Complainant is L'Oréal of Paris, France, represented by Dreyfus & Associés of Paris, France.
Respondents are Li Qian, Fast Hand Limited and Lisa of Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2011. The initial filing identified individuals by the name of Qian Li and Lisa as Respondents. On May 19, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On May 20, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Fast Hand Limited was listed as the Registrant Organization and that an individual by the name of Li Qian was identified as the Registrant Name. The Registrar also provided the contact details associated with the disputed domain name. In response to a notification by the Center regarding Respondent’s information, the Complainant filed an amended Complaint on May 27, 2011 outlining discrepancies between the registrant details provided by the Registrar and public WhoIs records concerning the registrant name and contact details. The amended Complaint identified Qian Li, Lisa, and Fast Hand Limited as Respondents.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. Respondents sent email communications in Chinese to the Center on June 9, 2011, but did not submit a formal Response.
On July 1, 2011, Complainant submitted unsolicited supplemental filings to the Center. Panels have discretion whether to accept an unsolicited supplemental filing from either party. These filings are not being considered in the decision because they were no showing of exceptional circumstances in this case.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 12, 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.
On July 25, 2011, Respondents sent a further submission to the Center. Because these submissions were received after the Response deadline, and in accordance with paragraphs 10 and 12 of the Rules, they are not being considered in this decision.
The language of the Registration Agreement associated with the disputed domain name is English. In the communications submitted to the Center on June 9, 2011, Respondents conveyed a lack of knowledge regarding the English language. Complainant maintained its position that English be recognized as the language of the proceeding because (1) English is the language of the Registration Agreement; (2) the disputed domain name is composed of Latin characters; and (3) the content of the disputed domain name is displayed in the English language. On June 9, 2011, the Center conducted its compliance review and allowed the proceeding to move forward in the English language because the Registration Agreement is in English. The Panel sees no reason to question the Center’s judgment given the circumstances of this case. 4. Factual Background
Complainant is a French cosmetic company which distributes products under the L’OREAL trademark and various compound word marks featuring L’OREAL including L’OREAL PROFESSIONEL. Complainant has been in business since the early 1900s and owns numerous trademark registrations incorporating L’OREAL including registrations for L’OREAL which have been valid in Singapore and the People’s Republic of China since 1970 and 1979, respectively, and registrations for L’OREAL PROFESSIONEL PARIS which have been valid since 1970 in Singapore and since 1979 in China. Complainant also owns a registration for L’OREAL PROFESSIONEL in the European Community.
Three different entities have been identified as Respondents in the amended Complaint, namely an individual by the name of Qian Li of China, an individual by the name of Lisa of Singapore, and an entity by the name of Fast Hand Limited of Singapore. The relationship between Respondents is not clear, however Respondent Qian Li (aka Li Qian) appears to be related to Respondent Fast Hand Limited because this individual was identified by the Registrar as the Registrant Name for the Registrant Organization.
Complainant sent a cease and desist letter to Respondent Qian Li on November 29, 2010. On December 9, 2010, Respondent Qian Li replied via email to Complainant wherein Respondent stated that he/she chose the disputed domain name in connection with plans to build a website around the “Loreal” name because he/she felt “very professional (professionel)”. Respondent Qian Li further stated that the disputed domain name would be transferred to Complainant for a fee of “USD 10,000,000”. 5. Parties’ Contentions A. Complainant
Complainant claims that the disputed domain name is identical in content to the L’OREAL PROFESSIONEL trademark in which Complainant has rights, noting that the absence of the apostrophe between the letter “l” and the letter “o” and incorporation of the “.mobi” gTLD extension does not distinguish the disputed domain name from Complainant’s trademarks. Complainant also claims that the disputed domain name is confusingly similar to its L’OREAL trademark because the “professionnel” portion of the disputed domain name is French for “professional” and as such is non-distinctive. Complainant also maintains that the combination of “loreal” and “professionnel” to form the disputed domain name will create a likelihood of confusion because Complainant operates a product division under the “Professionnel” name (i.e., “L’Oreal Professionnel”) and maintains multiple domain names composed of “lorealprofessionnel”.
Complainant states that no authorization, license, or permission has been provided to Respondents to use its trademarks and maintains that there is no affiliation between Respondents and Complainant. Complainant cites Respondent Qian Li’s offer to sell the disputed domain name to Complainant as reason for a finding of no rights or legitimate interests in the disputed domain name, and provides multiple grounds for bad faith use and registration including the following:
(1) Respondents’ provision of inaccurate and/or misleading data at the time the disputed domain name was registered;
(2) The well-known status of Complainant’s trademarks and the use of these trademarks to form a domain name;
(3) The number of results for Complainant’s products when a search for L’OREAL is conducted in Internet search engines;
(4) The transfer of the disputed domain name and revision of contact details by Respondents after the Complaint was filed;
(5) The involvement of Respondent Qian Li in a prior UDRP dispute; and
(6) The offering of the disputed domain name for sale at a cost of USD 10,000,000..
Complainant has requested that the disputed domain name be transferred from Respondents to Complainant. B. Respondent
In the email communications transmitted to the Center on June 9, 2011, Respondents Qian Li and Lisa stated that the disputed domain name was registered due to a local Chinese transliteration which refers to a Chinese legend of “golden sun, birds, black birds, bird accompany the sun, sunrise and sunset, gas fill rivers, the cause of transpiration encyclical, flourishing also”. Respondents also conveyed an intention to use the disputed domain name for a 3G mobile website which will be launched within six (6) months. Respondent Lisa further stated that “lorealprofessionnel” is a Chinese translation of “Luo Liya” and has additional meanings in reference to Chinese poetry and legends. Respondent Qian Li stated that the disputed domain name was registered for use as a website for mobile phones for the purpose of facilitating communication between people with common interests.
Respondents transmitted further submissions on July 25, 2011 consisting of recordings of video news programs concerning the “.mobi” extension generally. These submissions are not being considered because they were received after the Response deadline. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the L’OREAL trademark in which Complainant has rights because it includes Complainant’s L’OREAL trademark in its entirety. The absence of the apostrophe does not distinguish the “loreal” portion of the disputed domain name from Complainant’s L’OREAL trademark. Prior UDRP panels have held that Complainant’s L’OREAL trademark is a famous mark. See, e.g., L’oreal v. Liao quanyong,WIPO Case No. D2007-1552 (“Complainant’s L’OREAL marks are very famous throughout the world including China where Respondent appears to be domiciled”) and LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226 (“Each of the domain names at issue incorporates the whole of either the famous LANCOME or L’OREAL trademarks”). As noted in prior UDRP decisions, the incorporation of a well-known mark into a domain name is sufficient grounds for a finding of likelihood of confusion. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (“Long-established precedent has generally recognized confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”). Moreover, it has been held by prior UDRP panels that the incorporation of a trademark in its entirety into a domain name supports a finding of a likelihood of confusion. See, e.g., Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark ("Xerox"). This is sufficient to justify the finding that the name is "confusingly similar" to the Complainant’s registered trademarks”).
A finding of likelihood of confusion is further supported by the fact that the disputed domain name is identical to the L’OREAL PROFESSIONNEL trademark in which Complainant has rights and is confusingly similar to the L’OREAL PROFESSIONNEL PARIS trademarks in which Complainant has established rights. Internet users are highly likely to confuse the disputed domain name with Complainant’s business given Complainant’s rights in trademarks incorporating L’OREAL PROFESSIONNEL and operation of a business division under the name “Professionnel” (i.e., L’Oreal Professionnel) regardless of its content.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Respondents have provided multiple Chinese translations and transliterations for “lorealprofessionnel”, however none is consistent with a direct translation or transliteration from Chinese to English or vice-versa. There is no evidence in the record to indicate that Respondents have established rights in the term “lorealprofessionel” or legitimate interests in this letter string which corresponds to a website which could be distinguishable from Complainant’s famous L’OREAL trademark, Complainant’s L’OREAL PROFESSIONNEL trademark, or Complainant’s L’OREAL PROFESSIONNEL PARIS trademark. There is also no evidence in the record to indicate that Respondents are authorized, licensed, or otherwise permitted to use Complainant’s trademarks.
The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Respondents claim that the disputed domain name was registered due to connotations associated with “lorealprofessionnel” in Chinese and has provided references to Chinese poetry and Chinese legends in support of their claim of good faith registration. The Panel finds that the information provided is not sufficient. For example, Respondent Qian Li states that the “lorealprofessionnel” letter string was selected because of various Chinese meanings associated with the term “loreal” but has not provided any direct translations or transliterations. Moreover, Respondent Qian Li states that the term “professionnel” was selected because he/she feels very “professional (professionnel)”. No reason has been provided for Respondents’ use of the French “professionnel” to compose the disputed domain name. Use of the French “professionnel” in this case supports a finding of bad faith registration, as it suggests that Respondents were aware of Complainant’s rights in L’OREAL PROFESSIONNEL at the time the disputed domain name was registered. Further, Complainant’s extensive trademark registrations incorporating L’OREAL and decades of use of the L’OREAL mark support the notion that it is implausible that Respondent was unaware of Complainant when registering the disputed domain name. Moreover, it has been established in prior UDRP decisions that Complainant’s trademark is well-known. The incorporation of a well-known trademark into a domain name registration is grounds for a finding of bad faith registration. See, e.g., LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov,WIPO Case No. D2010-1965 (“It has been established that the registration of a domain name incorporating a well-known trademark can constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered […] Given the notoriety of the LEGO trademark, the Panel finds that it is implausible that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name”).
No evidence in the record indicates that Respondents have a bona fide intention to use the disputed domain name. Respondents claim that a website is under construction, but has provided no evidence to support a finding of good faith intent. Upon receiving a cease and desist letter from Complainant, Respondent Qian Li offered the disputed domain name for sale for the price of “USD 10,000,000”. This price clearly exceeds the fees associated with registration of any domain name and is evidence of use in bad faith. Numerous prior UDRP panels have held that similar offers for sale of a domain name to be grounds for findings of bad faith use. See, e.g., Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus,WIPO Case No. D2000-0166 (where the Panel found that an offer of USD 575,000 to sell a domain name to be “classic cyberpiracy and the epitome of bad faith”) and Eurobet UK Limited v. Intergate,WIPO Case No. D2001-1270 (where the Panel found that an offer by Respondent to sell the domain name for EUR 20,000 after receiving a request to cease use of the domain name from Complainant to be “strong evidence that the Respondent had acquired that domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name” and evidence of bad faith).
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 disputed domain name be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: July 26, 2011
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