The Complainants are L’Oréal, and Lancôme Parfums Et Beauté & Cie, of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Jack Yang of Beijing, China. 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 September 26, 2011. On September 26, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On September 26, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 26, 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 A. Complainant
The Complainants, L’Oréal, and Lancôme Parfums Et Beauté & Cie, are companies incorporated in France and belonging to the same group of companies. Lancôme Parfums Et Beauté & Cie is a subsidiary of L’Oréal.
The Complainant L’Oréal is the owner of numerous registrations worldwide for the trade marks L’ORÉAL and LANCÔME, including in China, where the Respondent is based (the “Trade Marks”). B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain names were all registered on the same date, August 4, 2011. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant L’Oréal is one of the world’s largest cosmetics groups, founded in France in 1909. It operates in over 130 countries and has over 64,000 employees worldwide, and is the owner of 23 international brands, including the Trade Marks.
The Complainant has been operating in China since 1996. It employs over 2,500 staff in China and its 2009 sales in China amounted to 8.18 billion yuan.
Each of the 23 disputed domain names was registered on the same day using the same Registrar and by the same Respondent.
The disputed domain names are confusingly similar to the Trade Marks. They comprise one or the other of the Trade Marks in its entirety, together with non-distinctive suffixes, prefixes or words.
The disputed domain names resolve to Chinese language websites which feature the Trade Marks, display and offer for sale various products of the Complainant and of the Complainant’s competitors, and pass themselves off as “official” or “flagship” websites of the Complainant (the “Websites”).
The Respondent has no rights or legitimate interests in the disputed domain names and has registered and used the disputed domain names in bad faith to intentionally attract users, for commercial gain, to the Websites, by creating confusion with the Trade Marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by many decades the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Each of the domain names comprises either the Complainant’s trade mark L’ORÉAL or the Complainant’s trade mark LANCÔME in its entirety1, together with non-distinctive suffixes or prefixes which are either acronyms for country names and/or country code top level domains (“cn”, “in”, “sp”), non-distinctive generic words (“web”, “china”, “shop”, “site”) or numbers (“51”), or otherwise non-distinctive generic letters (“i”) or words (“so”), none of which serve to distinguish the disputed domain names from the Trade Marks in any significant way. Two of the disputed domain names include the trade mark of the well-known Chinese online auction site, taobao, and one includes the suffix “tb” which is arguably an abbreviation of taobao. Simply adding a third party’s well-known trade mark, or an abbreviation or acronym for the same, to the Trade Marks, does not serve to distinguish the disputed domain names from the Trade Marks nor obviate the risk of consumer confusion.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The evidence suggests the Websites are used by the Respondent to market cosmetics products manufactured both by the Complainant and by its competitors. The use of the Trade Marks in this manner without the authorisation of the Complainant does not give rise to any rights or legitimate interests in the disputed domain names on the part of the Respondent.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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 Respondent has clearly engaged in a pattern of conduct of registering the disputed domain names comprising the Complainant’s well-known Trade Marks, without the authorisation or approval of the Complainant, in order to set up Chinese language Websites masquerading as “official” or “flagship” L’ORÉAL or LANCÔME websites. Whilst the use of a website to market and sell genuine products manufactured by a third party is not necessarily of itself conduct evincing bad faith on the part of the Respondent, the Panel notes the Websites offer for sale products of not just the Complainant but also of the Complainant’s competitors. In registering and using the disputed domain names the Respondent is clearly using the well-known Trade Marks of the Complainant in order to attract Internet users to the Websites. The Panel finds use of the Trade Marks in this manner in order to promote the sale of cosmetics products of the Complainant’s competitors is clear evidence of bad faith.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: November 3, 2011
1 None of the disputed domain names contains the apostrophe, acute accent or circumflex comprised in the Trade Marks. It is however trite that, for the purposes of the first limb under the Policy, the addition or omission of punctuation marks does not have any bearing as regards the question of confusing similarity.
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