The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Whois Privacy Protection Service by of Tokyo, Japan / Motoko Fujii of Saitama, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 8, 2016.
On April 6, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On April 8, 2016, the Complainant confirmed its request for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2016.
The Center appointed Masato Dogauchi as the sole panelist in this matter on May 19, 2016. 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
Whereas the Respondent has not submitted any contentions, the followings are found to be the factual background of this case.
The Complainant is a French industrial group specialized in the field of cosmetics and beauty, doing business in over 130 countries with over 78,600 employees. It has a portfolio of brands organized by distribution channel, and integrated industrial production.
GARNIER is a haircare and skincare brand of the Complainant. The Complainant has a wide variety of haircare and skincare products with the GARNIER mark in an international market.
The disputed domain name was registered by the Respondent on August 2, 2015.
The disputed domain name resolves to a page in Japanese selling cosmetic products of the Complainant's competitors, and containing links redirecting to these competitor's websites.
On August 14, 2015, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the transfer of the disputed domain name to the Complainant free of charge and to cease the use of the disputed domain name.
On August 19, 2015, the Respondent, Whois Privacy Protection Service by , replied and proposed in English as follows:
"We are managing the domain on behalf of our customer who is using our WHOIS privacy protection service. We are afraid that we can not disclose our customer's information unless we receive an official order from WIPO, courts, governmental agencies or law enforcement organizations in Japan.
If you would like to send a message to the domain's owner, we can forward it to our customer who is managing the domain name with us although we can not guarantee that you will receive a reply from the registrant or the administrative contact of the domain name."
On September 11, 2015, the Complainant requested that the Respondent, Whois Privacy Protection Service by , send its message to the underlying registrant of the disputed domain name,, and on the same date, the same Respondent advised that the message had been forwarded to its customer.
However, according to the Complainant, the Complainant has not received any response from the registrant Motoko Fujii. 5. Parties' Contentions A. Complainant
The Complainant asserts as follows:
The Complainant is the owner of the following trademark registrations:
- International trademark GARNIER, No. 248215, registered on October 7, 1961 (renewed) in classes 1, 2, 3, 5, 8, 21 and 26;
- International trademark GARNIER, No. 517465, registered on November 16, 1987 (renewed) in classes 35 and 42;
- International trademark GARNIER SKIN NATURALS, No. 1123431, designating inter alia Japan, registered on June 8, 2012 in class 3;
- International trademark GARNIER SKINACTIVE, No. 1236447, registered on December 11, 2014 in class 3.
In addition, the Complainant and its affiliates operate, among others, the following domain name reflecting its trademark in order to promote its services:
- registered on December 31, 1997.
The disputed domain name is identical or confusingly similar to the GARNIER mark. The disputed domain name differs from the Complainant's trademark only by the addition of the generic terms "pure" and "skin". These terms rather increase the likelihood of confusion since these terms are often associated with the Complainant's products. Consequently, the combination of these descriptive terms with the Complainant's trademark could induce Internet users into wrongly believing that the disputed domain name is endorsed by the Complainant.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since the website clearly shows online selling activities that are not agreed to by the Complainant.
The disputed domain name was registered in bad faith, since it is implausible that the Respondent was unaware of the Complainant's famous mark GARNIER when it registered the disputed domain name. Also the disputed domain name is being used in bad faith, since the disputed domain name resolves to a page in Japanese containing information on beauty products and skin care products which are similar to the Complainant's products and its field of activities. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Before discussing the merits of the case, the language of the proceeding shall be determined.
According to paragraph 11 of the Rules, the language of the administrative proceedings shall be the language of the registration agreement unless the Panel decides otherwise. The Registrar confirmed that the registration agreement in this case was in Japanese. However, the Panel determines that English is to be used as the language of the proceeding in this case on the following reasons:
- On August 14, 2015, the Complainant sent a cease-and-desist letter in English to the Respondent Whois Privacy Protection Service by , and received a reply in English.
- On April 6, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese, and the Respondent did not request for Japanese to be the language of proceeding;
- The disputed domain name contains the English words "pure" and "skin".
The use of English language in this case would not be a denial of justice to the Respondent, and the use of Japanese language would produce undue burden on the Complainant in consideration of the absence of the Respondent.
The Panel then proceeds to the determination of the merits.
According to the Rules, paragraph 15(a), a panel shall decide a case 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. Since the Respondent has not made any submission in this case, the following decision is rendered on the basis of the Complainant's contentions and other evidence submitted by the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has had rights in trademarks including the word "garnier" for many years.
The word "garnier" is found in the disputed domain name. The difference between the Complainant's trademark and the disputed domain name is that the latter has some additional matter, "", appended. The letters "pureskin" can easily divided into "pure" and "skin". These words attached to "garnier" give an impression that the website is authorized by the Complainant and is selling the Complainant's skincare products, since the Complainant has used the GARNIER mark in haircare and skincare markets for many years. The addition of the generic Top-Level Domain ("gTLD") ".com" does not have any impact on the overall impression of the dominant portion "garnierpureskin" and is therefore irrelevant in the determination of confusing similarity between the disputed domain name and the GARNIER mark.
Therefore, having considered the above differences, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The above requirement (1) provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests
The Respondent is not commonly known by the name "Garnier", in any way affiliated with the Complainant, nor authorized or licensed to use the GARNIER mark, or to register a domain name incorporating the mark. In addition, 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. On the contrary, the disputed domain name resolves to a website that contains links to competitors of the Complainant.
Since the Respondent did not reply to the Complaint in this proceeding, the Panel finds on the available record that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement (2) provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith
In consideration of the fame of the Complainant's trademark GARNIER, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the trademark at the time of the disputed domain name's registration on August 2, 2015. In addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name or other characteristics of the Respondent, there can be found no reasonable possibility of fortuity in the Respondent's use of the disputed domain name.
Furthermore, the Respondent is using the disputed domain name in order to resolve to a page in Japanese selling cosmetic products of the Complainant's competitors and containing links redirecting to these competitor's websites, which is evidence of bad faith use as per paragraph 4(b)(iv).
In addition, the Panel notes that the Respondent registered the disputed domain name using a privacy protection service. A privacy shield service is provided in order to hide the identity of the registrant. The use of a privacy service may be a further evidence of bad faith under certain circumstances.
Finally, the Respondent did not reply to the Complainant's cease-and-desist letter, further supporting evidence of the Respondent's bad faith.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement (3) provided for in the paragraph 4(a)(iii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied. 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.
Masato Dogauchi
Sole Panelist
Date: May 27, 2016
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