WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION L'ORÉAL SA and LANCÔME PARFUMS ET BEAUTE ET COMPAGNIE v. MyFashionF LLC, Will Turnage Case No. D2009-0729 1. The Parties
The Complainants are L'ORÉAL SA and LANCÔME PARFUMS ET BEAUTE ET COMPAGNIE of Paris, France, represented by Dreyfus & Associés, France.
The Respondent is MyFashionF LLC, Will Turnage of Glen Allen, Virginia, United States of America. 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 June 3, 2009. On June 4, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On June 4, 2009, 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 Complainant on June 9, 2009 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 amendment to the Complaint on June 12, 2009. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 5, 2009. The Response was filed with the Center on July 3, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 10, 2009. 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 paragraph 7 of the Rules.
On July 10, 2009, the Center received a supplemental submission from the Complainant. 4. Factual Background
The Complainant L'ORÉAL heads one of the world's largest groups in the cosmetics industry, while the Complainant LANCÔME has been a L'ORÉAL group subsidiary since 1963. L'ORÉAL is the world's number one cosmetics group, employs more than 63,000 employees in 130 countries, and realized consolidated sales of EUR 17 billion in 2007. The Complainant L'ORÉAL is well-known all over the world, including the United States (“US”) where it is represented by its subsidiary L'ORÉAL USA, based in New York. As a subsidiary of the Complainant L'ORÉAL, the Complainant LANCÔME specializes in luxury products, is ranked first on the market of beauty products on an international scale with a 9% market share, and is also well-known all over the world.
The Complainant L'ORÉAL is the owner of numerous L'ORÉAL trademarks registered in the US and throughout the world, inter alia:
- US trademark L'ORÉAL (word mark in stylized characters) No. 0540541 registered on April 3, 1951 in class 03,
- US trademark L'ORÉAL (word) No. 0661746 registered on May 13, 1958 in class 03,
- International trademark L'ORÉAL (word) No. 184970 registered on May 23, 1955 in classes 03 and 05,
- International trademark L'ORÉAL (word) No. 230114 registered on March 28, 1960 in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34,
- International trademark L'ORÉAL (word) No. 394615 registered on December 12, 1972 in classes 22 and 26, and
- Community trademark L'ORÉAL (word) No. 000767285 registered on October 4, 1999 in class 25 (the “L'ORÉAL Marks”).
The Complainant LANCÔME is the owner of numerous LANCÔME trademarks registered in the US and throughout the world, inter alia:
- US trademark LANCÔME (word mark in stylized characters) No. 1144179 registered on December 23, 1980 in classes 18 and 42,
- US trademark LANCÔME (word) No. 3022836 registered on December 6, 2005 in classes 3, 35 and 44,
- International trademark LANCÔME No. 514803 registered on July 21, 1987 in classes 35, 36, 37, 38, 39, 40, 41 and 42, and
- Community Trademark LANCÔME (word) No. 005007091 registered on April 12, 2007 in classes 14, 25 and 44 (the “LANCÔME Marks”).
The disputed domain names were registered on January 16, 2009 by the Respondent. A certain Will Turnage, who is also listed as the Administrative Contact for both of the disputed domain names, signed the Response on behalf of the Respondent and apparently holds an interest in the disputed domain names. 5. Parties' Contentions A. Complainant
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain names and are identical or at least similar to the Complainants' trademarks, as said domain names reproduce the Complainants' trademarks in their entirety (the suppression of the apostrophe in the L'ORÉAL Marks and of the circumflex accent in the LANCÔME Marks are argued to be irrelevant), and the adjunction of a generic term does not serve to distinguish the disputed domain names from the Complainants' trademarks. Finally, the addition of the gTLD extension does not prevent likelihood of confusion.
(2) The Complainants further contend that the Respondent has no rights to or legitimate interests in the disputed domain names because: the Respondent is not affiliated with the Complainants in any way, the Complainants have not authorized the Respondent to use and register their trademarks or to seek the registration of any domain name incorporating said marks, the Respondent has never used the terms “l'oréal” or “lancôme” in any way before or after the Complainants started their business, the Respondent is not known under the names “l'oréal” or “lancôme” or any similar name (and could not reasonably pretend it was intending to develop a legitimate activity) and, while the domain names at issue contain the Complainants' well-known trademarks as well as the word “blog”, the domain names have never been used in relation to any blog but are linked to websites with pay-per-click advertising links.
(3) Finally, the Complainants contend that the Respondent registered and has used the disputed domain names in bad faith. With regard to bad faith registration, the Respondent knew or must have known the Complainants' L'ORÉAL marks and LANCÔME marks at the time it registered the disputed domain names as the Complainants' trademarks are well-known throughout the world and in the U,S and the Respondent must have been aware of the Complainants' international reputation. Moreover, the fact that the Respondent registered two domain names containing different trademarks of the L'ORÉAL group shows that the Respondent had the Complainants in mind when it registered the disputed domain names and this also serves as proof of the Respondent's registrations in bad faith. The Complainants further contend that the Respondent also used the disputed domain names in bad faith because the websites at such domain names contain numerous sponsored links, in particular for cosmetics, including links to websites where the Complainants' products as well as products of the Complainants' competitors are sold. The purpose of the Respondent's websites clearly is to redirect Internet users to sellers of L'ORÉAL or LANCÔME products or of products offered as alternatives to L'ORÉAL or LANCÔME products. The Complainants conclude that the Respondent set up these redirection systems expecting some financial return, thus operating a click-through or pay-per-click device whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them. B. Respondent
The Respondent contends first of all that it respects the Complainants' protection of their intellectual property rights. It suggests that the disputed sites are currently being developed and that the domain names at issue are parked to allow interested visitors to find relevant links. The Respondent claims not to have any control over such links and not to have received any money as consideration. The Respondent further contends that it planned to create blogs at the disputed sites, discussing the Complainants' “wonderful” products, brands and services. However, the launching of the blogs had been delayed. The Respondent owns the website at , a social networking site for girls to discuss fashion and beauty. Blogs at the disputed websites are supposed to offer additional opportunity for commentary and discussion and to be protected under the principle of free speech. C. Complainant
As to the Respondent's contention that is intends to create blogs at the disputed sites, the Complainants point out in their supplemental submission that the sites in question still redirect to commercial links in the field of cosmetics 145 days after registration of the disputed domain names. Even if the blogs were online, they could still include advertising for competing products. The Respondent could have used its website at to organize the posting of comments and opinions on the Complainants' products. In any case, the Respondent could have avoided the placement of commercial links at the disputed websites. The domain names at issue contain links to websites offering the Complainants' products as well the Complainants' competitors' products, thereby eliminating any legitimate rights to or interest in the disputed domain names. 6. Discussion and Findings
As to the admissibility of the Complainants' supplemental filing, the Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Perhaps the most compelling grounds for justifying new submissions is the existence of new pertinent facts that did not arise until after the Complaint was filed. In particular, if a respondent raises objections that could not have been anticipated when the Complaint was filed, a panel can give a complainant a right to reply to the submission or may accept a complainant's unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises,WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151). In its supplemental submission, the Complainants largely reply to the facts contained in the Response. Therefore, the Panel elects to accept the Complainants' supplemental submission.
Under paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the complainant's trademark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainants both belong to the L'ORÉAL group of companies and may therefore constitute a single entity for the purposes of the UDRP (see L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix,WIPO Case No. D2006-0869 and Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling,WIPO Case No. D2008-0226). A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant LANCÔME's LANCÔME marks in which the Complainant LANCÔME has exclusive rights. The disputed domain name fully incorporates the Complainant L'ORÉAL's L'ORÉAL marks in which the Complainant L'ORÉAL has exclusive rights.
The addition of the generic word “blog” does not eliminate the similarity between the Complainants' marks and the domain names. It is well-established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (see Dr. Grandel GmbH v. Drg Randel Inc,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
It is also well-established that the specific top level domain extension is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights to or legitimate interests in a disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainants have asserted that: the Respondent neither uses the disputed domain names or any name corresponding to such names in connection with a bona fide offering of goods or services; is not known by either of the disputed domain names; the Respondent is not making any legitimate non commercial or fair use of the disputed domain names; and that the Respondent therefore cannot have any legitimate interests in the disputed domain names. Based on the record, the Panel finds that the Complainants have fulfilled their obligations under paragraph 4(a)(ii) of the Policy.
The Respondent contends, however, that it has a legitimate interest in the disputed domain names as it intends to create independent blogs protected by the freedom of speech on the websites at the disputed domain names.
The criteria to determine where a claim of freedom of speech justifies the use of a third party's trademark in a domain name and conveys rights or legitimate interests to the owner of such domain name have not been definitely established. However, it is clear that to be sustained such use must at all times amount to a non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue under paragraph 4(c)(iii) of the Policy. In the present case, the Respondent has been using the disputed domain names commercially, to redirect users to websites offering the Complainants' products as well the Complainants' competitors' products, and, in all likelihood, to monetize the Complainants' well-known marks. As a result, the Respondent cannot establish rights to or legitimate interests in the disputed domain names, and the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy as well. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are non-exclusive. The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
The Respondent admits having been aware of the Complainants' LANCÔME and L'ORÉAL marks when it registered the disputed domain names and therefore did so in bad faith under paragraph 4(a)(iii) of the Policy.
Moreover, the Respondent also used the disputed domain names in bad faith by fully incorporating the LANCÔME and L'ORÉAL marks respectively into the disputed domain names and then using the websites at such domain names as parking websites, providing links to direct competitors of the Complainants. The Respondent thereby was, in all likelihood, trying to divert traffic intended for the Complainants' websites to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainants' websites. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, collecting cases). The Panel is therefore satisfied that the Respondent used the disputed domain names in bad faith under paragraph 4(a)(iii) of the Policy as well. 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 LANCÔME PARFUMS ET BEAUTE ET COMPAGNIE and be transferred to the Complainant L'ORÉAL SA.
Brigitte Joppich
Sole Panelist
Dated: July 14, 2009
Full & Egal Universal Law Academy