior panel decisions.
Complainants next allege that Respondent has no rights or legitimate interests in respect of the domain names because it is not affiliated with Complainants, has not licensed or obtained permission to use the trademarks, and has never asserted any facts supporting a finding that Respondent has a right or legitimate interest in any of the trademarks incorporated in the domain names.
Complainants allege that Respondent registered the domain names on June 4, 2008, long after the registration and the ubiquity of L'OREAL and GARNIER trademarks in Australia. Complainants further allege that the fact that Respondent chose to register three domain names containing the trademarks of a large company and its subsidiary shows that Respondent had Complainants in mind when it registered the disputed domain names. Complainants then allege that prior panels have concluded that a respondent's knowledge of a complainant's trademark when registering a domain name containing said mark constitutes bad faith registration. Bad faith in the registration of the domain names, according to Complainants, can further be deduced from the fact that Respondent never responded to the cease and desist letter nor did Respondent assert any information denying knowledge of Complainants' trademarks.
Complainants allege that Respondent used the domain names in such a way as to demonstrate bad faith use of the domain names. For example, Complainants state that the three domain names contain commercial links. The domain names lead to web pages, Complainants allege, that divert users to commercial links. Complainants allege that Respondent is profiting from the reputation and good will of Complainants. Complainants argue that the Panel can reasonably conclude Respondents are operating the well-known click-through or pay-per-click system of commercial gain. Such use, according to Complainants, demonstrates bad faith use of the domain names. Further, Complainants allege that bad faith use is demonstrated by the fact that Complainants' marks are so famous that the simple use by another party of those trademarks in a domain name constitutes opportunistic bad faith.
Complainants therefore request that and be transferred to L'Oreal and be transferred to Laboratoires Garnier & Compagnie. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings
Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain names were registered and are being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn. A. Identical or Confusingly Similar
The Panel finds that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainants' registered trademark. Such a finding is consistent with other panel decisions. See, e.g., AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
Many prior 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. Such a finding is based on the fact that the dominant and memorable part of the domain is a complainant's trademark. In this case, each of the domain names contains one of Complainants' trademarks as the predominant portion of each domain name.
The Panel agrees with prior Panels that the absence of certain characters not currently supported in the domain name system that distinguish the domain names form perfect identity with the relevant trademarks is not relevant to a finding under Paragraph 4(a)(1). See Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling,WIPO Case No. D2008-0226.
Several prior UDRP panels have held that the addition of a non-distinctive, descriptive or generic term like “officialsite” does not change the overall impression of a mark. See The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137. Indeed, the adjunct “officialsite” tends, if anything, to increase the likelihood of confusion, because the word indicates endorsement of the domain name or official status of the domain name granted by Complainants.
One of the domain names simply adds a geographical term to one of Complainants trademarks . Prior Panels have often not considered the addition of a geographical term to distinguish a domain name containing a trademark as a component of a domain name from the trademark. See e.g., L'Oreal v. Liao quanyong,WIPO Case No. D2007-1552. This Panel agrees with such findings.
For the above stated reasons the Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainants assert that they are aware of no rights or legitimate interests that Respondent has in the disputed domain names. The disputed domain names are not, to the best of Complainants' knowledge, the name of Respondent. Complainants assert that they have not authorized Respondent to use any of their trademarks. The Panel is satisfied that Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain names. By matter of default, Respondent has failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 your website or location or of a product or service on your website or location.”
The Panel finds persuasive Complainants' allegation that Respondent must have been aware of Complainants' rights in the trademarks identified above when it registered the domain names. The Panel agrees with Complainants that the fact that Respondent chose to register three domain names containing the trademarks of a large company and its subsidiary shows that Respondent purposefully registered the disputed domain names based on knowledge of Complainants' marks. A respondent's knowledge of a complainants trademark when registering a domain name containing said mark often constitutes evidence of bad faith registration. See ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362.
The domain names direct to webpages that contain links to other pages from which Respondent may be making profits from “click-throughs” and will be thus profiting from the reputation and goodwill of Complainants. The use of a well known name or trademark 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 Complainants' 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.
Many prior panels have found that using famous trademarks to attract internet users to a website for commercial gains constitutes bad faith use. See F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956. When the respondent's domain name point to a website that is a mere collection of links to other websites, ‘‘[the] website is obviously merely a vehicle for advertising revenue.'' F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956.
For the above stated reasons, the Panel finds that Respondent has registered and used the disputed domain names in bad faith as defined in Paragraph 4(a)(iii) of the Policy. 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 names and be transferred to L'Oreal and that the domain name be transferred to Laboratoires Garnier & Compagnie.
Andrew Mansfield
Sole Panelist
Dated: December 23, 2008
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