The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Robert Caceres, Dollarviews of Santo Domingo, Dominican Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2015. On July 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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.
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 July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 24, 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
L’Oréal is one of the world’s largest company in the cosmetics business. Present in over 130 countries with over 77, 400 employees, L’Oréal creates and distributes products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances. It is present and successful in every continent.
The Complainant and its L’OREAL trademark enjoy a worldwide reputation. The Complainant owns numerous trademark registrations around the world for L’OREAL. The Complainant also owns various domain names, including: created on October 24, 1997.
According to the Complainant, at the time of filing the Complaint the disputed domain name was displaying several videos with pornographic content.
The disputed domain name was registered on October 22, 2014. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark L’OREAL because the disputed domain name substantially reproduces the Complainant’s trademark in its entirety which previous UDRP panels have considered to be “well-known” or “famous”.
The Complainant states that the absence of an apostrophe between the letter “l” and the letter “o” and the absence of the accent on the “e” letter in the disputed domain name including the trademark L’OREAL do not have any impact on the confusing similarity. The Complainant also asserts that the addition of the generic term “fb” increases the risk of confusion because Internet users are likely to wrongly believe that the disputed domain name is linked to the social network of L’OREAL on Facebook. The Complainant adds that when a search via Google or on any other search engines is performed using the keywords “loreal fb” composing the domain name, it is to be noted that all the first results are linked to the Complainant’s presence on Facebook.
According to the Complaint, the Respondent has no prior rights or legitimate interests in the disputed domain name and the registration of the L’OREAL trademark preceded the registration of the disputed domain name for years. The Complainant also adds that the disputed domain name is so identical to the famous trademark L’OREAL of the Complainant, that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
In addition, the Complainant states that the Respondent is not commonly known by the name “L’OREAL”, nor is in any way affiliated with the Complainant, nor authorized or licensed to use the “L’OREAL” trademark, or to seek registration of any domain name incorporating said trademark. The Complainant also states that the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. According to the Complaint, the Respondent was using the disputed domain name to display videos with pornographic content. The Complainant concludes that this behavior constitutes “porno-squatting” which cannot be considered as a legitimate use of the disputed domain name.
With respect to bad faith registration, the Respondent states that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. According to the Complaint, this is because the Complainant is well-known throughout the world, including Dominican Republic where the Respondent is located. Past UDRP panels have underlined the notoriety of the Complainant and its trademark L’OREAL making it unlikely that the Respondent was not aware of the Complainant’s rights in said trademark.
With respect to bad faith use, the Complainant argues that the disputed domain name is used as a frameset to resolve to a page displaying pornographic videos. The Complainant argues that prior UDRP panels have considered that using a domain name which is confusingly similar to a well-known trademark for pornographic services, is evidence of the use and the registration of the disputed domain name in bad faith. It is clear that the Respondent is using the Complainants’ mark to attract Internet users to its websites for commercial gain and to harm the reputation of the trademark L’OREAL. Consequently, porno-squatting constitutes a case of registration and use in bad faith as the decisions of many panels have established.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
There being no Response the Panel proceeds to decide this Complaint in relation to the Complaint and Complainant’s submissions only in accordance with paragraph 14(a) of the Rules. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in L’OREAL as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The disputed domain name is confusingly similar to the Complainant’s mark L’OREAL.
The addition of the term “fb” and the generic Top-Level Domain suffix “.net” does not change this finding. These elements are insufficient to distinguish the disputed domain name as referring to an entity other than the Complainant.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests in this case. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1).
The Respondent is using the disputed domain name in order to provide pornographic services which does not constitute an example of rights and legitimate interests as per paragraph 4(c) pf the Policy.
The Respondent has failed to show that it has any rights in respect of the disputed domain name in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainant’s trademarks are famous, and have evidently been known to the Respondent when registering the disputed domain name. The disputed domain name is highly unlikely to have been registered if it were not for the Complainant’s trademarks. In this respect, see L’Oréal v. Vitaly P Pak,WIPO Case No. D2013-0291; L’Oréal v. Wen Tao,WIPO Case No. D2012-0521; L’Oreal v. Rampe Purda/Privacy-P,WIPO Case No. D2010-0870 (all decisions recognizing L´OREAL as a well-known trademark).
In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainants’ rights in the L’OREAL trademark when it registered the disputed domain name, since the Complainant’s trademark is a widely and well-known trademark.
The Panel also considers that using a domain name that is confusingly similar to a well-known trademark for pornographic services is evidence of use and registration of the disputed domain name in bad faith (see Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187 and Levantur S.A. v. Soluciones Ferreira,WIPO Case No. D2007-1640).
Therefore, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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.
Pablo A. Palazzi
Sole Panelist
Date: August 31, 2015
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