The Complainant is L'Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Adem Atalayin of Izmir, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with Reg2C.com Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 25, 2015, 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. On March 3, 2015, the Center sent the language of proceedings communication in both Turkish and English. The same day, the Complainant requested English to be the language of proceeding, to which the Respondent has not replied.
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 March 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2015. The Center received an email communication from Mr. Ili on March 16, 2015 and two email communications from Mr. Tuncay on March 16 and March 17, 2015. The Center did not receive any formal response from the Respondent.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 20, 2015. 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 is one of the world's largest companies in the field of cosmetic and beauty. The Complainant markets various beauty products (i.a., hair color, skin care, sun protection, make-up, perfumes and hair care ones) and is active also in the dermatological and pharmaceutical fields.
The Complainant is the owner of the registered trademarks L'OREAL and MAYBELLINE as well as numerous other trademarks consisting of or including the signs L'OREAL and MAYBELLINE in several classes in many countries, including Turkey. A list of these trademark registrations was attached to the Complaint.
The Complainant is also the owner of domain names which incorporate its trademarks, a list of which was also attached to the Complaint.
The Respondent registered the disputed domain names and on May 24, 2011. The Panel visited the disputed domain names on May 3, 2015, and observed that the disputed domain name is used in connection with an online shopping website offering the Complainant's products as well as certain consumer electronics unrelated to the Complainant, whereas resolves to a website which states that an e-commerce website "prestashop" will be in service soon. 5. Parties' Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain names be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant asserts that the disputed domain names are confusingly similar to its well-known trademarks MAYBELLINE and L'OREAL as they incorporate the whole of Complainant's MAYBELLINE and L'OREAL trademarks. The Complainant states that the addition of a geographical term "Turkiye" and the addition of a generic Top-Level Domain ("gTLD"), ".com" does not affect the confusing similarity. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not a licensee, authorized agent of the Complainant nor its Turkish subsidiary or in any other way authorized to use Complainant's trademarks MAYBELLINE and L'OREAL. Further, the Complainant asserts that there is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the disputed domain names.
The Complainant asserts that the fact that the disputed domain names are connected to websites where the Complainant's trademarks are featured prominently, demonstrates that the Respondent did not intend to use the disputed domain names in connection with any legitimate purpose and their use cannot be certainly considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent is gaining from the sales of the products promoted on the websites.
Further, the Complainant submits that the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Complainant asserts that the site is not used to sell only the trademarked goods, the site does not adequately disclose the Respondent's relationship with the trademark holder.
The Complainant notes that MAYBELLINE and L'OREAL are invented words, with no meaning in foreign languages and "as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant". Registered and Used in Bad Faith
The Complainant contends that the trademarks MAYBELLINE and L'OREAL are certainly well-known worldwide and that the Respondent was undoubtedly aware of the existence of the Complainant's trademark registrations and of the fact that the disputed domain names were confusingly similar when they were registered. As further proof of prior knowledge, the Complainant submits that (i) the Respondent registered domain names containing two different trademarks belonging to the Complainant on the same day, (ii) the websites corresponding to the disputed domain names feature/featured the Complainant's trademarks prominently, and (iii) products bearing the trademarks are/were promoted.
The Complainant asserts that the disputed domain names are used in connection with websites publishing the Complainant's trademarks, offering for sale/promoting unauthorized products bearing Complainant's trademarks and third parties' distinctive signs, and that the Respondent is thus using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the endorsement of Complainant's websites and to take unfair advantage from the well-known character of the trademarks for the Respondent's personal profit. B. Respondent
The Respondent did not submit a formal response to the Complainant's contentions. Email communications were received from Idris Tuncay using the registrant's email address. 6. Discussion and Findings 6.1. Language of the Proceedings
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Turkish.
The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. Although Idris Tuncay stated in his email communication that he does not speak English, he also stated that he read the files sent to him by the Center and he responded to the Complainant's contentions. Therefore the Panel is of the opinion that he was able to understand the Complaint. Further, the Respondent has been notified of the proceedings both in Turkish and English and he has not submitted a formal response or any comments in this regard despite having been given the opportunity.
In these circumstances, and taking into account the Respondent's default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceedings be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L,WIPO Case No. DRO2006-0001.
Therefore, the Panel has decided to accept the Complainant's filings in English and issue a decision in English. 6.2. Substantive Elements of the Policy
Despite being notified of the proceedings in Turkish, the Respondent has failed to submit a formal response. As the Respondent has not filed a response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademarks L'OREAL and MAYBELLINE as evidenced in the annexes to the Complaint.
The Panel is of the opinion that the addition of the geographical indicators, such as "turkiye", which means Turkey in Turkish, does not negate the confusing similarity between the Complainant's trademarks and the disputed domain names. "On the contrary, the nature of the generic terms used would tend to reinforce consumers' erroneous conclusion that the websites to which the disputed domain names resolve are somehow legitimately included in the supply and service system established by the Complainant", Aktiebolaget Electrolux v. Ibrahim Yurtcu,WIPO Case No. D2013-0796.
The Panel further finds that the addition of gTLDs such as ".com", ".org" or ".net" may be disregarded when determining whether the disputed domain names are confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941. The Panel recognizes the Complainant's trademark rights and concludes that the disputed domain names are identical and confusingly similar with the Complainant's L'OREAL and MAYBELLINE trademarks.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o ,WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that (i) the Respondent is not a licensee, authorized agent of the Complainant nor its Turkish subsidiary or in any other way authorized to use Complainant's trademarks MAYBELLINE and L'OREAL, (ii) there is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services, (iii) the Respondent is not commonly known by the disputed domain names, (iv) the Respondent did not intend to use the disputed domain names in connection with any legitimate purpose and their use cannot be certainly considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent is gaining from the sales of the products promoted on the websites.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain names. The Panel accepts that the Respondent is not commonly known by the disputed domain names and the Respondent has acquired no trademark or service mark rights.
Pursuant to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in order for a reseller to be regarded as having a legitimate interest in registering a domain name which incorporates the complainant's trademark, (i) the respondent should actually be offering the complainant's goods or services via the website attached to the disputed domain name, (ii) the respondent must use the site to sell only the trademarked goods, (iii) the site must accurately disclose the respondent's relationship with the trademark owner and (iv) the respondent should not try to corner the market in domain names which incorporate the complainant's trademark.
In this case, one of the disputed domain names resolve to a website in Turkish that offers the Complainant's products and contains the Complainant's trademarks as well as unrelated third party products, which shows that the Respondent clearly suggests a business relationship with the Complainant. Taking into consideration the fact that the website is not used to sell only the trademarked goods and that the website does not adequately disclose the Respondent's relationship with the Complainant the Panel finds that the Respondent does not qualify under the criteria laid down above in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
With respect to , the fact that the disputed domain name resolves to a website which states that an e-commerce website "prestashop" will be in service soon and the fact that both domain names were registered on the same day are strong indicators that the Respondent is planning to use this domain name in a similar manner as .
Therefore, the Panel finds that websites associated with the disputed domain names are commercial websites used (or will be used) for the promotion of products offered by the Respondent and that there is no intention of legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain or to misleadingly divert consumers.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent did not submit a response. In light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a 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 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 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.
The Complainant's trademarks L'OREAL and MAYBELLINE were registered and used before the Respondent's registration of the disputed domain names and the reputation of the Complainant's trademarks L'OREAL and MAYBELLINE in the field of cosmetic and beauty products is clearly established. Further, the Respondent's website associated with the disputed domain name contains the Complainant's trademarks and other copyright material such as products images. Therefore, the Respondent was aware of the Complainant's trademark L'OREAL at the time the disputed domain name was registered. The fact that the disputed domain name was registered on the same day is a further inference that the Registrant was well aware of the Complainant's trademarks at the time of registration. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that the actual knowledge of the Complainant's trademarks at the time of registration of the disputed domain names is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
Additionally, the Respondent's website uses the Complainant's trademarks in connection with offering the Complainant's products, which suggests that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites and other online location, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites.
After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy. 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 names and be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: May 5, 2015
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