The Complainants are L’Oréal and YSL Beauté of Paris, France and The Body Shop International PLC of West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Dreyfus & associés, France.
The Respondents are Zhao Ke and Yeli of Shanghai, China and Lishui, Zhejiang, China respectively. 2. The Domain Names and Registrars
The disputed domain names , , , and (the “Disputed Domain Names”) are registered with Hangzhou E-Business Services Co., Ltd. and Hangzhou AiMing Network Co., LTD (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 18 and July 22, 2013, the Registrars transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On July 22, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 23, 2013, the Complainants confirmed their request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified 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 Respondents of the Complaint, and the proceedings commenced on July 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 19, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on August 27, 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 facts pertinent to the decision in this case are:
(i) The Complainants are the owners of several well-known trademarks in many countries; inter alia:
a. Complainant YSL Beauté is the owner of the trademark YSL BEAUTE, French Trademark No. 3007402, registered on February 10, 2000.
b. Complainant L’Oréal is the owner of the trademark INOA, Community trademark No. 7534308, filed on January 19, 2009.
c. Complainant L’Oréal is the owner of the trademark VICHY, French Trademark, No. 95565058, registered on March 27, 1995.
d. Complainant The Body Shop International PLC is the owner of the trademark of THE BODY SHOP, French Trademark, No. 1200089, registered on March 31, 1982.
(ii) The Disputed Domain Names , , , and were registered on June 29, 2011; March 16, 2011; March 15, 2011; March 15, 2011; and March 27, 2011, respectively. 5. Parties’ Contentions A. Complainants
The Complainants’ contentions can be summarized as follows:
(i) The Disputed Domain Names are identical or confusingly similar to the registered trademarks of the Complainants.
The Disputed Domain Names , and contain the Complainants’ trademarks INOA, THE BODY SHOP and VICHY, respectively, in their entirety; while the Disputed Domain Names and contain the elements almost identical to the Complainant YSL Beauté’s trademark YSL BEAUTE. The incorporation of the additional terms “us” and “usa” does not assist to distinguish the Disputed Domain Names from the Complainants’ trademarks.
(ii) The Respondents have no rights or legitimate interests in the Disputed Domain Names.
The Complainants have never authorized nor otherwise licensed the Respondents to use the Complainants’ trademarks. The Respondents have been using the web sites to which the Disputed Domain Names resolve to direct Internet users to parking pages in which different sponsored links exist, which does not constitute a bona fide offering of goods or services.
(iii) The Disputed Domain Names were registered and are being used in bad faith.
The Complainants’ trademarks are well-known around the world. Thus, it is highly unlikely that the Respondents were not aware of the existence of the Complainants’ trademarks and reputation at the time of registering the Disputed Domain Names. Besides, the Disputed Domain Names resolve to parking pages generating sponsored links. The Disputed Domain Names therefore were registered and are being used for the purpose of attracting Internet users for commercial gain and encouraging them to click those sponsored links. B. Respondents
The Respondents did not reply to the Complainants’ contentions. 6. Preliminary procedural issues A. Language of Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The languages of the Registration Agreements for the Disputed Domain Names are all Chinese. The Complainants requested, in an email dated July 23, 2013 to the Center, that the language of the proceeding be English. The Complainants raised the following arguments to support their request: First, the language of the administrative proceeding should be English due to the fact that the Respondents have chosen to register the Disputed Domain Names with elements of “us” and “usa” where English is the official language. Second, the Complainants are not familiar with Chinese due to their nationality and the place of their registered office.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Panel notes the following facts:
(i) The Respondents’ web sites at the Disputed Domain Names appear to contain sponsored links in the English language and links which direct Internet users to webpages that sell the Disputed Domain Names and accept EURO as the currency for payment, which indicates that the Respondents’ attempts to sell the Disputed Domain Names are not exclusively directed to Chinese speakers. The Panel is therefore satisfied that the Respondents are familiar with the Complainants’ requested language.
(ii) The Panel notes that all the Center’s communications to the Respondents were made in both Chinese and English and that the Respondents were given the opportunity to object to the Complainants’ request that English be the language of proceeding. The Respondents were also advised that, in the absence of any response from the Respondents, the Center would proceed on the basis that the Respondents have no objection to the Complainants’ request that English be the language of proceeding. The Panel finds that the Respondents have been given a fair opportunity to object, and have not done so.
(iii) The Panel finds that the Complainants are not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(iv) The Respondents have shown no interest in responding and requiring the Complainants to translate the Complaint into Chinese will cause unnecessary delay to the proceedings.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English. B. Consolidation Consolidation of Multiple Complainants
The Complaint has been filed by three distinct entities. While the Complainant L’Oréal is the trademark owner of the INOA and VICHY trademarks, the Complainant YSL Beauté is the trademark owner of YSL BEAUTE; and The Body Shop International PLC owns the registration for THE BODY SHOP trademark.
According to the paragraph 4.16 of WIPO Overview 2.0: “In order for the filing of a single complaint brought by multiple complainants […], such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met”. These criteria require the complainants to demonstrate that: “(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation”.
In the present case, the Complainants have alleged that they have a common grievance against the Respondents, resulting from the registration of the Disputed Domain Names. The Panel notes that the Disputed Domian Names all resolve to webpages generating sponsored links in a similar fashion. The Panel also notes that the Complainants have submitted that they have common interest due to the fact that the Complainant YSL Beauté and The Body Shop International PLC are subsidiaries of the Complainant L’Oréal, and all of the Complainants are conducting business closely.
Accordingly, the Panel agrees that consolidation of these multiple Complainants in this Complaint is appropriate in this case. Consolidation of Multiple Disputed Domain Names and Respondents
Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Rules provides that “a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” It is established that the consolidation of multiple disputed domain names under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named disputed domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve. Common control has been found by UDRP panel based on commonalities, such as shared administrative or technical contacts and shared postal or email addresses in registrant information, or other circumstances in the record indicating that the respondents are related, and also, substantially identical content of the websites to which multiple disputed domain names resolve (See paragraph 4.16 of WIPO Overview 2.0; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281; Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659).
In the present case, the Panel finds that the Complainants have established that the Disputed Domain Names are subject to the common ownership or control of the Respondents based on the following facts:
(i) The registrants of all of the Disputed Domain Names at the time of registration were all the same person, i.e. the Respondent Zhao Ke. The registrant of the Disputed Domain Name was later changed to the Respondent Yeli (See Annex 6c to the Complaint provided by the Complainants).
(ii) It is apparent from previous UDRP decisions, that the Respondents Zhao Ke and Yeli, though being nominally different persons or entities, have a history of conducting the same pattern of behavior which is substantially identical to this present case, i.e., registering domain names that incorporate third party’s famous trademarks, and attempting to sell the domain names while displaying sponsored links in webpages to which those domain names resolve. The previous UDRP panels have concluded that the Respondents Zhao Ke and Yeli are either acting as the same person or under control of a single individual or entity and therefore found those domain names are subject to the common ownership or control of Zhao Ke and Yeli (See Guccio Gucci S.p.A. v. Zhao Ke / Yeli / Corporate Domains, Inc / Li Ye,WIPO Case No. D2012-0357; Zino Davidoff SA v. Ye Li, Li Ye,WIPO Case No. D2010-1722).
(iii) The content of the Disputed Domain Names contain substantially identical webpages generating sponsored links and advertisements, as well as links that direct Internet users to webpages that sell the Disputed Domain Names at the same price of EUR 6,200.
(iv) The Panel further notes that the Complainants’ claims respecting all of the Disputed Domain Names involve common questions of law and fact.
In light of these facts, the Panel finds that consolidation of the Disputed Domain Names involving the multiple Respondents would be procedurally efficient and will avoid unnecessary duplication of time, effort and expense, thus furthering the fundamental objectives of the Policy.
Accordingly under the specific circumstances of this case, the Panel concludes that the consolidation of multiple Disputed Domain Names and the multiple Respondents in this single administrative proceeding is appropriate under paragraph 3(c) or 10(e) of the Rules. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”.
The Complainants have produced registration certificates of the trademarks herein establishing that the Complainants are the owners of the YSL BEAUTE, INOA, VICHY and THE BODY SHOP trademarks and are entitled to act in order to recover and register the Disputed Domain Names. Therefore, the Panel finds that the Complainants have rights in the YSL BEAUTE, INOA, VICHY and THE BODY SHOP trademarks sufficient to file this UDRP Complaint.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is generally sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive or geographical terms to the disputed domain name typically does not sufficiently differentiate the disputed domain name from the trademark (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534; Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, see also the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, a hyphen serving as a link between a distinctive trademark and a non-distinctive element added to the disputed domain name is not sufficient to differentiate the disputed domain name from the trademark either (Moncler S.R.L. v. Zheng Little,WIPO Case No. D2012-2120). Also, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the Top-Level Domain (for example, “.com” and “.net”) may be disregarded. (GA Modefine SA v. Yonghui Huang,WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194).
Further, numerous UDRP panels have held that domain names containing trademarks in which some letters have been misspelled, interchanged or replaced with a phonetically similar letter in order to create confusion in the minds of users are confusingly similar trademarks for the purpose of the Policy (see Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo,WIPO Case No. D2003-0707; Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., StonybrookInvestments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587).
The Disputed Domain Names , and incorporate the distinctive portion of INOA, VICHY and THE BODY SHOP trademarks respectively in their entirety and add non-distinctive descriptive geographical indicators (either “usa” or “us”). The hyphen contained in the Disputed Domain Names and is not sufficient to differentiate the Disputed Domain Names from the Complainants’ trademarks INOA and VICHY. The INOA, VICHY and THE BODY SHOP elements are still immediately recognizable as the Complainants’ trademarks. The Panel finds that the Disputed Domain Names , and are identical or confusingly similar to the trademarks in which the Complainants have rights.
As for the Disputed Domain Names and , the deliberate misspelling of the Complainant YSL Beauté’s trademark YSL BEAUTE to “yslbeauty” is not sufficient to distinguish the Disputed Domain Names from the Complainant YSL Beauté’s trademark YSL BEAUTE. The Panel finds that the Disputed Domain Names and are both confusingly similar to the Complainant YSL Beauté’s trademark YSL BEAUTE.
Accordingly, the Panel finds that all of the Disputed Domain Names are confusingly similar to the Complainants’ trademarks and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial 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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Paragraph 2.6 of WIPO Overview 2.0 summarizes the consensus view of UDRP panels regarding whether parking and landing pages generate rights or legitimate interests in the disputed domain name, whereby: “[…] By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion”.
In the present case, the Complainants have established their ownership of YSL BEAUTE, INOA, VICHY and THE BODY SHOP trademarks. The Complainants state that the Respondents have never received any authorization or license to use the Complainants’ trademarks in the Disputed Domain Names or otherwise.
The Disputed Domain Names resolve to parking sites generating sponsored search results in connection with goods or services that compete with those of the Complainants such as advertisements regarding cosmetics and perfume products. The Respondents are obviously exploiting the goodwill of the Complainants’ trademarks to mislead the consumers to the web sites under the Disputed Domain Names for commercial gain.
Furthermore, the Panel notes that the registrants of the Disputed Domain Names are “Zhao Ke” and “Yeli”, and there is no evidence in the record to suggest that the Respondents might be commonly known by any names similar to the Disputed Domain Names. There is no evidence that the Respondents have any trademark or service mark rights in the Disputed Domain Names.
The Panel finds that the Complainants have made a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Names. The burden of production then shifts to the Respondents to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondents did not provide any allegation or evidence indicating that they have rights or legitimate interests in the Disputed Domain Names; therefore, it is reasonable to conclude that the Respondents deliberately chose to include the Complainants’ trademarks in the Disputed Domain Names for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the websites at the Disputed Domain Names and that such use cannot be considered a bona fide offering of goods or legitimate noncommercial or fair use.
Having considered the above, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or [it has] acquired the 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 that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name[.]”
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
In relation to bad faith at the time of registration, the Panel notes that the Complainants’ trademarks have been registered in many countries around the world and were well-known in many countries prior to the registrations of the Disputed Domain Names in 2011. The Respondents’ choice to incorporate the identical or confusingly similar elements of YSL BEAUTE, INOA, VICHY and THE BODY SHOP as the primary distinctive elements of the Disputed Domain Names suggests that the Disputed Domain Names were registered in bad faith and the subsequent use of the Disputed Domain Names to resolve to parking sites displaying sponsored search results in connection with goods or services that compete with those of the Complainants further shows that the Complainants’ trademarks were chosen for the Disputed Domain Names in bad faith. The Respondents did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Names were registered in bad faith.
In relation to use in bad faith, the Panel notes that the Disputed Domain Names resolve to parking sites with automatic generated sponsored links. Some of these links are in connection with goods or services that compete with those of the Complainants such as cosmetics and perfume products and the Respondents obtain commercial revenue by attracting Internet users to click those sponsored links. Therefore, the Panel finds that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ web sites by creating a likelihood of confusion as per paragraph 4(b)(iv). Further, there is also a link in the web sites to which each of the Disputed Domain Names resolves directing Internet users to web pages that attempt to sell the Disputed Domain Names at the price of EUR 6,200. The Panel finds that the Respondents registered the Disputed Domain Names for the purpose of selling them for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the Disputed Domain Names as per paragraph 4(b)(i). Therefore, the Panel finds that the Disputed Domain Names are being used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the Complainants fulfill the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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 Names , , , and be transferred to the Complainants.
Peter J. Dernbach
Sole Panelist
Date: September 4, 2013
Full & Egal Universal Law Academy