The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Noorinet of Gyeongsangbuk-do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name ("Disputed Domain Name") is registered with Megazone Corp., dba HOSTING.KR (the "Registrar"). 3. Procedural History
The Complaint, submitted in English, was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2015. On April 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 28, 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 April 28, 2015, the Center sent a notification to the Parties stating that the language of the Registration Agreement for the Disputed Domain Name was Korean, and invited the Complainant to provide evidence of an agreement between the Complainant and the Respondent that the proceeding should be in English; or, submit the Complaint translated into English; or, submit a request that English be the language of proceeding. The Complainant submitted a request that English 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 in both English and Korean, and the proceeding commenced on May 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2015.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 17, 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, L'Oreal, is a French based cosmetics and beauty business. Established in 1909, it is one of the world's leading cosmetics companies with businesses in 130 countries and over 77,400 employees around the world. It creates and distributes products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances.
The L'Oreal brand is marketed in the Republic of Korea. The Complainant also has a local subsidiary and R&D test center in the Republic of Korea.
The Complainant and its L'OREAL trademark enjoy a worldwide reputation, particularly in the Republic of Korea. The Complainant owns numerous trademark registrations around the world, including:
L'OREAL, Republic of Korea Trademark Registration No. 356348, dated of February 14, 1997, in class 3;
L'OREAL, Republic of Korea Trademark Registration No. 358570, dated of March 24, 1997, in classes 21 and 3;
L'OREAL, United States Trademark Registration No. 0661746, dated of June 5, 1956, in class 3; and
L'OREAL, United States Trademark Registration No. 0540541, dated of April 3, 1951, in class 3;
The Complainant also owns various domain names, including: created on October 24, 1997, created on May 14, 1999.
The Respondent, Noorinet, of Gyeongsangbuk-do, Republic of Korea, registered the Disputed Domain Name on November 19, 2008.
The Disputed Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant alleges that before starting the present proceeding, it made efforts to resolve this matter amicably. Specifically, the Complainant alleges that on February 26, 2015, it mailed and emailed a cease-and-desist letter to the Respondent requesting that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent did not reply.
The Complainant also alleges that the Respondent has attempted to sell the Disputed Domain Name. Specifically, the Complainant alleges that the Disputed Domain Name used to resolve to a page announcing the Disputed Domain Name was offered for sale.
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant for the following reasons:
First, the Complainant contends that the Disputed Domain Name is identical or at least confusingly similar to the Complainant's trademark L'OREAL. Specifically, the Complainant contends that the Disputed Domain Name (i) substantially reproduces the Complainant's trademark in its entirety which previous UDRP panels have considered to be "well-known" or "famous" (L'Oreal v. Vitaly P Pak,WIPO Case No. D2013-0291), and (ii) the exclusion of an apostrophe between the letters "L" and "O" do not have any impact on the likelihood of confusion. Moreover, the Complainant contends that the inclusion of the term "shop" increases the risk of confusion because Internet users are likely to wrongly believe that the Disputed Domain Name is linked to the online store of L'OREAL products. Finally, the Complainant contends that the extension ".com" is irrelevant to avoid a finding of confusing similarity.
Second, the Complainant contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. Specifically, the Complainant contends that the Disputed Domain Name is so identical to the famous trademark L'OREAL that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Disputed Domain Name. Furthermore, the Complainant contends that the Respondent is not commonly known by the name "L'Oréal" nor authorized or licensed to use the L'OREAL trademark. Moreover, the Complainant contends that the Respondent did not demonstrate use of, or demonstrable preparation to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. Finally, the Complainant contends that the Respondent has previously attempted to sell the Disputed Domain Name, has engaged in a cybersquatting pattern of conduct involving other domain name disputes, and never answered the Complainant's cease-and-desist letters.
Third, the Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant contends that the Respondent registered the Disputed Domain Name in bad faith because it is implausible that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name. The Complainant contends that the Complainant is well-known throughout the world, including in the Republic of Korea where the Respondent is located. Moreover, the Complainant contends that the fact that the Respondent seems to have engaged in a cybersquatting pattern is also a sign that the Disputed Domain Name has been registered in bad faith.
The Complainant contends that the Respondent is using the Disputed Domain Name in bad faith for a variety of reasons. One, the trademark L'OREAL has a strong and long-lasting reputation and is famous and widely known worldwide and in the Respondent's country. Two, no possible good faith use of the Disputed Domain Name is possible in view of the reputation of the Complainant's trademark. Three, any use of the Disputed Domain Name by the Respondent will create confusion. Four, the Respondent never replied to the Complainant's cease-and-desist letter, despite several email reminders. Five, the Respondent appears to be a cyber-squatter that has engaged in a pattern of conduct of registering domain names reproducing famous trademarks. Six, it is likely that the Respondent registered the Disputed Domain Name to prevent the Complainant from using its trademark in the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. Here, the Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;
2) The Respondent has not indicated any language preference;
3) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should the Complainant be required to re-submit the Complaint in Korean; and
4) All of the Center's communications to the Parties have been transmitted in both English and Korean.
Furthermore, the Panel is mindful of the fact that a decision in Korean would not be readily comprehensible by the Complainant and would therefore likely require it to expend resources to translate the same.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has sufficiently established trademark rights in the term "L'Oréal". It is clear to the Panel that the Disputed Domain Name, consisting of the Complainant's trademark, with the absence of an apostrophe between the letters "L" and "O", and the addition of a generic suffix "shop", is confusingly similar to the Complainant's trademark. See, e.g. F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694 ("confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark and only adds a generic word ….").
The word "shop" is generic, and the addition of the word only serves to increase the confusing similarity with the L'OREAL trademark as the Complainant's products are frequently sold in stores and on-line shops.
The addition of a Top-Level Domain (TLD) such as ".com" after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark. C. Rights or Legitimate Interests
Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Nonetheless, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
The Respondent registered the Disputed Domain Name on November 19, 2008 — long after the L'OREAL trademark had become famous and distinctive. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its L'OREAL trademark. See Audi AG v. Mike Gillespie, Gillespie Auto Group,WIPO Case No. D2007-1850. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Moreover, the evidence shows that the Disputed Domain Name does not resolve to an active website. The Complainant also contends that the Disputed Domain Name used to resolve to a website in which it was offered for sale.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. D. Registered and Used in Bad Faith
The Panel will deal with the issue of bad faith registration and bad faith use separately below.
First, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark may suggest bad faith. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319. Given the undisputed facts, the Panel finds it highly doubtful that the Respondent, which has no relationship to the L'OREAL trademark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the L'OREAL trademark. The reasonable conclusion to draw is that the Respondent deliberately sought to attract some of the Complainant's customers to the Respondent's website for commercial gain and/or to disrupt the business of the Complainant, e.g., offering to sell the Disputed Domain Name.
Bad faith can also be inferred based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto. Indeed, it has been established that the registration of a domain name incorporating a well-known trademark can in specific curcumstances constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of was unaware of the complainant's well-known NIKE trademark when registering the domain name).
Several prior UDRP decisions have held that the L'OREAL mark is well-known, including, e.g., L'Oreal v. Vitaly P Pak, supra. Given the notoriety of the L'OREAL trademark, the Panel finds that it is implausible that the Respondent was unaware of the Complainant's trademark rights when registering the Disputed Domain Name. Consequently, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
Second, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.
The record shows that the Disputed Domain Name does not resolve to an active website. The Complainant contends that the Disputed Domain Name used to resolve to a website offering it for sale. Accordingly, the Panel finds that the Respondent sought to take advantage of the similarity between the Disputed Domain Name and the Complainant's distinctive and well-known L'OREAL trademark, for commercial advantage (e.g., offering to sell the Disputed Domain Name) and/or to disrupt the Complainant's business. As mentioned above, the Respondent has no connection whatsoever to the L'OREAL trademark. Thus, it is the Panel's opinion that the Respondent must have been aware of the L'OREAL trademark and intentionally attempted to use it for commercial gain and/or to disrupt the business of the Complainant.
Finally, the Complainant has provided convincing evidence that the Respondent has been involved in a pattern of abusive registration and cybersquatting. Indeed, an online search shows that the Respondent has registered many domain names incorporating famous and distinctive trademarks such as: SAMSUNG, AUDI and MICROSOFT. The Panel thus accepts that this constitutes a "pattern of conduct" of both the registration and use of a domain names to prevent the owner of that name, trademark or service mark from reflecting that name or mark in a corresponding domain name.
The Panel therefore finds that the Respondent's conduct is evidence of bad faith and that the Complainant has satisfied paragraph 4(a)(iii) 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 Name be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: July 2, 2015
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