The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Zhongshengpengfei, zhaohui wu of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2012. On March 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 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 March 20, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On March 21, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of the proceedings by the specific due date.
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 March 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2012.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on May 2, 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
4.1 The Complainant has provided some evidence to substantiate its claim that L’ Oreal is one of the world’s largest groups in the cosmetics business with a presence in over 130 countries and with over 66,600 employees. Evidence was provided to support the Complainant’s contention that L’Oréal creates and distributes products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances.
4.2 The Complainant has provided further evidence to show that L’ Oreal is present all over the world and in China where it has a local subsidiary since 1997 and is employing over 2,500 people. The Complainant has also opened a research centre in Pudong, Shanghai, China. The Complainant brought evidence to show that its sales in China had doubled from 2005 to 2010 and that L’Oréal’s brand Men Expert has helped to make it the number one for skincare in China. The Complainant has used local icons such as the actor David Wu to promote its products and has also sponsored events like the World Expo in Shanghai, China.
4.3 The Complainant has become aware of the registration of the disputed domain name , in the name of Respondent Zhongshengpengfei, Zhaohui Wu. The disputed domain name redirects Internet users to a website with a title “L’OREAL PARIS SQ” which displays posters for the Complainant and the Complainant’s products.
4.4 The Complainant is not related in any way to such entity and website and has been made aware of the distribution of fake products under the brand L’oreal SQ in China. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the disputed domain name (registered on July 24, 2009) is confusingly similar to its own websites, (registered on October 14, 1997); (registered on October 24, 1997) and (registered on July 18, 2000) for several reasons:
(i) Whilst the Complainant did not make any submission to suggest that the Respondent is using the disputed domain name to confuse consumers into believing that the Respondent’s website is an official website of the Complainant or that the Respondent is affiliated with the Complainant, one could imply this from the background of the case. The Complainant has provided evidence to show that it has registered Chinese Trademark L’OREAL Registration No. 148647 of September 20, 1979 renewed covering goods in class 3 as well as Chinese Trademark L’OREAL Registration No.1487385 of November 8, 1999 renewed covering services in class 42.
(ii) The Complainant then submitted that prior UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. The Complainant submitted that the only differences between the disputed domain name and the Complainant’s trademark L’OREAL are the adjunction of the term “hongkong”, the adjunction of the top-level domain “.com”, the omission of the apostrophe between the letters “l” and “o” and of the accent on the letter “e” in the disputed domain name. The Complainant suggests that these differences are insufficient to negate the existing confusing similarity between the Complainant’s trademark and the disputed domain name.
(iii) The Complainant submitted that the absence of apostrophe between the letter “l” and the letter “o” and the absence of the accent on the “e” letter in the disputed domain name do not have any impact on the likelihood of confusion. The Complainant relied on previous UDRP panel decisions which have held that typographic differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity.
(iv) Finally the Complainant states that the disputed domain name features geographic term “hongkong” which is a geographic location of Hong Kong, China, added to the trademark. It submitted that the mere addition of this term is not sufficient to distinguish the disputed domain name from the Complainant’s L’ORÉAL trademark and that other UDRP panels have consistently determined that a domain name that consists of a trademark plus a geographic term may still be confusingly similar.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(i) The Respondent has no connection or affiliation with the Complainant and has not been authorized by the Complainant to register and use its L’OREAL trademark or to seek registration of any domain name incorporating said mark.
(ii) The Respondent has no prior rights or legitimate interests in the disputed domain name and the registration of L’OREAL trademark preceded the registration of the disputed domain name for many years.
(iii) The Respondent has never been known by the disputed domain name and has no rights or legitimate interests in the name “L’ Oreal”. The Complainant has never licensed or given authorization of any other kind to the Respondent to use the trademark L’ OREAL or to seek registration of any domain name incorporating the said trade mark.
(iv) The Respondent has not received any authorization to register and use the disputed domain name or to establish a website with a mention of “L’OREAL PARIS SQ” and a claim of affiliation with the Complainant.
(v) The Respondent did not demonstrate, use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolved to a website that creates a false affiliation with Complainant. Due to the presence of the Complainant products on the website at the disputed domain name, indication of the Complainant’s line of products Dermo Expertise ads of the Complainant, the copyright notice, Internet users are likely to wrongly believe this is an official website of the Complainant. Such circumstances do not represent a use in connection with a bona fide offering of goods and services.
(vi) Such imitation of the Complainant’s websites cannot provide the Respondent with rights or legitimate interests over the disputed domain name.
5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) The Complainant alleged that the Respondent has registered the disputed domain name in bad faith because the Respondent knew or must have known the Complainant at the time it registered the disputed domain name.
(ii) The Complainant stated that the selection of the disputed domain name, which wholly incorporates the L’ OREAL trade mark, cannot be a coincidence as “L’ Oreal” is not a descriptive or generic term.
(iii) The Complainant submitted that it seemed difficult to suggest that the Respondent was not aware of Complainant’s activity at the time he registered the disputed domain name. This was because the Complainant’s trademarks are largely present in a leadership position throughout the world and especially in China which represented its third market for the year 2010.
(iv) The Complainant also submitted that in any event, a simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant’s registrations, is another proof of the Respondent’s bad faith.
(v) Finally, the Complainant submitted that in view of the website to which the disputed domain name resolves, it appears obvious the Respondent knew the Complainant and its trademark at the time the disputed domain name was registered.
The Complainant requests a decision that the disputed domain name be transferred to the Complainant. B. Respondent
5.4 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 The Complaint was filed in the English language. On March 20, 2012, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the Registrar that the language of the registration agreement for the disputed domain name is Chinese. Although the Chinese language is the language of the registration agreement for the disputed domain name, the Complainant asserted its request that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.2 The Complainant then came up with a novel submission stating that as the disputed domain name was evocative of a geographic location Hong Kong, China, where English is an official language, therefore the choice of the disputed domain name suggests the Respondent understands English. Unfortunately, in this Panel’s view, this is not a logical argument let alone a properly constructed legal submission with valid reasoning backed by jurisprudence. The Panel is unable to accept such an illogical submission.
6.3 The Complainant then suggested because it was located and registered in France and has no knowledge of the Chinese language, if the case were to proceed in the Chinese language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceeding. It claimed that the use of another language in the proceeding would impose a burden on the Complainant and could delay the proceeding and the procedure under the Policy and it cited previous UDRP decisions such as Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679; Hermès International v. Luke-Walton Luke,WIPO Case No. D2011-1323; Hermes International v. Yuanyuan Deng / Deng Yuan, WIPO Case No. D2011-0001.
6.4 The Complainant then relied upon the decision of Solvay SA v. Hyun-Jun Shin,WIPO Case No. D2006-0593, where the Panel decided that since the complainant was unable to communicate in the language of the registration agreement, the proceeding would inevitably be delayed unduly, and the complainant would have to incur substantial expenses if the complainant were to submit all documents in said language.
6.5 The Panel would like to make it clear that the inability of the Complainant to communicate in the Chinese language or its preference to communicate in English is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. This has been ruled in previous UDRP decisions including the case of Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi,WIPO Case No. D2007-1918, and Accor v. Mao Jian Ting, WIPO Case No. D2012-0189. It is in fact a very poor non-legal argument for the Complainant to submit that because it is located in France and has no knowledge of the Chinese language, it should pick a different language to deal with a legal case that it had itself initiated. The fact that the Complainant has to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceeding is not a legal reason at all that can be accepted by this Panel. At the end of the day, it is up to the complainant to secure the services of counsel that can communicate in the appropriate language or languages.
6.6 What is deemed to be fair to one party may be deemed to be unfair to the other party. It is a fundamental rule of the administrative proceedings that a participating party should be allowed to present his case. In the event that the language of the administrative proceeding has to be held in a particular language under the Rules but a different language is substituted for the “costs convenience” of one party, thereby depriving the other party of being entitled to communicate in the language set down by the Rules, this may cause difficulty at the enforcement stage. This Panel respectfully cannot agree with all of the UDRP decisions cited by the Complainant on this issue of language of proceedings. At the end of the day, the Parties and the Panel alike are bound by the applicable procedural rules that have been set in place and where an exercise of panel discretion on language is concerned, in this Panel’s view, this cannot be based solely or even principally on which language is deemed to be most widely used or not.
6.7 Had this been a truly contested matter, in which the Respondent had sought to participate, or otherwise replied to any of the Center’s various Chinese and English language notifications indicating any objection to the Complainant’s request on language, the Respondent may have been likely to have been entitled to expect a panel to rule that the language of the proceedings should take place in Chinese, in strict adherence to paragraph 11 of the Rules. However, in the present case, considering the composition of the domain name and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, bearing in mind that all notices and communications from the Center were sent in both English and Chinese, and that the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
6.8 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.9 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove its case in accordance with the Policy and the Rules. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700).
6.10 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.6). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
6.8. Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has appended to the Complaint a list of registered trademarks and registered domain names that incorporate the trademark L’ OREAL. It is quite clear that the Complainant is the legitimate owner of these trademarks and domain names. The disputed domain name, which consists of the Complainant’s trademark L’ OREAL, causes confusing similarity. Previous UDRP decisions in similar situations, such as F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066, have correctly decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a number of trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
6.11 Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among UDRP panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.12 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001). As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.13 In this case, the Panel accepts that the Complainant’s has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in providing evidence showing that the L’ OREAL trademark is well-known throughout the world, and it was registered and presents in China, where the Respondent is located. The Respondent is not affiliated with Complainant in any way, nor has he been authorized by Complainant to register and use its L’OREAL trademark or to seek registration of any domain name incorporating said mark.
6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made noncommercial or fair use of the disputed domain name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services.
6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
6.16. The Complainant has rightly pointed out the fact that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the L’ OREAL trademark and the Complainant’s prior registered domain names.
6.17. The Complainant then submitted that the selection of the disputed domain name, which wholly incorporates the L’ OREAL trademark was done in bad faith. The Panel accepts this line of submission and accepts the contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the L’ OREAL trademark. The Panel accepts the Complainant’s submission that the Respondent is using the Domain Name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark.
6.18. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.19. Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it is using the disputed domain name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favor of the Complainant. The Panel has been able to conclude that the Respondent has registered and used the disputed domain name in bad faith. 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 domain name be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Sole Panelist
Dated: June 29, 2012
Full & Egal Universal Law Academy