The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Zhao Ke of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 10, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. On February 13, 2012, the Respondent requested that Chinese be the language of proceeding.
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 February 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2012. Further to the Respondent’s email communication regarding the language of proceeding on February 13, 2012, no formal Response was filed with the Center by the Response due date.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 29, 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 is a French industrial group that was founded in 1909 and specializes in the field of cosmetics and beauty.
The Complainant maintains its presence in more than 130 countries, retains 66,600 employees and markets more than 500 brands and 2,000 products in all sectors of the beauty industry, including hair color, styling aids, cosmetics, cleansers, and fragrances.
The Complainant established in 2010, sales of approximately 19.5 millions of Euros.
The Complainant owns 23 international brands, including: Garnier, Kerastase, Maybelline, Lancome and Shu Uemura.
The Complainant’s Shu Uemura brand consists of various luxury products. The brand takes its name from Mr. Shu Uemura who became famous in the world of make-up in 1958. The brand is marketed in prestigious hair salons. Mr. Shu Uemura sold his controlling interest in his company to the Complainant in 2004.
As of early 2008, the Complainant’s Shu Uemura brand earned approximately USD 100 million a year in global sales.
The Shu Uemura brand can be found in 18 countries and in over 320 points of purchase, including in 38 stores that are located in China.
The Complainant is the owner of numerous worldwide trademark registrations for the mark SHU UEMURA. For example: international trademark registration No. 1030415 – SHU UEMURA, with the registration date of February 1, 2010, designated, among others, to Cuba, Albania, Azerbaijan, Morocco, Namibia, Norway; international trademark registration No. 1027071 – SHU UEMURA, with the registration date of November 26, 2009; Chinese trademark registration No.1347652 – SHU UEMURA (logo), with the exclusive rights starting from December 28, 2009; Chinese trademark registration No. 1369928 – SHU UEMURA, with the registration date of February 28, 2010; Chinese trademark registration No. 7607289 – SHU UEMURA, with the registration date of October 28, 2010, and many more.
The Complainant also developed its presence on the Internet and is the owner of numerous domain names consisting of the mark – SHU UEMURA. For example: , , and others.
The disputed domain name was registered on March 23, 2011.
On January 14, 2012, the Respondent contacted the Complainant and informed it that the disputed domain name is for sale.
The disputed domain name resolves to a parking webpage containing pay-per-click advertising and also indicates that the disputed domain name is for sale. The indication that the disputed domain name is for sale directs to a webpage stating that the price of the disputed domain name is 6,200 Euros. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark SHU UEMURA, as it incorporates the Complainant’s trademark SHU UEMURA, in its entirety.
The Complainant further argues that the addition of the geographic term “us”, the gTLD “.com” and the omission of the space between “shu” and “uemura” does not avoid the identity or at least confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant further argues that the Complainant has not authorized Respondent to use and register its trademarks or to seek the registration of any domain name incorporating the Complainant’s trademarks.
The Complainant further argues that the Respondent is not known by the trademark SHU UEMURA and has never used the term “shu uemura” in any way before or after Complainant started its activities. The Complainant further contends that the Complainant had registered numerous trademarks that predate the registration of the disputed domain name by many years.
The Complainant further argues that the fact that the Respondent has no legitimate interests or rights in the disputed domain name. It can be inferred by the Respondent not claiming any rights or legitimate interests when informing the Complainant that the disputed domain name is for sale.
The Complainant further argues that the Respondent’s communication, informing the Complainant that the disputed domain name is for sale, constitutes bad faith as the webpage under the disputed domain name directs to a web page indicating the price for the disputed domain name is 6,200 Euros. An amount that far exceeds the out-of-pocket costs spent by the Respondent.
The Complainant further argues that the disputed domain name is also identical to a domain name held by the Complainant . The Complainant further contends that such identity can not be reasonably argued to be for the purpose of a legitimate activity.
The Complainant further argues that the Respondent was aware of the Complainant’s activity at the time the Respondent registered the disputed domain name.
The Complainant further argues that the notoriety of the Complainant’s trademarks and the facts that they are well-known worldwide have been acknowledged by several UDRP panels.
The Complainant further argues that the Respondent has taken advantage of the Complainant’s reputation and goodwill in order to generate revenue and making profits.
The Complainant further argues that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark rights in the disputed domain name.
The Complainant also indicates that the Complainant had already confronted the Respondent in a previous case of cyber squatting involving miscellaneous domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Respondent requested that the language of the proceeding be Chinese.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
Upon deciding on the language of the proceeding, the Panel takes the following into consideration:
a) The Respondent’s communication to the Complainant dated before this administrative proceeding, informing the Complainant that the disputed domain name is for sale was in English;
b) The website under the disputed domain name includes terms that are in English and in French and not in Chinese;
c) The Respondent was confronted by the Complainant in a previous UDRP case, which was rendered in English (L’Oréal, Laboratoire Garnier et Compagnie, Lancôme Parfums et Beauté et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domains Services,WIPO Case No. D2011-1608)
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous worldwide trademark registrations for the mark SHU UEMURA. For example: International trademark registration No. 1030415 – SHU UEMURA, with the registration date of February 1, 2010, designated, among others, to Cuba, Albania, Azerbaijan, Curacao, Morocco, Namibia, Norway; International trademark registration No. 1027071 – SHU UEMURA, with the registration date of November 26, 2009; Chinese trademark registration No.1347652 – SHU UEMURA (logo), with the exclusive rights starting from December 28, 2009; Chinese trademark registration No. 1369928 – SHU UEMURA, with the registration date of February 28, 2010; Chinese trademark registration No. 7607289 – SHU UEMURA, with the registration date of October 28, 2010, and many more.
The disputed domain name differs from the Complainant's registered SHU UEMURA trademark by the absence of the space between the two elements of the Complainant's mark, the additional term “us” and by the additional gTLD “.com”.
The addition of the term “us” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's SHU UEMURA trademark, as it is a geographical term indicating a place the Complainant does business.
It is clear that the most prominent element in the disputed domain name is the term “SHU UEMURA”.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Also the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Therefore the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the Complainant's SHU UEMURA trademark, in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant alleges that the Respondent lacks rights or legitimate interests in respect with the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the SHU UEMURA trademark, or a variation thereof.
The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
The Panel’s conclusion is further supported by the fact the Respondent did not claim any rights in the disputed domain name, when contacting the Complainant and informing it that the disputed domain name is for sale.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, demonstrating the substantial goodwill it achieved in its SHU UEMURA trademark. The Complainant's promotional efforts, particularly in China, make it hard to believe that the Respondent registered the disputed domain name without prior knowledge of the Complainant. It was held by UDRP panels that the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765).
The fact that the Respondent initiated the contact with the Complainant, when informing the Complainant that the disputed domain name is for sale, proves that the Respondent had prior knowledge of the Complainant and the Complainant's SHU UEMURA trademark rights.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The Respondent is using the disputed domain name to direct Internet users to a parking webpage containing pay-per-click links that direct users to websites that offers various goods and services. The Respondent is utilizing the Complainant's trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting that the source of the Respondent’s website is the Complainant. This constitutes bad faith registration and use of the disputed domain name. (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
It should also be noted that the disputed domain name is very similar to the Complainant’s domain name , which was registered by the Complainant on May 30, 2001. Such similarity constitutes further evidence that the Respondent intended to confuse consumers as to the source of the disputed domain name.
Also, from the evidence provided by the Complainant it is apparent that the Respondent, de facto, offered to sell the disputed domain name for monetary compensation, which is clearly in excess of the Respondent’s out-of-pocket costs to register and maintain the disputed domain name.
Circumstances where a respondent offers to sell the domain name for amounts, which are considered as valuable consideration in excess of the respondent's out of pocket costs directly related to the domain name, indicate bad faith on behalf of the respondent (see Merck KGaA v. Sunmeet Jolly,WIPO Case No. D2004-0195).
The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's use of a highly distinctive trademark of the Complainant suggests the Respondent's bad faith. It was held in UDRP decisions that it is presumptive that using a highly distinctive trade mark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that: “the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.”)
Based on the evidence presented to the Panel, including the Respondent's use of the disputed domain name, the confusing similarity between the disputed domain name and the Complainant's highly distinctive mark and the fact that the Respondent asked for excessive monetary compensation for the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 domain name, be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 12, 2012
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