Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Vitaly P Pak of Moscow, Russian Federation, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2013. On February 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On February 28, 2013 Complainant agreed to a suspension of the Proceedings for the purpose of finding an amicable settlement. The Proceedings were further suspended until May 27, 2013. No settlement having been reached, Complainant requested the Proceedings to be re-instituted, which they were on May 28, 2013.
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”).
The proceedings commenced on May 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013. Several brief emails were received from Respondent throughout the Proceedings. However, no official Response was filed with the Center.
The Center appointed Paul E. Mason as the sole panelist in this matter on August 2, 2013. 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.
On August 13, 2013 the Panel issued its Procedural Order No. 1 in both English and Russian requesting information within seven days as to the ownership of the domain name which will be explained further below. After receiving a reply from Complainant that it would take a longer time to obtain such information, on August 26, 2013 the Panel issued its Procedural Order No. 2 in both English and Russian which granted an extension of 30 days to obtain this and other relevant information to prove certain allegations made by Complainant.
Regarding language of the proceedings, this Panel is mindful of the burden on a party who does not understand the language of the proceedings. It can be costly and time-consuming to translate the necessary documents. In a case like this one, it appears that Complainant does not understand Russian and Respondent has some limited knowledge of English, the language which Complainant requested to be used.
Under paragraph 11 of the Rules, the language of the proceeding would be the language of the registration agreement for the domain name at issue, which in this case is Russian. However the Rules do allow the Panel discretion to determine the appropriate language for the proceedings according to the circumstances of each case.
In response to a notification by the Center in respect of the language of the proceedings, on February 18, 2013 Complainant confirmed its request for English to be the language of the proceedings, as contained in its Complaint. In several emails February 18-20, 2013, Respondent requested that the administrative proceeding be held in the Russian language.
Given the provided submissions and circumstances of this case, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center decided to accept the Complaint as filed in English, and to accept a Response in either English or Russian. This decision was formally communicated to the parties by the Center on May 30, 2013, in both the English and Russian languages. It is consistent with prior UDRP decisions such as The Gillette Company v. Efimova E S,WIPO Case No. D2013-0138.
Here, Respondent sent some brief communications in English such as his email to Complainant’s attorney dated April 26, 2013 asking whether Complainant was ready to compensate him for material loss associated with the transfer of the disputed domain name. Respondent also sent an email in Russian to the Center dated May 29, 2013 where he states that he will consult with an attorney about the Complaint. However no further communications were received from Respondent since that date. If Respondent consulted an attorney as he said he would, then this Panel must assume the attorney would have understood the essence of the Complaint and advised Respondent thereon. Under these circumstances the Panel finds that the burden on Complainant to translate the Complaint into Russian would be heavier than any possible burden on Respondent to understand the Complaint in English, especially since the Center offered to accept his Response in the Russian language. This offer was not acted upon, as no Response has been filed with the Center.
For these reasons the Panel is issuing its decision in the English language. 4. Factual Background
According to the Complaint, L’Oréal is a French industrial group specializing in cosmetics and beauty care, founded in 1909 by a French chemist of the same name. It is one of the world’s largest and best known cosmetics companies with presence in some 130 countries and more than 68,000 employees. It creates and distributes products in all sectors of the beauty industry, including hair coloring, styling, cosmetics, cleansers and fragrances.
Complainant has had a local subsidiary in the Russian Federation since 1990, a research center in Moscow, and a production facility in the Russian Federation as well. The Russian market is one of Complainant’s fastest growing markets with significant increases in sales revenues. It has been number one in cosmetics, hair color, facials and make-up in the Russian Federation since 2007, and the company has trained some 20,000 beauty professionals there.
Complainant is the owner of numerous trademarks worldwide as indicated in Annex 14 to the Complaint, including trademarks filed in 1956 (United States), 1983 (United Kingdom) and the (Russian Federation) in 2008.
The disputed domain name was registered by Respondent on December 13, 2011.
According to the Complaint, the disputed domain name is inactive and does not resolve to any website. This was confirmed by an attempt by the Panel to determine which website, if any, is affiliated with the disputed domain name, yielding no results. 5. Parties’ Contentions A. Complainant
i) Identical or Confusingly Similar
On the question of similarity between the disputed domain name and Complainant’s trademark, Complainant asserts that the mere addition of a hyphen and suffix “lux” are insufficient to distinguish the domain name from its trademarks. “Lux” could stand for several things, including “luxury” as a type of high-end product typical of the L’Oréal line.
ii) Rights or Legitimate Interests
Complainant states that it has granted no license or authorization for Respondent to use its marks. Therefore Respondent has no rights or legitimate interests which would permit it to legally register the disputed domain name.
iii) Registered and Used in Bad Faith
In order for a complainant to prevail in UDRP cases, it must prove both bad faith registration AND bad faith use of the domain name.
Bad faith registration of the domain name
Complainant claims that as one of the world’s leading companies in its field for many years, its trademark is well-known worldwide and is therefore entitled to be considered a “famous mark”. Furthermore, its long and strong presence in the Russian Federation makes it inconceivable that Respondent would not know that the domain name he registered would be in conflict with Complainant’s famous trademark.
Bad faith use of the domain name
Complainant argues that so-called “passive holding” of a domain name does not mean good faith and that under appropriate circumstances, a Panel may find bad faith use in passive holding. Several UDRP decisions are cited to support this contention.
Another argument made is that Respondent did not reply to the Complaint with a good faith use defense.
Further, Complainant alleges the Respondent “appears to possess a second domain name which resolves to an active page with a website whose name reproduces Complainant’s name and trademark...” with products resembling those of Complainant for sale. B. Respondent
Respondent did not formally reply to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The distinguishing nature of the suffix “-lux” is arguable, but Respondent chose not to argue the issue. Accepting Complainant’s argument that “-lux” most probably is an intended association with a luxury line of goods, the Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark. In any event, the first and most distinguishable element of the domain name is the famous name “loreal” which is a name practically unique to the Complainant. B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production is therefore on Respondent to show it has such rights or legitimate interests. Absent a convincing response to this effect in reply to Complainant’s assertion that it has not granted any license or permission for Respondent to use its marks, the Panel finds that Respondent has no such rights or legitimate interests. C. Registered and Used in Bad Faith
Bad faith registration of the domain name
The Panel finds that because of Complainant’s fame worldwide, notably including the Russian Federation where Respondent lives, it is very difficult to believe that Respondent would not have known of the famous, practically unique name and mark “L’ORÉAL when registering the disputed domain name as late as 2011. Therefore the Panel finds bad faith registration of the disputed domain name.
Bad faith use of the domain name
The crux of this case boils down to whether Complainant can prove bad faith use of the disputed domain name by the Respondent. Here, Respondent did not build any website corresponding to the domain name. He did not disguise his contact information. After the Complaint was filed, he apparently did have some unsuccessful negotiations with Complainant to transfer the disputed domain name. But it is not clear who initiated the negotiations and what was being asked or refused.
The Panel has reviewed the case cited by Complainant as well as the six cases cited in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”): “Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?”
The Panel agrees with the principle established in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, that passive holding of a domain name can constitute bad faith use thereof under appropriate circumstances as determined in each particular case. In Telstra, respondent tried to conceal its true identity and even provided false contact details which emitted the odor of bad faith. In Jupiters Ltd. v. Aaron Hall, WIPO Case No. D2000-0574, it was the attempted registration by the respondent of the complainant’s United States trademark which determined bad faith use. In Westdev Limited v. Private Data, WIPO Case No. D2002-1903, the domain name was illegally appropriated via a stolen credit card, i.e. via identity theft. In Polaroid Corp v. Jay Strommen, WIPO Case No. D2005-1005, the domain name had links to website creation sites with presumed per-click revenues going to the respondent. A similar fact pattern existed in Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. And in the case cited by Complainant, Cleveland Browns Football Company LLC v. Andrea Densie Dinoia, WIPO Case No. D2011-0421, there was persuasive evidence that the respondent was engaged as a “front man” in a fraudulent transfer of the domain name for another party in order to conceal the latter’s true identity.
There are one or two cases where the panel decided that registration of the domain name in bad faith alone constituted bad faith use of the domain name. However this Panel cannot agree with that line of thinking, because to say that bad faith registration by itself without more equals bad faith use would render the bad faith use requirement totally meaningless.
Therefore, in order to further understand other aspects which could impact this case, the Panel issued its Procedural Orders No. 1 and No. 2 dated August 13 and 26, 2013 respectively. These Orders, issued in both the English and Russian languages to be absolutely clear, requested the parties to provide documentary evidence as to the identity of the current registrant of the domain name (a similar domain name with the “.ru” country extension where products alleged to be Complainant’s are advertised for sale).
In response to Procedural Order No. 2, on September 18, 2013 Complainant submitted its observations and documentary evidence from the Registrar showing that the owner of the domain name is Vitaly Pak, Respondent in this dispute over ownership of the domain name . From this evidence, as well as the overall circumstances of this case, the Panel concludes that Respondent has been engaging in bad faith use of the disputed domain name via passive holding of the same, which functions to shield its commercial activities which improperly compete with those of Complainant which have been conducted on the website resolved to using at Respondent’s other similar domain name . 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.
Paul E. Mason
Sole Panelist
Date: September 30, 2013
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