Complainant is L’Oréal SA of Paris, France, represented by Studio Barbero, Italy.
Respondent is Mr. Sieu Nhan of Hanoi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2013. On March 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 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.
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 Respondent of the Complaint, and the proceedings commenced on March 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2013.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 18, 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. 4. Factual Background
Complainant, L’Oreal, is a French company specializing in the field of cosmetics and beauty since 1909. It owns thousands of national and international trademark registrations worldwide, including L’OREAL. The L’OREAL trademark has been registered since as early as 1927.
Respondent is Mr. Sieu Nhan of Hanoi, Vietnam. Under his name, the disputed domain name was registered on March 5, 2012. 5. Parties’ Contentions A. Complainant
Complainant contends that it is aware of the registration and use of the disputed domain name .
It alleges that the disputed domain name differs from the Complainant’s trademark by the addition of the non distinctive Vietnamese term “thao” (meaning “sports” in English), and the disputed domain name redirected it to a website where Complainant’s trademarks and official images were published, and Complainant’s products were offered for sale, along with competing products. In particular, Complainant alleges that Respondent’s website used the characteristic lettering of Complainant’s registered trademarks and images taken from official advertisement campaigns. The disputed domain name, presently, is held inactive since the website and/or the disputed domain name have been suspended by the current hosting provider and/or the Registrar.
Complainant contends that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
- Respondent has no rights or legitimate interests with respect to the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
The disputed domain name contains sufficient similarity to Complainant’s mark L’OREAL to be confusingly similar to the mark.
UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a Complainant's registered Mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such Marks”); Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778 ( was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More,WIPO Case No. D2000-0006 (the distinctive features of the domain name were complainant's mark).
The mere addition of the Vietnamese term “thao” (“sports” in English) to the disputed domain name does not change this ruling since the Panel finds that the term is not sufficient to distinguish the disputed domain name from Complainant’s trademark.
The Panel finds that the first element of the Policy has been established here. B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company,WIPO Case No. D2010-1762. Accordingly, Complainant needs only make out a prima facie case that Respondent lacks rights or legitimate interests in the domain names. Id. Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names. Id.
In this case the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances:
- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the L’OREAL mark in the disputed domain name or any other domain name.
- There is no indication in the file that Respondent is known under the disputed domain name.
- The disputed domain name is primarily representative of Complainant’s services as it incorporates Complainant’s L’OREAL mark and sells Complainant’s branded products or counterfeit products of Complainant’s brand, along with competing products. Hence, Respondent’s use of the disputed domain name appears to be merely intended to divert Internet users to Respondent’s website and cannot be considered a bona fide offering of goods and services.
Further, the Panel concludes that Respondent has not successfully demonstrated any rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by Respondent in order to demonstrate its rights or legitimate interests. Such circumstances may be:
- use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Respondent did not reply to Complainant’s contentions. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the disputed domain name was to divert Internet users to Respondent’s website to sell Complainant’s products without Complainant’s permission or sell counterfeit products of Complainant’s brand, along with competing products. This is neither noncommercial nor fair use of the disputed domain name.
For the foregoing reasons, the Panel concludes that the second element of the Policy has been established. C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent’s bad faith registration and use of the disputed domain name has been proven.
The third element of the Policy requires that Complainant establish that the disputed domain name has been registered and used in bad faith.
Paragraph 4(b) provides the following four (non-exclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trade mark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location.
The Panel finds that at the minimum the circumstance set out in paragraph 4(b)(i) is fulfilled here. In the Panel’s view there is sufficient evidence that leads to the finding that Respondent acquired the disputed domain name primarily for the purpose of diverting Internet users to Respondent’s website to either sell Complainant’s products without Complainant’s permission or sell counterfeit products of Complainant’s brand, along with competing products.
Complainant further contends that the disputed domain name is presently inactive. This does not change the Panel’s findings above. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the Panel’s view, further proof of bad faith is that Respondent has not responded to Complainant’s Complaint. 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 Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: May 2, 2013
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