Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Contact Privacy Inc. Customer 0141509155 of Toronto, Canada / Sasan Amirhoseyni of North York, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2016. On September 23, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On September 23, 2016, the Registrar transmitted by e‑mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on September 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 3, 2016.
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 Respondent of the Complaint, and the proceedings commenced on October 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2016. Respondent e-mailed the Center on October 5, 2016, October 7, 2016, October 8, 2016, and October 10, 2016. The Center asked if Respondent’s communications could be regarded as the complete Response. Respondent confirmed the Response was complete on October 10, 2016. Accordingly, on October 11, 2016, the Center notified the Parties that it would commence the Panel Appointment Process. The Center received further e-mail communications from Respondent on October 11, 2016, October 13, 2016, and October 17, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 13, 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 is one of the world’s leading manufacturers of cosmetics and related health and beauty products. For decades, Complainant has made and sold products under the well-known mark MAYBELLINE for decades. The MAYBELLINE mark was registered in the United States of America in 1960, in Canada (Respondent’s country) in 1978, and in the European Union in 2009.
The Domain Name was registered on October 10, 2015. The Domain Name resolves to a website, nearly all of which is in the Persian language, which contains various web pages about women’s skin care products and related information. The website features Complainant’s MAYBELLINE trademark and sells Complainant’s products. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not file a formal Response, but sent a series of e-mails to the Center, including an October 17, 2016 e-mail stating in full as follows:
“Recently we have got the email about the domain complaint which was surprising and Inconsistent. Generally when someone wants to buy domain they check if it is free or not if it was free and available they will order it and mainly the companies which sell domains suggest many similar domains to order either.
About the domain which we have talking about domains are similar to names (maybellineco) is a word, is a name which we registered that, this is exactly like this circumstance that you buy a house furnish it after many years someone tell you that this house belongs to me.
If it was important for that company they had to buy all of the words which they think and claim that belongs to them previously and before this things happened as you can see this companies have been working for many years and they are experienced enough to think vast and predict different kind of conditions so they should consider all of this circumstances in advance Not that we buy domain and get SEO for our website and work on it for years then they claim the ownership.
This is exactly like the condition which we grew up the child from his/her childhood and after that child grew up enough and becomes adult one day a person who has nothing to do with the mentioned child and there is just the similarity with the name of that child and The claimants because just the part of the name is similar to them ask the child for themselves.
Currently the international relations of Iran and United States of America have been increasing to the better circumstances so we expect WIPO to not have the One-sided judgment or just because L’Oréal has a branch in USA does not advocate it and give the right to the deserved.
In addition to that, we have unlimited combination of words if each person claim these things we cannot use words at all and they should buy all of these combination before.”
In another e-mail, Respondent stated that it was not his intent to “misuse or mislead,” and that he has posted at the website to which the Domain name resolves “articles about health and beauty” and “articles about some brands and their photos.” Although it is not easy to understand Respondent’s precise position, it appears that Respondent’s essential point is that “anyone can sell the things which they buy so if we have things to sell it is free to sell in the Internet…” In so doing, Respondent adds, it is necessary to use the names of the brands of the products he is selling online. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant clearly hold rights, through widespread registration and longstanding use, in the mark MAYBELLINE. The Panel also finds the Domain Name to be confusingly similar to the mark, as it incorporates MAYBELLINE in its entirety and merely adds the letters “co,” which in English denotes a “company” or business enterprise.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name resolves to a website where, according to the undisputed record, Complainant’s products are offered for sale. Complainant asserts, and Respondent does not dispute, that Complainant has never authorized Respondent to use the MAYBELLINE mark as a domain name or otherwise. Respondent’s website gives the impression that it is somehow affiliated with Complainant. The sale of products via this misleading impression does not constitute a bona fide offering of goods or services such that Respondent would have a legitimate interest in the Domain Name.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
On this record, the Panel finds that Respondent registered the Domain Name primarily to attract, for commercial gain, Internet users by creating confusion among Internet users as to the source of the goods offered for sale at Respondent’s website. This conduct constitutes bad faith registration and use within the meaning of Policy paragraph 4(b)(iv). Respondent’s choice of the Domain Name and the linked website conveys the false impression that it is actually affiliated with, or sponsored or endorsed by, Complainant.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: October 21, 2016
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