Complainants are L’Oréal and Laboratoire Garnier Et Compagnie of Paris, France, represented by Dreyfus & associés, France.
Respondent is Mitesh Soma of Leicester, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”). 2. The Domain Names and Registrar
The disputed domain names , and are registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 19, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On May 19, 2011, 1&1 Internet AG 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 May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 30, 2011.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on June 30, 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. 4. Factual Background
Complainants are large companies in the cosmetics and beauty industry. Complainants or their predecessors registered the MAYBELLINE and GARNIER marks for various goods, with dates of registration ranging from at least 1950 to at least 2009. Respondent registered each of the disputed domain names on July 24, 2010. 5. Parties’ Contentions A. Complainants
Complainants note that Complainant Laboratoire Garnier Et Compagnie is a subsidiary of Complainant L’Oréal, that the same Respondent registered each of the disputed domain names with the same registrar on the same day, and that the complaints of each Complainant should therefore be consolidated. Complainants assert that L’Oréal was founded in 1909 and is now the world’s largest cosmetics company with a presence in over 130 countries. Complainants assert that L’Oréal acquired Garnier in 1965 and that L’Oréal’s United States subsidiary purchased Maybelline in 2000. Complainants further assert that Respondent registered several other domain names – incorporating the MAYBELLINE or GARNIER trademarks – at the same time as the disputed domain names, with some of the domain names not resolving to any web site and some resolving to pages with paid links. Complainants attach trademark registration records to the Complaint demonstrating that Complainant L’Oréal has registered the trademark MAYBELLINE for various goods and that Complainant Laboratoire Garnier Et Compagnie has registered the trademark GARNIER for various goods, with such registrations predating the July 24, 2010 registration date of the disputed domain names. Complainants assert that the disputed domain names consist of their registered trademarks with the addition of the words “direct” and/or “shop” and the “.com” gTLD, and that this satisfies the “identical or confusingly similar” standard. Complainants further assert that Respondent is not affiliated with Complainants and is not authorized to use the MAYBELLINE or GARNIER trademarks, that Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that Respondent’s failure to respond to the Complainant is evidence of Respondent’s lack of rights or legitimate interests. Complainants further assert that Respondent knew or must have known of Complainant’s trademarks at the time Respondent registered the disputed domain names, that Respondent registered multiple domain names corresponding to Complainants’ trademarks, and that the bad faith use in this case consists of passive holding in the nature of that described in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Consolidation
Complainants assert that these two related but separately incorporated companies should be entitled to consolidate their complaints into a single proceeding. Consolidation among multiple complainants is appropriate where “(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; [and] (ii) it would be equitable and procedurally efficient to permit the consolidation”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Section 4.16. Further, “[i]n order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.” Id.
The Panel finds that paragraph 2 of the Complaint is in the nature of a request for consolidation and adequately asserts a common grievance and common conduct for which it would be equitable and procedurally efficient to consolidate. Accordingly Complainants’ request for consolidation is granted. Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc.,WIPO Case No. D2005-1336; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. B. UDRP Factors
Pursuant to paragraph 15(a) of the Rules, panels in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent’s domain names have been registered and are being used in bad faith. i. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The trademark registrations and extensive use shown in the Complaint demonstrate that Complainants have rights in the MAYBELLINE and GARNIER marks.
The disputed domain names consist of the MAYBELLINE and GARNIER marks, followed by the words “direct” or “shop”, followed by the “.com” gTLD. The addition of a generic word to a trademark does not avoid confusing similarity to the mark. Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Indeed, the addition of words such as “direct” and “shop” “impl[y] an authorized online sales outlet” and therefore contribute to confusion. Grundfos Holding A/S v. Sergey M Doubovitskiy,WIPO Case No. D2011-0346; Clearwire Communications LLC v. Ira Kugelman,WIPO Case No. D2011-0019. Similarly the addition of a gTLD such as “.com” also does not avoid confusing similarity. Turkcell Iletisim Hizmetleri A.S. v. kara tara,WIPO Case No. D2010-1184 (“the TLD suffix is irrelevant when comparing a disputed domain name to a trademark as the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trademarks in issue”).
Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainants have rights, and that paragraph 4(a)(i) of the Policy is satisfied. ii. Rights or Legitimate Interests
Complainants also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”. Paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name[s] or a name corresponding to the domain name[s] in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name[s], even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
The Panel finds that there is no evidence in the record that Respondent was making a bona fide use of the disputed domain names before receiving notice of this dispute, that Respondent has been commonly known by the disputed domain names, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
Complainants assert that Respondent is not affiliated with them and is not authorized to use their marks. Panels have held that such facts establish a prima facie case under paragraph 4(a)(ii) of the Policy. LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138. Further, at least one of the disputed domain names was used for paid links. “It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests.“ Get Away Today.Com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied. iii. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name[s] ha[ve] been registered and [are] being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Panels have held that the registration of a well-known mark can be evidence of an attempt to attract users to a web site by creating confusion with Complainant’s mark. ALSTOM v. STOCKMARKET DOMAINS,WIPO Case No. D2008-1542. At least one prior UDRP panel has found that the MAYBELLINE and GARNIER marks are famous. Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L’Oreal SA, L’Oreal USA Creative v. Therese Kerr,WIPO Case No. D2008-1748. Further, the unauthorized use of a trademark to generate pay-per-click revenue constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344. The registration of multiple domain names corresponding to Complainants’ trademarks also is evidence of bad faith. Bayer Schering Pharma AG v. New World Express LLC / udrp WIPO Case No. D2010-1387,WIPO Case No. D2010-1387. It also is well settled that the passive holding of domain names is not a barrier to a finding of bad faith if sufficient other indicia of bad faith are present, including circumstances (which are present in this case) such as famous trademarks being copied and the failure of Respondent to respond to the Complaint. WIPO Overview 2.0, Section 3.2.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Complainant L’Oréal and the disputed domain name be transferred to Complainant Laboratoire Garnier Et Compagnie as requested in the Complaint.
Bradley A. Slutsky
Sole Panelist
Dated: July 14, 2011
Full & Egal Universal Law Academy