The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is YongGuo Mei, Mei Yong Guo of Suzhou, Jiangsu, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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 March 13, 2017, the Center sent an email communication to the Parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On March 14 and March 15, 2017, the Respondent requested Chinese be the language of the proceeding.
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 the Respondent in Chinese and English of the Complaint, and the proceedings commenced on March 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2017. On April 10, 2017, the Center informed the Parties that it would proceed with panel appointment.
On April 12, 2017, the Center received several emails from the Respondent which were not substantive in nature.
The Center appointed Sok Ling MOI as the sole panelist in this matter on April 13, 2017. 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.
On May 3, 2017, the Center received two additional emails from the Respondent which did not add any substantive argument. 4. Factual Background
The Complainant is a French industrial group specialised in cosmetics and beauty products. Established in 1909, it is today one of the world's leaders in the cosmetics and beauty industry and is present in more than 130 countries worldwide including China.
The Complainant markets more than 30 global beauty brands including L'OREAL, L'OREAL PARIS and MAYBELLINE in connection with a wide range of cosmetics and beauty products which are available for sale in accessible retail outlets. In 2015, the China was the Complainant's second largest market in terms of sales.
The Complainant is the proprietor of numerous trade mark registrations for L'OREAL, L'OREAL PARIS and MAYBELLINE across the world, including the following:
Jurisdiction
Trade Mark
Registration No.
Registration Date
Class
China
L'OREAL
148647
July 30, 1981
3
China
L'OREAL
1487385
December 7, 2000
42
China
L'OREAL PARIS
6665726
March 28, 2010
3
China
MAYBELLINE
212780
September 15, 1984
3
The Complainant is also the registrant of, and operates websites at the following domain names:
- registered on October 24, 1997;
- registered on August 17, 1996;
- registered on October 20, 1998.
The disputed domain names , and were all registered on June 14, 2016.
According to the evidence submitted by the Complainant and as of the date of this Decision, the disputed domain names do not resolve to any active website and appear never to have done so in the past. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names and are identical and/or confusingly similar to its L'OREAL and L'OREAL PARIS trade marks while the disputed domain name is identical or confusingly similar to its MAYBELLINE trade mark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent, presumably a Chinese native individual as he signed off as Mr. Mei, sent two emails to the Center requesting Chinese be the language of the proceeding on March 14 and March 15, 2017. The Respondent sent three emails to the Center on April 12, 2017. In his first email, the Respondent claimed that he was not able to understand the Complaint due to his limited English proficiency. In a subsequent email, the Respondent informed that he will prepare his response within half a month. No response was eventually filed by the Respondent. In any event, the due date for filing a response was April 9, 2017.
On May 3, 2017, the Center informed the Panel that it received two emails from the Respondent, in which the Respondent asserted that a) Amazon purchased the domain name at the price of over USD 500,000; b) the Complainant's trade marks are registered under some classes; c) the Respondent did not purchase the disputed domain names for commercial gain, the Respondent purchased the disputed domain names in China; and the disputed domain names had nothing to do with the Complainant's business. As the Respondent's late communications add nothing of substance, the Panel declines to consider them. 6. Discussion and Findings 6.1 Language of the Proceeding
Pursuant to paragraph 11(a) 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent requested for Chinese to be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are registered in Latin characters, rather than Chinese script; and
(b) according to the evidence submitted by the Complainant, the Respondent has replied in reasonably proficient English on two occasions (via emails of December 14, 2016 and February 7, 2017) to the Complainant's cease-and-desist letter sent on November 30, 2016 and email of December 30, 2016, both drafted in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese, and has provided a Model Response in Chinese for the Respondent's reference.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in L'OREAL, L'OREAL PARIS and MAYBELLINE by virtue of its use and registration of the same as trade marks.
The disputed domain name incorporates the Complainant's trade mark L'OREAL in its entirety while the disputed domain name and incorporates the Complainant's trade mark L'OREAL PARIS in its entirety. Likewise, the disputed domain name incorporates the Complainant's trade mark MAYBELLINE in its entirety. The addition of the generic Top-Level Domain ("gTLD") does not usually impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant's trade marks.
Consequently, the Panel finds that the disputed domain names are identical to the Complainant's trade marks.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974).
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the L'OREAL, L'OREAL PARIS and MAYBELLINE trade marks or to seek registration of any domain name incorporating the trade marks. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term "l'oreal" or "maybelline".
As the disputed domain names do not resolve to any active websites, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain names. Since the Respondent has failed to offer any explanation for his registration of the disputed domain names, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Panel notes that, according to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain names do not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2.
The Complainant and its trade marks L'OREAL, L'OREAL PARIS and MAYBELLINE enjoy a strong reputation worldwide. The Panel notes that the L'OREAL trade mark has been registered in China since 1981 while the MAYBELLINE trade mark has been registered in China since 1984. There is no doubt that that the Respondent was aware of the Complainant and its trade marks when he registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the L'OREAL, L'OREAL PARIS and MAYBELLINE trade marks and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant's well-known trade mark suggests opportunistic bad faith.
According to the evidence submitted by the Complainant, the Respondent had immediately offered to sell the disputed domain names to the Complainant upon receiving the Complainant's cease-and-desist letter. Indeed, the Respondent had asked for a price of USD 600,000 for each of the disputed domain name - this is obviously in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain names. The circumstances under paragraph 4(b)(i) of the Policy clearly apply.
Furthermore, based on the results of a reverse WhoIs search independently conducted by the Panel using the Respondent's email address, the Panel notes that the Respondent has registered several other domain names which contain well known third party brand names, such as , , , , , , , , , and . This pattern of conduct suggests that the Respondent is engaged in cybersquatting activities, and has in all likelihood registered the disputed domain names in order to prevent the Complainant from reflecting its trade marks in corresponding domain names. The circumstances under paragraph 4(b)(ii) of the Policy clearly apply.
The Center was not able to reach the Respondent at the physical address and fax number recorded with the Registrar, which strongly suggests that the Respondent had provided false contact details at the time of registering the disputed domain names. The Panel considers this an attempt by the Respondent to conceal his identity and further suggests a lack of bona fide.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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 names , and be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: May 3, 2017
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