Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Ba Nguyen Thu Thuy of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2016. On September 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2016 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. On September 9, 2016, the Center received an informal communication from an individual named “Hung Dinh Trong” stating that the individual was not the owner of the disputed domain name. On September 30, 2016 the Center received a further communication from the individual, stating that it had previously provided hosting services for the disputed domain name. No formal Response was filed with the Center.
The Center appointed Richard Hill as the sole panelist in this matter on October 7, 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
Complainant owns the International Trademark VICHY, No. 469251 registered on May 27, 1982, and renewed, designating inter alia Viet Nam, and covering goods in classes 3 and 5. The mark is widely known.
The disputed domain name was registered on October 17, 2011.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent used the disputed domain name to point to a website that gave the impression that it was an official site of Complainant (including by displaying Complaint’s logo) and that offered Complainant’s products. 5. Parties’ Contentions A. Complainant
Complainant states that it is a French industrial group specialized in the field of cosmetics and beauty. Created in 1909 by a French chemist named Eugène Schueller, Complainant is today one of the world’s largest groups in the cosmetics business. Present in over 130 countries with over 78,000 employees, it 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. It distributes consumer products under various brands among which L’Oréal Paris, Lancôme, Vichy, La Roche Posay or SkinCeuticals.
Further, says Complainant, it is the owner of the famous and distinctive brand name and registered trademark VICHY, well known for its long successful line of personal care products. The VICHY trademark was adopted and used continuously by Complainant and Complainant’s predecessor. Since 1931, Complainant has continuously marketed and sold its VICHY products. Vichy is the world leader in cosmetic skincare, available at 90,000 points of sale in more than 60 countries, including in Asia in general and in Viet Nam in particular. The mark VICHY is registered around the world, including in Viet Nam, with registrations dating back to 1982.
Complainant alleges that, when it detected the disputed domain name, it resolved to a website displaying information in Vietnamese on the VICHY products. This website also allowed commercial dealings of Complainant’s products. The disputed domain name was subsequently deactivated, then reactivated to point to a different website that also displayed information in Vietnamese on the VICHY products and allowed commercial dealings of those products.
According to Complainant, the disputed domain name is similar to its mark because it incorporates the mark in its entirety and adds the geographical term “Hanoi”. Complainant cites previous UDRP decisions to support its position.
Further, says Complainant, Respondent is not affiliated with Complainant in any way nor has it been authorized by Complainant to use its trademarks or to seek registration of any domain name incorporating said marks. Respondent did not demonstrate use of or demonstrable preparations to use the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name used to resolve to a website offering Complainant’s goods for sale and reproducing its visuals. The website at the disputed domain name contained the following text: “With over 15 years of sales of Vichy products, we are committed to all products sold are genuine goods imported from France.” This gives the false impression that Respondent is an authorized distributor of Complainant’s products. Additionally, due to the use of the logo VICHY, Internet users were likely to wrongly believe it was an official website. Such circumstances do not represent a use in connection with a bona fide offering of goods and services.
Complainant alleges that such use of the disputed domain name is an exploitation of the goodwill associated to a trademark in order to obtain revenue from the diversion of Internet traffic and as such constitutes a use in bad faith in the sense of the Policy. Complainant cites previous UDRP decisions to support its position. B. Respondent
Respondent did not submit a Response. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain consists of Complainant’s mark VICHY and of the geographical term “Hanoi”. Past UDRP panels have consistently determined that a domain name which consists of a trademark combined with a geographical term is confusingly similar to the mark in the sense of the Policy. See L’Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd,WIPO Case No. D2008 1640; L’Oréal v. Liao Quanyong,WIPO Case No. D2007-1552; Accor v. Serdar Ceylan,WIPO Case No. D2011-2231; and LeSportsac Inc. v. Zhao Zhao,WIPO Case No. D2012-2505.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. B. Rights or Legitimate Interests
Respondent is not commonly known by the disputed domain name. Respondent is not in any way affiliated with Complainant, nor authorized or licensed to use Complainant’s trademark. Respondent uses the disputed domain name to direct traffic to websites having falsely the appearance of official website. Thus Respondent is diverting consumers and opportunistically using the Complainants’ well-known trademark to attract Internet users to its illegitimate websites. Consequently, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. See Lancôme Parfums Et Beauté & Cie v. He peng,WIPO Case No. D2014-1944; and L’Oréal v. Privacy protection service - / Denis Mishin,WIPO Case No. D2015-1091.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. C. Registered and Used in Bad Faith
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s widely-known mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As noted above, Respondent uses the disputed domain name to direct Internet users to its website by creating an expectation that said website is a legitimate website associated with Complainant. Exploitation of the goodwill associated to a trademark in order to obtain revenue from the diversion of Internet traffic constitutes a use in bad faith. See the cases cited above. Further, using a domain name which is confusingly similar to another’s trademark in order to divert web traffic for commercial gain using the goodwill built up by the owner of the trademark or service mark constitutes bad faith use in the sense of the Policy. See Samsung Electronics Co., Ltd. v. Maksim,WIPO Case No. D2010-1274; L’Oréal v. Wen Tao,WIPO Case No. D2012-0521; Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065.
The Panel finds that Complainant has satisfied its burden of proof for this 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 name, be transferred to the Complainant.
Richard Hill
Sole Panelist
Date: October 10, 2016
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