The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Ruud I. van der Linden of Schiedamnl, Netherlands, represented by pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with .NU Domain Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2012. On January 3, 2012, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the disputed domain name. On January 4, 2012, .NU Domain Ltd. 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 January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. The Response was filed with the Center on February 2, 2012.
The Center appointed Isabel Davies as the sole panelist in this matter on February 10, 2012. 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
The Complainant contends that it has registered MAYBELLINE as an International trademark, registration number 959892 designating classes 3, cosmetic products, and 5, sanitary products registered on October 22, 2009. Further it contends that it has registered a Community trademark, registration number 7598031 designating class 3, cosmetic products registered on January 9, 2008.
The Respondent registered the disputed domain name on November 14, 2011.
The parties have previously been involved in UDRP proceedings regarding the Respondent’s registration of the domain name in which the registration was transferred to the Complainant on February 11, 2011 (L’Oréal v. Partyland,WIPO Case No. DTV2011-0001). The Complainant contends that the Respondent filed Benelux trademark applications for MAYBELLINE which have now been withdrawn from the Benelux Trademark Register. It contends that one application was withdrawn on absolute grounds and the other further to opposition proceedings filed by the Complainant.
The Complainant contends that the Respondent filed a Community trademark application for MAYBELLINE in classes 3, 14 and 25 on November 15, 2011 and that the Complainant sent a cease and desist letter to the Respondent regarding this trademark application on November 15, 2011. It states that the Respondent replied offering to transfer the domain name and cease activities under the MAYBELLINE trademark for Euro 50,000 on November 29, 2011. The Respondent’s Community trademark application is currently under examination.
The Complainant contends that the domain name presently resolves to a page indicating a website is in construction and displaying a picture and video of Queen Mabel, two links named Mabel and a link named trademark (as shown in Annex 20 of the Complaint). 5. Parties’ Contentions A. Complainant
The Disputed domain name is identical or confusingly similar to the Complainant’s mark
The Complainant contends that the disputed domain name is identical or at least confusingly similar to its trademark MAYBELLINE and that the disputed domain name reproduces its trademark in its entirety with the adjunction of the ccTLD “.nu.”. The Complainant contends that it is a well established principle that the suffixes, including the TLD element, may be excluded from consideration as being a merely functional component of a domain name. Further, it contends that ”nu” evokes novelty which reinforces the likelihood of confusion and internet users may wrongly believe the disputed domain name corresponds to a new site belonging to the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name
The Complainant contends that the Respondent is not affiliated with the Complainant in any way or authorized by the Complainant to register or use the Complainant’s MAYBELLINE trademarks. It contends that the Respondent is not known under the name Maybelline.
It contends that the Respondent has no prior rights or legitimate interests in the disputed domain name and a Community trademark application does not provide the Respondent with any right or legitimate interest in the disputed domain name. Further, that the mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. It contends that the trademark application was made when the Respondent was perfectly aware of the Complainant’s rights due to the previous dispute between the parties including the Respondent being ordered to transfer of the domain name .
It further contends that it may be assumed that the Respondent wishes to force the Complainant into negotiations and settlement of an excessive amount for the disputed domain name.
The Complainant contends that the reference to Queen Mabel is irrelevant with regards to the disputed domain name and does not correspond to a fair and legitimate use of the disputed domain name.
The Complainant contends that the only reason the Respondent registered the disputed domain name was thus to benefit from the reputation of the Complainant’s famous trademark MAYBELLINE, free ride on the goodwill associated to such mark for commercial benefits and make financial gain by at least by the sale of the disputed domain name.
Registered and used in bad faith
The Complainant contends that the Respondent knew of the Complainant’s trademarks at the time of registration of the disputed domain name.
The Complainant contends that only two weeks after registering the disputed domain name the Respondent offered to transfer the disputed domain name for an amount of Euro 50,000 and thus it can be inferred that, at the time of registration of the disputed domain name, it was not serious about developing a legitimate activity in good faith and that the Respondent registered the disputed domain name to attempt to sell the same to the Complainant, evidencing registration in bad faith.
The Complainant contends that the Respondent assigned a time limit to its offer which may be interpreted as an attempt to pressure the Complainant to accept his proposal and whenever a domain name is registered and is being used to pressure the Complainant into a settlement, such conduct cannot be considered to be good faith for the purpose of the Policy. Further, it contends that the Respondent conducts activities in respect of cosmetics and thus it appears the registration of the disputed domain name is also aimed at disrupting the business of a competitor which is not a sign of registration in good faith.
The Complainant contends that the present use of the disputed domain name for a website in construction displaying links entitled Mabel, a video and a picture of Queen Mabel cannot constitute use in good faith of the disputed domain name. Any use of the disputed domain name is likely to mislead Internet users as the Respondent has indicated to the Complainant that he is active in the field of cosmetics.
Further, it is contended that the Respondent has offered to sell the disputed domain name to the Complainant for Euro 50,000, a sum that “largely exceeds” his out of pocket costs, which cannot be regarded as use of said domain name in good faith. The Complainant filed additional submissions contending that the Respondent has further tried to transfer the disputed domain name for Euro 2,000 since the Complaint was filed. B. Respondent
The Respondent states that “.nu” means nude in French and therefore L’Oreal should have a special reason to own this domain. Further, that it states that it has a Community trademark application for MAYBELLINE.
The Respondent states that .nu is from Niue which is not part of the Madrid Protocol trademark policy and is intended for use by entities connected with Niue.
The Respondent states that the disputed domain name was free for registration without any restrictions.
The Respondent contends that the Complainant did not accept the Respondent’s settlement offer of Euro 1500. Further, that it will not use the disputed domain name until it has trademark rights and therefore will not damage the trademark rights of the Complainant.
The Respondent contends that ICANN should not offer for registration domain names which will be automatically transferred to the trademark owner.
The disputed domain name is identical or confusingly similar to the complainant’s mark
The Respondent states that Maybel is the English name for Mabel in Dutch, which is a princess in the Netherlands and can be a (fashion) line of products.
The Respondent has no rights or legitimate interests in the disputed domain name
The Respondent contends that it has “made a registration for Maybelline”, and that is making a legitimate fair use of the domain name because the website is empty.
Registered and used in bad faith
The Respondent contends that it is easy to say someone is registering a domain name in bad faith and the person can do nothing about it. The Respondent contends that to be used in bad faith it would have used the disputed domain name for a pornographic site.
Further it contends that it has the intention to “survive” the opposition against its Community trademark by L’Oreal as it has other classes registered and can use the mark for jewellery, and “clothing hats”. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. The Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the domain name. A. Identical or Confusingly Similar
The Complainant is the owner of an International trademark registration number 959892, which was registered on October 22, 2009, before the disputed domain name was registered. The disputed domain name incorporates the Complainant’s trademark in its entirety and is identical. As previous panels in UDRP cases have recognized, the incorporation of a trademark in its entirety is usually sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark. See Sonia Rolland v. Belize Domain WHOIS Sevice, WIPO Case No. D2009-0480. It is also well established that the addition of the ccTLD denomination to a trademark is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark. See Young Life v Peter Branelly, Netsol Ltd, WIPO Case No. DNU2007-0002.
The Respondent contends that Mabel, who is a princess in the Netherlands, is the Dutch name for Maybel, an English name. Even if this were correct, it is irrelevant. The Respondent makes further contentions that .nu is from Niue which is not part of the Madrid Protocol trademark policy, is intended for use by entities connected with Niue and that the disputed domain name was free for registration without any restrictions. It contends that “.nu” means nude in French and therefore the Complainant should have a special reason to register this domain name and that ICANN should not offer for registration domain names which will be automatically transferred to the trademark owner. All of these contentions are irrelevant for proceedings under the Policy.
For the reasons stated above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraphs 4(c)(i)-(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes inter alia: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert to consumers.
A complainant must show a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of production passes to the respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case, the Complainant has established that the disputed domain name is identical to the MAYBELLINE mark in which it has rights, and that it has not authorized the Respondent to use that mark, whether in a domain name or otherwise. The evidential onus shifts to the Respondent to demonstrate that it has some rights or legitimate interests in the disputed domain name.
Paragraph 4(c)(i) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name if it has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is no indication before the Panel that the Respondent has made preparations to use the disputed domain name in connection with a bona fie offering of goods or services.
The Respondent contends that it has “made a Community trademark registration” for MAYBELLINE and that it has the intention to “survive” the opposition against its Community trademark by L’Oreal as it has other classes registered and can use the mark for jewellery and clothing hats.
Paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. It is reasonable to presume that a party owning rights in a trademark has been known by the trademark, and thus by an identical domain name. However, to establish cognizable rights, the overall circumstances should demonstrate that the registration of the Mark was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
The Panel can see from the Community trademark register that this is an application and not a registration. The Panel finds that this does not confer rights or legitimate interests in the disputed domain name as the overall circumstances (including the fact that the relevant trade mark application was only filed after the creation of the disputed domain name and the Panel’s findings of bad faith on the part of the Respondent in a previous WIPO decision (as detailed below)), indicate that such trade mark was obtained primarily to circumvent the application of the Policy. See PagesJaunes Société Anonyme v Pages Jaunes Pro Ltd, WIPO Case No. D2011-1399; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379; and British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access,WIPO Case No. D2009-0817, which support the principle that trade mark registrations are not conclusive evidence of a respondent’s requisite rights or legitimate interests in a disputed domain name, particularly absent evidence of good faith.
It is irrelevant for the purpose of the Policy that the Respondent’s Community trademark application includes classes which are different to those covered by the Complainant’s registered trademarks.
The Respondent was involved in a previous dispute with the Complainant in L’Oréal v. Partyland,WIPO Case No. DTV2011-0001 and was therefore certainly aware of the Complainant’s trademarks and brand at the time when it made the Community trademark application and registered the disputed domain name.
The Panel finds that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Respondent was aware of the Complainant’s trademarks for MAYBELLINE, which it accepts are well- known, following its involvement in the previous WIPO decision in February 2011 (WIPO Case No. DTV2011-0001). This would appear to be a case of “opportunistic bad faith” in the registration of a domain name that incorporates in its entirety a well-known trademark. See Gateway, Inc. v Lorna King, WIPO Case No. D2003-0257.
The Respondent attempted to sell the disputed domain name to the Complainant within two weeks after the disputed domain name had been registered. That is a very short period of time and in the absence of any evidence to the contrary, it is reasonable to infer that the Respondent acquired the disputed domain name with the intention of on-selling it.
The Respondent contends that the Complainant did not accept the Respondent’s settlement offer of Euro 1500. No evidence of this has been provided. To the contrary, evidence has been produced by the Complainant that the Respondent offered Euro 50,000 to transfer the disputed domain name. The additional submissions filed by the Complainant contend that the Respondent has continued to try and transfer the disputed domain name for Euro 2000 which is valuable consideration in excess of the Respondent’s out-of-pocket costs directly relating to the disputed domain name and that this further offer for sale shows that the Respondent is not attached to keep the domain name at issue.
Further, the Respondent contends that it will not use the disputed domain name until it has trademark rights and therefore will not damage the trademark rights of the Complainant. It is clear from 4(b)(i) of the Policy that a respondent that 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 is an example of use in bad faith. The Panel finds that offering to transfer the disputed domain name to the Complainant for a value of Euro 50,000 and then further for Euro 2,000 amounts to use of the disputed domain name.
The Complainant contends and has produced evidence to show that the disputed domain name was used for a website in construction displaying links entitled Mabel, a video and a picture of Queen Mabel. The Panel cannot view the Respondent’s website as it is no longer available. However, in the absence of any evidence produced by the Respondent, the Panel accepts the Complainant’s contention that the Respondent’s website did use the disputed domain name to display links entitled Mabel, a video and a picture of Queen Mabel (as shown in Annex 20 of the Complaint).
The Respondent contends that to be used in bad faith it would have used the disputed domain name for a pornographic site. It is clear from the examples set out at Paragraph 4(b) of the Policy that registration and use in bad faith is not limited to pornographic websites.
The Panel concludes that the Respondent acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly relating to the disputed domain name. The example of bad faith registration and use described in paragraph 4(b)(i) of the Policy is therefore established in this case. See Wal-Mart Stores, Inc. v Brad Tauer, WIPO Case No. D2000-1076.
The Panel finds the disputed domain name was registered and is being used in bad faith and the Complainant has therefore met the requirements of paragraph 4(a)(iii) of the Policy. 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 name, be transferred to the Complainant.
Isabel Davies
Sole Panelist
Dated: February 15, 2012
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