The Complainant is L’Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Private Registrations Aktien Gesellschaft, Domain Admin of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 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.
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 April 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 18, 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 disputed domain name was first registered on November 15, 1999.
The Complainant states that the disputed domain name was assigned to it in 2000 pursuant to a March 3, 2000 decision made by the French Tribunal de Grande Instance de Nanterre in a legal proceeding. Evidence shows that the disputed domain name was registered in the name of the Complainant as at June 8, 2000.
The Complainant further states that, due to an error, it failed to renew the disputed domain name on November 15, 2006, after which it was acquired by another third party, New Ventures Services, Corporation (Domain for Sale). Evidence shows that the disputed domain name was registered in the name of that entity as at January 17, 2007.
The evidence then shows that as at March 6, 2010, the disputed domain name was registered in the name of the Respondent. The Respondent accordingly acquired the disputed domain name on a date between January 17, 2007 and March 6, 2010. A WhoIs record provided by the Complainant indicates that the disputed domain name record was updated on March 5, 2010. This may suggest that the Respondent registered the disputed domain name on that date but the evidence is not clear-cut on this.
The Complainant states that it was established in 1909 and adopted the name L’Oréal SA on April 14, 1939. It is one of the world’s largest companies in the field of cosmetics and beauty, marketing various beauty products (including in relation to hair color and care, skin care, sun protection, make-up and perfume) and is also active in the dermatological and pharmaceutical fields. It states that it operates an extensive sales network of around 68,900 employees in 66 countries and that its consolidated sales at the end of 2011 exceeded EUR 20 billion.
The Complainant is the registered proprietor of a portfolio of trademark registrations incorporating L’OREAL PROFESSIONNEL and L’OREAL, including the following registrations which it relies on:
- L'OREAL International Registration no. 184970 registered on May 23, 1955 and renewed thereafter in Classes 03 and 05;
- L'OREAL International Registration no. 230114 registered on March 28, 1960 and renewed thereafter in Classes 01, 02, 03, 04, 05, 06, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34;
- L'OREAL International Registration no. 328403 registered on November 28, 1966 and renewed thereafter in Classes 35, 36, 37, 38, 39, 40, 41 and 42;
- L'OREAL (word mark) European Community trademark, registration no. 000767285 filed on March 05, 1998, registered on October 4, 1999 and renewed thereafter in Class 25;
- L'OREAL (word mark) United Kingdom trademark, registration no. 476691 filed on January 14, 1927 and renewed thereafter in Class 03;
- L'OREAL (word mark) United States trademark, registration no. 0661746, filed on June 25, 1956 registered on May 13, 1958 and renewed thereafter in Class 03;
- L'OREAL (word mark) French trademark, registration no. 1211633, filed on August 20, 1982 and renewed thereafter in Classes 22 and 26;
- L'OREAL PROFESSIONNEL PARIS International Registration no. 676780, filed on July 07, 1997 and renewed thereafter in Classes 03, 05, 08, 11, 21, 26 and 42;
- L'OREAL PROFESSIONNEL (word mark) European Community trademark, registration no. 008118903 filed on February 23, 2009, registered on October 21, 2009 and renewed thereafter in Class 03.
Additional evidence provided by the Complainant shows numerous registrations in various jurisdictions for the marks L’OREAL and L’OREAL PROFESSIONNEL (with spelling variations appropriate to certain jurisdictions) dating from prior to January 17, 2007 in multiple classes.
The Complainant’s L’OREAL trademark is very well-known internationally. L’ORÉAL is ranked 40th in the 2011 Interbrand list of the world’s top 100 brands. The same list states that the brand’s value as at 2011 was USD 8,699 million. The Complainant states that both L’OREAL and L’OREAL PROFESSIONNEL were strongly supported by global advertising campaigns prior to 2007. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.
The Complainant further states that as at the date of the Complaint, the Respondent was using the disputed domain name to host a website that displayed a page of sponsored links to:
(a) commercial websites including links to websites offering for sale goods of competitors of the Complainant (including L’Erbolario, Avon and Kallèis). The particular goods of competitors of the Complainant which are offered for sale on commercial websites linked from the disputed domain name include cosmetics, which are an item expressly covered in the specifications for a number of the Complainant’s trademark registrations for L’OREAL and L’OREAL PROFESSIONNEL;
(b) websites hosting adult-oriented material including pornography.
Finally, the Complainant has referred the Panel to more than 20 adverse decisions of previous panels against the Respondent concerning trademarks of other parties, and to a decision in which a previous panel referred to the Respondent as a “serial cyber squatter” (Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The consensus view of UDRP panelists is that registration in bad faith must normally occur at the time the current registrant took possession of the disputed domain name.
The Panel does not have evidence of the exact date on which the Respondent took possession. As stated above, a WhoIs historical record provided by the Complainant indicates that the disputed domain name record was updated on March 5, 2010. This suggests that the disputed domain name may have been transferred to the Respondent on that date. However, because this is not absolutely clear, the Panel finds, for the sake of prudence, that bad faith must be found to have occurred as at the earliest possible date, available on the evidence, on which the Respondent could have taken possession of the disputed domain name, namely January 17, 2007. A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademarks L’OREAL and L’OREAL PROFESSIONNEL as at January 17, 2007 by way of its registered trademarks for those marks in numerous classes, predating January 17, 2007. The Complainant’s two marks were also well-known as at that date.
The Panel considers that the Complainant’s substantially distinctive L’OREAL registered trademark is instantly recognisable within the disputed domain name, and that the descriptive element “pro”, does not sufficiently differentiate the disputed domain name from the Complainant’s mark so that confusion will not arise.
Further, the Complainant’s L’OREAL PROFESSIONNEL mark is also confusingly similar to the disputed domain name. The Panel considers that Internet users familiar with the Complainant’s mark will be likely to think that “lorealpro” is a shortened form of the mark L’OREAL PROFESSIONNEL, and that the component “pro” in the disputed domain name is simply an abbreviation for PROFESSIONNEL.
The Panel accordingly finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Complainant states and the Panel accepts that it has never given the Respondent any licence or authority to use the trademarks L’OREAL or L’OREAL PROFESSIONNEL (or its variations).
There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. The disputed domain name is not similar to the Respondent’s name, and there is no evidence that the Respondent operates any business under a name that is similar to or the same as the disputed domain name.
In the circumstances, the Panel finds that the Complainant has clearly satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
As stated above, the Panel has formed the view that, for the sake of prudence, bad faith must be shown to have existed as at January 17, 2007 (being the earliest date on which, based on the evidence, the Respondent could have taken possession of the disputed domain name).
The Complainant has numerous trademark registrations for L’OREAL and L’OREAL PROFESSIONNEL (and its variations) which well predated January 17, 2007. These marks were both very well-known as at that date and are distinctive. The Panel finds that the Respondent must have been well aware of the Complainant’s mark at the time it acquired the disputed domain name.
The Panel is therefore satisfied that the disputed domain name was registered in bad faith.
The Panel’s finding in this regard is supported by (but not dependent on) the Respondent’s history of registrations of domain names comprising other party’s trademarks which led a previous panel to refer to the Respondent as a “serial cyber squatter”.
The Panel is also satisfied that the disputed domain name is being used in bad faith, in particular for attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks. Pay-per-click sponsored links on the Respondent’s website are tailored in part to match goods covered directly by the Complainant’s registered trademarks or to divert business to rival brands of cosmetic products. There is therefore a demonstrated intent to attract Internet users to the Respondent’s websites for commercial gain.
The Panel notes that previous Panels have also found use in bad faith where a disputed domain name has been adopted with the Complainant’s mark in mind, and has been linked to a website offering pornography (see, e.g., The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 and CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008).
In this case the website pages hosted at the disputed domain name also have pay-per-click links to websites offering pornographic videos and other pornographic material. The Panel finds that such use of the disputed domain name will result in tarnishment of the Complainant’s trademarks as well as creating commercial gain for the Respondent. This provides an additional basis for the Panel’s finding that the disputed domain name is being used 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 disputed domain name be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Dated: May 25, 2012
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