WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oreal SA, L'Oreal USA Creative v. Therese Kerr Case No. D2008-1748 1. The Parties
The Complainants are Lancôme Parfums et Beauté et Compagnie of Paris, France; Laboratoire Garnier et Compagnie, of Paris, France; L'Oreal SA, of Paris, France; and L'Oreal USA Creative, of New York, United States of America, represented by Nathalie Dreyfus of Dreyfus & associés, of Paris, France.
The Respondent is Therese Kerr, of New York, United States. 2. The Domain Names and Registrars
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 November 12 2008. On November 13 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On November 14 2008, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 20, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on November 24, 2008. The Center verified that the Complaint together with the amendment to 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 the Respondents of the Complaint, and the proceedings commenced on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 17, 2008.
The Center appointed David Stone as the sole panelist in this matter on December 29, 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 4.1 Complainants
The Complainants are all companies in Groupe L'Oréal, one of the world's largest cosmetics businesses. Groupe L'Oréal has more than 63,000 employees in 130 countries and a global turnover in 2007 of €17 billion. The Complainants own numerous trademarks relating to the GARNIER, LANCÔME and MAYBELLINE brands, including:
LANCÔME – United States Trademark no. 3022836 registered on December 6, 2005 in classes 3, 35 and 44;
GARNIER – United States Trademark no. 2529094 registered on January 15, 2002 in class 3; and
MAYBELLINE – United States Trademark no. 1065615 registered on May 17, 1977 (renewed) in class 3.
GARNIER, MAYBELLINE and LANCÔME branded products are available for sale in the United States and around the world. 4.2 Respondents
The original Respondent was Domains by Proxy, Inc. Following removal of the privacy shield, the Complainant added as a Respondent Therese Kerr of New York. Ms. Kerr registered the above domain names with GoD, Inc., on June 27, 2008. 5. Parties' Contentions 5.1 Complainants
The Complainants submit that the disputed domain names are confusingly similar to the numerous trademarks they have registered in the United States and elsewhere because they reproduce the Complainants' trademarks in their entirety and simply append the suffix “blog”, and, in relation to one domain name, “usa”. This, they argue, implies a “high likelihood of confusion” for the consumer.
The Complainants submit that the Respondent has no prior rights or legitimate interests in the disputed domain names, claiming that the Respondent has never before used the terms “Garnier”, “Lancôme” or “Maybelline” in connection with a bona fide offering of goods or services or with a weblog about the Complainants' brands. Further, the Complainants submit that the Respondent is not affiliated with the Complainants in any way and that the Complainants have never authorised the Respondent to register any domain name incorporating their trademarks.
The Complainants submit that the Respondent has acted in bad faith in relation to the disputed domain names, as the similarity of the disputed domain names to the trademarks of the Complainants means that the Respondent could not intend (or have intended) to develop a legitimate activity using the domain names. Furthermore, the Complainants submit that the domain names are being used to divert Internet users to other commercial websites, including competitors of the Complainants. This, it is claimed, generates pay-per-click revenue for the Respondent.
The Complainants request that the disputed domain names be transferred to Complainants. 5.2 Respondents
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
The Policy as affected by the Rules and the Supplemental Rules provides specific remedies to trademark rights holders against registrants of domain names where the rights holder (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The burden of proof is on the Complainants in respect of (a), (b) and (c) above.
In these proceedings, the Respondent failed to respond. In accordance with paragraph 14(b) of the Rules, “the Panel shall draw such inferences… as it considers appropriate” from this default. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.
Examples of the Complainants' registered trademarks are set out above. The Panel is satisfied that each is a famous and well-known trademark for personal care products.
The disputed domain names differ from the Complainants' own trademarks in three ways:
(a) the absence of the circumflex accent over the second “o” in and ; and
(b) the addition of the word “blog” in each of the disputed domain names; and
(c) the addition of “-usa” in .
In relation to the absence of the circumflex accent in and , the Panel is satisfied that this does not serve to create any aural, visual or conceptual difference between the trademark and the domain names: See Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling,WIPO Case No. D2008-0226 and L'Oréal, Lancôme Parfums et Beauté & Cie v. InfoChina Ltd,WIPO Case No. D2008-0981.
In relation to the addition of the word “blog” at the beginning of each domain name, the Panel is satisfied that Internet users would understand “blog” to be a reference to “weblog”, one of the publishing facilities made popular by the World Wide Web. In the context of a domain name, the Panel finds that the addition of the descriptive word “blog” does not serve to distinguish the domain names from each of the Complainants' trademarks: See Utrecht Manufacturing Corporation v. Web Management S.A.,WIPO Case No. D2007-1258.
In relation to the addition of a hyphen and the letters “usa” in the domain name , the Panel finds that Internet users would interpret the additional elements as a reference to the United States of America. The Panel finds that the addition of this geographic description is insufficient to distance the domain name from the Complainant's trademark: See PepsiCo, Inc v. Kieran McGarry,WIPO Case No. D2005-0629 and Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601.
In Harrods Limited v. John Griffin,WIPO Case No. D2002-0641, which involved the addition of “usa” to the HARRODS trademark, the Panel noted:
“The geographic designation adds nothing distinctive, and the emphasis remains on the name Harrods to attract the attention of [I]nternet users.”
The Panel respectfully adopts the reasoning of the Panelist in that case.
The Panel therefore finds that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel accepts the Complainants' submissions that the Respondent is not authorised to use the Complainants' trademarks; that the Respondent is not commonly known by the disputed domain names; and that the names involved in the disputed domain names are so similar to the Complainants' trademarks that the Respondent could not be reasonably held to be developing a legitimate activity using the domain names. The Complainants have therefore made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
Policy Paragraph 4(a)(ii) provides that as a consequence of the Complainants' prima facie case in support of its allegations, the burden shifts to the Respondent to produce evidence of its rights or legitimate interests. The Respondent has elected not to respond.
The Panel accepts the Complainants' submissions and finds that the Respondent has no rights or legitimate interests in respect of the domain names. C. Registered and Used in Bad Faith
The Panel find that the domain names were registered and are being used in bad faith.
Paragraph 4(b)(iv) of the Policy sets out the following guidance in relation to bad faith:
“4(b)(iv): by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The disputed domain names include in full the Complainants' trademarks. The Panel finds that given the fame of the Complainants' trademarks including in the United States where the Respondent is based, the Respondent was aware of the Complainants' trademarks at the time she registered the domain names.
The printouts of the web pages found at the disputed domain names submitted by the Complainant show that the domain names are being used to attract Internet users and divert them to websites which include competitors of the Complainants.
The Panel therefore finds that the Respondent's registration of the domain names and subsequent activity at the disputed domain names does represent registration and use in bad faith: See Sanofi-Aventis v. Protected Domain Services and Jan Hus, Husiten,WIPO Case No. D2008-0463.
In addition, the Respondent's bad faith is also established by:
- her registration of well-known marks as domain names: See L'Oréal, Lancôme Parfums et Beauté & Cie v. InfoChina ltd,WIPO Case No. D2008-0981; L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie v. Spiral Matrix,WIPO Case No. D2006-0869; L'Oréal v. Liao quanyong,WIPO Case No. D2007-1552; and
- her registration on the same day of four domain names containing well-known marks of a third party: See ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362; and
- her use of a privacy shield: See Ustream.TV, Inc v. Vertical Axis, Inc.,WIPO Case No. D2008-0598.
Further, the Panel finds that the Respondent's bad faith is not mitigated by any issues of non-commercial commentary or criticism or otherwise legitimate speech. As is apparent from the pay-per click web pages at the domain names which trade on the value of the Complainant's marks, no non-commercial commentary or criticism or otherwise legitimate speech use is being made of the disputed domain names.
The Panel therefore finds that the Respondent registered and is using the disputed domain names 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 names and be transferred to Lancôme Parfums et Beauté et Compagnie; be transferred to Laboratoire Garnier et Compagnie; and be transferred to L'Oréal SA.
David Stone
Sole Panelist
Dated: January 12, 2009
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