Complainants are L'Oréal and Lancôme Parfums et Beauté et Compagnie of Paris, France, represented by Dreyfus & associés, France.
Respondent is Deco Trends & Art, K. Plooyer of Gouda, the Netherlands and of Terborg, the Netherlands respectively. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2011. On March 22, 2011, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the disputed domain names. On March 22, and 31, 2011, Key-Systems GmbH dba transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact information.
On March 31, 2011, the Center issued a Language of Proceeding notification, inviting comments from the parties. The same day, Complainant submitted a request that English be the language of the proceeding. Respondent had until April 5, 2011 to submit its comments, but did not react to the Language of Proceeding notification.
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 April 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 3, 2011.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 9, 2011. 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.
As the Complaint was not filed in the language of the Registration Agreement and there is no sign that the Parties did agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Panel is satisfied that both parties speak and write English. Based on the evidence adduced before the Panel, the Panel finds Respondent, an individual of Dutch origin, to be proficient in the English language. Complainant received a reply in Dutch to a letter from Respondent, to which Respondent added an English version. The disputed domain names also include English terms. This Panel finds that these elements show that Respondent has a sufficient understanding of English.
Accordingly, the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings (See e.g., Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement). 4. Factual Background
First Complainant, L’Oréal, heads a large group in the cosmetics business. Second Complainant, Lancôme Parfums et Beauté et Compagnie, is a subsidiary of L’Oréal. L’Oréal is the holder of a number of national and international trademarks consisting of L’OREAL and L’Oréal and Lancôme Parfums et Beauté et Compagnie are the holders of a number of international trademarks consisting of L’OREAL. First Complainant shows to be the holder of the following L’OREAL trademarks:
- L’OREAL, registered as an international trademark under number 184970 on May 23, 1955, duly renewed and covering classes 3 and 5;
- L’OREAL, registered as a U.S. Trademark under number 661746 on June 25, 1956, duly renewed and covering class 3;
- L’OREAL, registered as a Benelux Trademark under number 101167 on December 24 1971, duly renewed and covering classes 3, 5 and 21;
First and Second Complainant show to be collectively holding the following LANCÔME trademarks:
- LANCÔME, registered as a U.S. Trademark under number 3022836 on December 6, 2005, in classes 3, 35 and 44;
- LANCÔME, registered as an international trademark, designating inter alia the Benelux, under number 164395 on October 6, 1952, duly renewed and covering classes 3 and 21.
It is stated in the WhoIs records that K. Plooyer of Deko Trends & Arts, Respondent in the instant case, is the current holder of the disputed domain names , , and . All disputed domain names were registered with Key-Systems GmbH dba . The first two disputed domain names ( and ) were registered on March 8, 2010. The other two disputed domain names ( and ) were registered on March 11, 2010.
The disputed domain names redirected to the website of the company of Respondent. On May 2010 Complainants sent a cease-and-desist letter to which Respondent replied that he was willing to transmit the disputed domain names “against a reasonable compensation”.
Complainants replied and asserted that the disputed domain names were infringing their rights. Complainants also offered to find an amicable settlement on the condition that Respondent ceased to use the disputed domain names and transferred them to Complainants. Respondent did not reply any more.
On March 22, 2010, Complainants filed a complaint with WIPO. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain names to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names. According to Complainant, Respondent has used the disputed domain names to redirect Internet users towards the website of its own company and to another unrelated website. Complainant also argues that Respondent’s purpose when registering the disputed domain names was to make profits taking advantage of Complainant’s reputation and goodwill and eventually to sell the disputed domain names to Complainants at a price exceeding the registration costs. Finally, Complainant considers that the disputed domain names were registered and being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Members of the same group of companies may constitute an “entity” for the purposes of initiating a UDRP action (See Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L’Oréal S.A. v. Cong Ty Co Phan Phununet,WIPO Case No. D2006-0603; LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226).
The onus is on Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
Thus, for Complainants to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. The disputed domain names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant is the holder of the widely-known trademarks L’OREAL and LANCÔME used for cosmetic products.
The disputed domain names , , and only differ from Complainant’s L’OREAL or LANCÔME trademarks by the omission of an apostrophe, of a circumflex and the addition of the generic words “online”, “shop” and/or “gifts” and the addition of the geographical term “paris” in one of the disputed domain names. Previous panels have considered that the addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes are insignificant changes, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Credit Agricole S.A., supra; L’Oreal v. Tracey Johnson,WIPO Case No. D2008-1721; LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL, supra; T, Inc. v. Port-A-John, WIPO Case No. D2007-1497; Universal City Studios, Inc. v. HarperStephens,WIPO Case No. D2000-0716).
The Panel is also of the opinion that the mere addition of non-distinctive text to a complainant’s trademark (or a term that is related to a complainant or its trademark) constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253, where the addition of the non-distinctive generic term “shoes” to a name that is confusingly similar to complainant’s DR. MARTENS trademark does nothing to reduce the confusing similarity between the complainant’s trademark and the disputed domain name; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275, where the addition of the generic word “machines” to complainant’s trademark CAT did not serve to distinguish the domain name ; Nike, Inc. v. Farrukh Zia,WIPO Case No. D2000-0167, where the domain name was held to be confusingly similar to the trademark NIKE; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scot banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to POKÉMON in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word POKÉMON; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
The addition of the non-distinctive terms “online”, “gifts” and/or “shop” does nothing to reduce the confusing similarity of the disputed domain names with Complainant’s widely-known L’OREAL and LANCÔME trademarks.
Furthermore, the addition of geographical terms to a complainant’s trademark also constitutes confusing similarity as set out in paragraph 4(a)(i) of the Policy (See L’Oréal v. Liao Quanyong,WIPO Case No. D2007-1552, where the addition of the word “china” to LOREAL was held not to serve to distinguish the disputed domain name from complainant’s L’OREAL marks; L’oréal v. Chenxiansheng,WIPO Case No. D2009-0242, where the domain name was found confusingly similar to the L’OREAL trademark in which the complainant had rights).
For these reasons, the Panel finds that the disputed domain names are confusingly similar to Complainants’ respective L’OREAL and LANCÔME trademarks.
Accordingly, Complainants have made out the first of the three elements that they must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainants have the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain names.
It is established case law that it is sufficient for Complainants to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain names in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain names and that Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain names was not authorized by Complainants. There are no indications that a connection between Complainants and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. In fact, Respondent has been using the disputed domain names to redirect to a website of a company named Deko Trends BV, which promotes itself as a company specialized in the production and the marketing of in and outdoor decoration articles, gifts, furniture and neon signs. According to the Panel, such use of domain names confusingly similar to known trademarks to redirect Internet users to a website promoting goods and services of a company does not constitute a bona fide offering of goods and services (See TNT Holdings B.V. v. Sylvie Bona,WIPO Case No. D2008-1070).
Furthermore, Respondent also asked for a “reasonable compensation” in its reply to a first cease and desist letter sent by Complainants. Afterwards, Respondent did neither reply to Complainants’ reminders nor did he respond to the Complaint. This suggests that Respondent was attempting to sell the disputed domain names to Complainants – the holders of well-known trademarks to which the disputed domain names are confusingly similar. Here, such attempt cannot give rise to any rights or legitimate interest to Respondent (See Groupe Auchan v. Slawomir Cynkar,WIPO Case No. D2009-0314). Moreover, in such circumstances, the fact that Respondent did not avail himself of his right to respond to the Complaint further indicates that Respondent has no rights or legitimate interests in the disputed domain names (See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269). C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the use of the domain names for intentionally attempting to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location and the registration of the domain names in order to prevent the holder of the trademark or service mark from reflecting the mark in one or more corresponding domain names, provided that the domain name holder has engaged in a pattern of such conduct.
1. Bad Faith Registration
In the instant case, the Panel finds that Respondent must have had knowledge of Complainants’ rights in the L’OREAL and LANCÔME trademarks at the moment he registered the disputed domain names, since Complainants’ trademarks are widely known trademarks. The Panel also finds that Respondent’s awareness of Complainants’ trademark rights at the time of registration suggests bad faith. (See Nintendo of America Inc, supra, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name , because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks). This is clearly evidenced by the fact that Respondent chose to register multiple domain names containing Complainants’ trademarks (See L’Oreal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd,WIPO Case No. D2008-1640). Similarly, the addition of the geographical term “paris” in one of the disputed domain names, which corresponds to the location of the head-office of both Complainants conveys that Respondent was aware of the existence of Complainants and their trademarks at the time of registering the disputed domain names (See L’oréal, supra).
Accordingly, the Panel finds that Respondent must have had knowledge of Complainants’ rights in the L’OREAL and LANCÔME trademarks at the moment he registered the disputed domain names, since Respondent had no rights or legitimate interest in the disputed domain names which could make Respondent come up with the disputed domain names by himself. Since Respondent registered multiple domain names containing terms very similar to Complainants’ trademarks, and hence engaged in a pattern of registering domain names that are confusingly similar to trademarks, it is established that the disputed domain names were registered in bad faith (See L’oréal, supra).
2. Bad Faith Use
In the instant case, Respondent used the disputed domain names to redirect Internet users towards the website of its own company. Doing so, Respondent took advantage of Complainants’ reputation and goodwill to divert traffic towards other websites with the purpose of making profit. According to the Panel, such use of domain names to direct Internet users to one’s own website does not constitute a use in good faith (See TNT Holdings B.V, supra).
Furthermore, Respondent suggested that Complainants could buy the disputed domain names and did not reply to the Complaint or Complainants’ last emails. According to the Panel, this is a clear indication that Respondent’s purpose when registering the disputed domain names was to make profit taking advantage of Complainants’ reputation and goodwill and to eventually sell the disputed domain names to Complainants for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names.
These elements suggest bad faith use of the disputed domain names. Furthermore, since the registration of the disputed domain names by Respondent was part of pattern to prevent Complainants to reflect their trademarks in the disputed domain names, it is established that the disputed domain names have not only been registered, but are also being used in bad faith. 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 , , and be transferred to Complainants.
Flip Jan Claude Petillion
Sole Panelist
Dated: May 23, 2011
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