The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Anonymous Corp, Ken of Zu Hyen, Macau, China. 2. The Domain Name and Registrar
The disputed domain name [] (the “Domain Name”) is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2013. On April 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2013, 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 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2013.
The Center appointed Keith Gymer as the sole panelist in this matter on May 29, 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
The Complainant, L’Oréal, is a French company, founded in 1909, which has become a world-leader in the cosmetics business. It has a presence in over 130 countries worldwide, and markets a range of over 2000 products under 500 brands, including ELSEVE, which is used for various hair-care products.
ELSEVE was first launched in 1971 and is now the no.1 brand for hair-care products in France and in Europe. The Complainant has numerous registrations for the trade mark ELSEVE across the world, including e.g. French national registration 1638609, for goods in Class 3, dating from January 18, 1971.
According to the WhoIs records, the Domain Name was registered by the Respondent under the name “Anonymous Corp, Ken” as of January 1, 2010. 5. Parties’ Contentions A. Complainant
The Complaint is based on the following grounds and observations:
The Complainant and its ELSEVE trademark enjoy a strong reputation. The Complainant owns numerous trademark registrations for ELSEVE across the world, including the original French registration cited above. It also has also owned and operated the domain name since 1996.
The Complainant was initially contacted by the Respondent regarding the Domain Name in early March 2013. The Respondent then claimed that the Domain Name had been originally registered for a project, now aborted, allegedly relating to products based on natural sap. The Respondent offered to transfer the Domain Name via a trustee. The Complainant drew attention to its own registered trade mark rights and sought an immediate transfer of the Domain Name. However, the Respondent asked for a payment of EUR 500. The Complainant refused and reiterated its claim for a transfer at no costs, but received no reply.
In view of the Respondent’s silence, the Complainant then sent him a “cease-and-desist” letter notifying the Respondent formally of the Complainant’s rights in the mark ELSEVE, and again requesting transfer of the Domain Name.
The Respondent replied by contacting the Complainant’s representative by telephone and email, in French, repeating his offer to transfer the disputed Domain Name for EUR 500. According to the Complainant, the Respondent’s behaviour during this phone call was not amicable. In his reply, the Respondent claimed the sum was to cover his expenses, and that shortly he would no longer be the owner of the Domain Name or in position to transfer the Domain Name. He also insisted that he might put the Domain Name up for auction if another company showed a legitimate interest in the Domain Name.
As no amicable settlement could be made on such terms, the Complainant initiated this UDRP procedure against the Respondent in order to obtain the transfer of the Domain Name. The Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights
The Domain Name incorporates all the letters composing Complainant’s trademark ELSEVE. The Domain Name differs from Complainant’s trademark only by the addition of an accent on the second letter “e” and the “.com” generic top-level domain (gTLD).
The addition of an accent is only a minor difference. It has been held that the addition of accents is irrelevant and does not prevent a finding of confusing similarity with a complainant's other trademarks.
In Blédina contre Malek Hocini,WIPO Case No., D2010-1216, the domain names and were found identical or strongly similar to the trademarks BLEDICHEF, BLEDILAIT et BLÉDILAIT of the complainant and the panel stated that it was reasonable to consider that the addition of an accent is an irrelevant element. In CELIO France, SAS v. Monsieur Ken Hocini,WIPO Case No. D2010-0444, the fact the domain name includes a non ASCII character (the letter é) was found to have no influence over the likelihood of confusion generated with the trademark of Complainant [CELIO]. In Confédération Nationale Du Crédit Mutuel v. Equitron,WIPO Case No. D2007-0622, (), the panel noted that “the domain name consists of words that are identical to the Complainant's trademark CREDIT MUTUEL except that the domain name contains the non-ASCII character “é” in place of the simple ASCII character “e”. This Panel accepts the arguments of the Complainant, set out above in relation to the similarity of the domain name and the Complainant's trademark. The use of the non-ASCII character “é” in place of the simple ASCII character “e” has little or no significance in this case, either technical or otherwise. The difference is minute and as the Complainant has pointed out most web browsers support IDN characters.”
Furthermore, it is well-established that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name.
The Complainant uses the trademark ELSEVE in connection with a wide variety of products. Therefore, the public would reasonably assume that Complainant owns the disputed domain name or at least assume that it is related to L’Oréal and its well-known trademark. Additionally, when written without capital letters, the Complainant itself spells its brand as “Elsève”. This increases the likelihood of confusion generated by the Domain Name for Internet users.
Further, the term ELSEVE is unique and is only known in relation to the Complainant. According to online dictionaries, it has no meaning in English or in French, or in any other language, except in connection with Complainant. Consequently, this sign has a high degree of distinctiveness.
For all the above-cited reasons, the Complainant has demonstrated trade mark rights in the name and mark ELSEVE and that the Domain Name is identical or at least confusingly similar to the Complainant’s trade mark. The Respondent has no rights or legitimate interests in the Domain Name
The Respondent is not affiliated with the Complainant in any way, nor has the Complainant authorized him to use and register the trademark ELSEVE or to seek registration of any domain name incorporating the trade mark.
Panels have found that, in the absence of any license or permission from the Complainant to use such a widely-known trade mark, no actual or contemplated bona fide or legitimate use of the disputed Domain Name could reasonably be claimed.
Having regard to the success and the notoriety of the trademark ELSEVE, the Respondent cannot pretend it was intending to develop a legitimate activity through the disputed Domain Name. Additionally, the Respondent is not commonly known by the name “Elsève” but in the WhoIs database registrant is identified as “Anonymous Corp, Ken”.
Furthermore, although the Respondent has said that the Domain Name was registered for a project to promote products based on natural sap, the Respondent did not show any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Indeed, the disputed Domain Name is inactive (c.f. Nestlé Waters France S.A. v. Anonymous Corp, Ken,WIPO Case No. D2011-0714).
The Respondent is known for registering internationalized domain names in which he has no legitimate interest and trying to sell them to the owners of corresponding trademarks (WIPO Case No. D2011--0714, supra and B&B Hotels, Société par actions simplifiée v. Anonymous Corp, Ken,WIPO Case No. D2011-1864). The Respondent also appears to be using other identities. He was evidently involved as Ken Hocini and Malek Hocini in similar matters (See WIPO Cases No. D2010-0444, and D2010-1216, supra).
From exchanges with the Respondent in the present case, as further detailed above, it appears that the only reason why the Respondent has registered the disputed Domain Name is for the purpose of selling it to Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name.
Accordingly, the Complainant believes that it is undoubtedly established that Respondent has no prior rights or legitimate interests with respect to the Domain Name. The Domain Name was registered and is being used in bad faith
With regard to registration in bad faith, it is obvious that Respondent knew or must have known of the Complainant’s trademark at the time of the registration of the Domain Name. Complainant’s trademark has a long history of success and is in a leadership position in France and Europe. In light of the reputation of Complainant’s ELSEVE trademark, Respondent’s reproduction of the trademark in its entirety in the disputed domain name clearly proves that Respondent was aware of the existence of Complainant’s trademark. Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (see e.g. Lancôme Parfums et Beauté & Cie,and L’Oréal v. 10 Selling,WIPO Case No. D2008-0226). Given the reputation of the ELSEVE trademark, registration in bad faith can be inferred.
The fact that it was the Respondent who initially contacted the Complainant about the disputed Domain Name also proves Respondent’s knowledge of the Complainant and its trademark ELSEVE. In its exchanges with Complainant, the Respondent never denied knowledge of the Complainant and its trademark.
The Respondent has requested EUR 500 for the transfer of the Domain Name. However, this sum largely exceeds the registration costs of this Domain Name. Further, the Respondent indicated that the Complainant had to purchase the Domain Name before a certain deadline or thereafter it would not be possible, and he could put the Domain Name up for auction if other parties showed an interest. The Respondent’s communications correspond to offers to sell the Domain Name. The only reason why the Respondent has registered the Domain Name appears to be for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name, which is a sign of bad faith pursuant to paragraph 4(b)(i) of the UDRP Policy.
Panels have repeatedly held that the registration of a domain name reproducing a trade mark of another party and the offer for sale of such a domain name for a price exceeding out-of- pocket costs corresponds to bad faith pursuant to the Policy.
Additionally, the Respondent seems to have engaged in a pattern of conduct of registering domain names reproducing well-known trade marks, and including accents, and attempting to sell them to the rightful trademark owners as noted in the various cases previously cited above.
In view of the foregoing, it is surely clear that the Domain Name was registered in bad faith.
There are also grounds to support the finding that the Respondent also used the Domain Name in bad faith.
The fact that the Domain Name is inactive is irrelevant for a finding of bad faith use by Respondent. Previous UDRP panels have already considered that passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all circumstances of the Respondent’s behaviour.
It has been noted that the Respondent has tried to sell the Domain Name to Complainant and threatened to put it up for auction, and potentially to sell it to third parties, if the Complainant did not accept its proposal to purchase the Domain Name. The Respondent has engaged in a pattern of conduct of bad-faith registrations and has been involved in several similar UDRP disputes.
The Complainant uses its mark both as ELSEVE and Elsève. It is therefore also likely that the Respondent registered the Domain Name to prevent Complainant from reflecting its trademark in the Domain Name. This type of conduct constitutes evidence of Respondent’s bad faith (WIPO Case No. D2009-0242, L’Oreal v. Chenxiansheng).
The Complainant and its trademark ELSEVE have a strong reputation and are widely known. The disputed Domain Name will mislead Internet users. No good faith use of the Domain Name is possible in view of the notoriety of the Complainant’s trademark, and any use of the disputed domain name by Respondent will create confusion. Previous panels have held that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (WIPO Case No. D2010-1318, L'Oreal SA v.张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd).
All these circumstances support a finding that the Domain Name is used in bad faith.
Consequently, in view of the above, the Complainant considers that it is established that Respondent both registered and used the disputed Domain Name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.
The Complainant asks for transfer of the Domain Name. B. Respondent
The Respondent offered no response to the Complaint. 6. Discussion and Findings
In order for a panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, 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.
The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits. A. Identical or Confusingly Similar
The Complainant’s evidence demonstrated extensive and longstanding use of the ELSEVE mark around the world. The Complainant has also shown relevant registered trademark rights, in France, where the Complainant is based.
The evidence also shows that the mark ELSEVE is uniquely associated with the Complainant. The Panel accepts that the ELSEVE trademark must surely qualify as well-known, and with a very strong reputation internationally. The ELSEVE mark will be instantly recognised in the Domain Name , notwithstanding that it is presented in lowercase with the accented “è”. The accent on the “e” is an insignificant difference. In any event, the Complainant has provided proof that it uses the mark itself, with the accent, as “Elsève”, so its mark is pronounced identically. The gTLD “.com” is of no relevance to the comparison of the mark and the Domain Name.
The Panel therefore finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has made no claims to any relevant prior rights of its own. Clearly, the Respondent is not itself known by the Domain Name, nor does the Respondent claim to have made any legitimate, noncommercial use of the Domain Name, although purportedly there was some supposed intention that the Domain Name might have been used for a site about products of natural sap (“la sève” in French – no explanation was offered as to why would ever have been thought appropriate for such purposes). The Complainant has affirmed that the Respondent was not authorized to register any domain name comprising the ELSEVE mark. Given the evident international notoriety of the Complainant’s mark, the Panel shares the view that it is very difficult, if not impossible, to imagine that any actual or contemplated bona fide or legitimate use of the Domain Name could be made without the Complainant’s approval.
In these circumstances, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the Domain Name and the requirements of paragraph 4(a)(ii) of the Policy are met. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following are examples of the sort of conduct (without limitation) which, if found, shall be considered as evidence of registration and use in bad faith:
“(i) circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] registered the 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) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online 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.”
The evidence in the Complaint shows that the Respondent made the first approach to the Complainant seeking to interest the Complainant in a possible transfer of the Domain Name, subject to a payment of EUR 500 to defray his alleged costs. The Respondent maintained this demand subsequently, whilst adding a threat that the Domain Name would be transferred to another party and/or put up for auction if the Complainant did not agree to this payment.
In the Panel’s experience, an amount of EUR 500for an essentially unused Domain Name would certainly be significantly in excess of the out-of-pocket costs likely to have been incurred for registration – probably of the order of at least 50x more than such costs. Of course, the EUR 500 is still less than the cost of preparing and filing a UDRP Complaint and, again to the Panel’s knowledge, it is commonplace for domainers and other unauthorised registrants of domain names to pitch their buyout costs high enough to still make a significant profit but low enough to make the real owners of relevant rights think twice about paying more to recover a domain name through the UDRP. The Panel believes that is exactly what the Respondent has attempted in the present case. Honourably, the Complainant declined to pay off the Respondent for his misappropriation of the Domain Name, and chose to pursue the case via the UDRP instead.
The Panel has no doubts that the Respondent, who is evidently fluent in French himself, would have been well aware of the Complainant’s rights in the ELSEVE name and mark at the time the Domain Name was registered. He might have expected the Complainant to contact him about the Domain Name then, but decided to make contact himself in 2013 when he had not been contacted (possibly because of the absence of an active website).
The Respondent has also not challenged the Complainant’s evidence and assertions regarding the number of similar prior disputes with a similar fact pattern involving IDN characters, including at least two where the Respondent appears to have been involved under other names.
In the Panel’s opinion, the evidence shows that the Respondent’s conduct has been consistent with, or analogous to, at least the examples in paragraphs 4(b)(i) & (ii) above. There has been an offer to sell the Domain Name for an inflated sum, and the Respondent appears to have engaged in a pattern of registrations of domain names with IDN characters, which he has also attempted to sell, and which have been held to have been made in bad faith in corresponding UDRP proceedings.
It has been observed that the Domain Name was not actively being used for a website. However, it is not clear whether or not there was any active email service using the Domain Name.
The consensus view in the UDRP Panel decisions has been that “[t]he apparent lack of so-called active use of the domain name […] does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2).
The Panel shares the consensus viewpoint.
If the Respondent had established a website (which consumers would reasonably have expected to originate from the Complainant), in the Panel’s view, it would inevitably have given a misleading and confusing impression as to the source, affiliation or endorsement of the Respondent’s website, and that such misuse would cause disruption and damage to the Complainant’s business.
The Panel also notes that the Respondent has not made any attempt to rebut the allegations made in the Complaint. The Respondent also appears to have sought to conceal its/his real identity and location. Inaccurate contact address details were evidently provided for the WhoIs records – the DHL courier instructed to deliver the hardcopy of the Complaint reported expressly that “The address and phone number are wrong”, and so the confirmation mail copy of the Complaint could not be delivered. . Such attempts at concealment, evasion and lack of proper identification are indicative of bad faith intent, and support the Complainant’s allegations in this case.
Overall, therefore, the Panel considers that the Domain Name was indeed registered in bad faith, and that there could be no good faith use without the Complainant’s authorisation.
Consequently, for the purposes of the Policy, the Panel concludes that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is met. 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.
Keith Gymer
Sole Panelist
Date: May 31, 2013
Full & Egal Universal Law Academy