Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Link Daniel of Aba, Abia, Nigeria. 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 November 14, 2017. On November 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 20, 2017.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 15, 2018. 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
Founded in 1909 by a French chemist, Complainant is a French industrial group specialized in cosmetics and beauty. Complainant is present in over 140 countries and is one of the international leaders in its field. Complainant is the owner of multiple registered trademarks containing the mark L’ORÉAL, including International trademark Reg. No. 184970 (Registration Date March 3, 2009) and Nigerian trademark Reg. No. 16858 (Registration Date October 18, 1993). In addition, Complainant operates, among others, the following domain name reflecting its trademarks: (registered on October 24, 1997). Complainant is using this domain name in connection with its current activities.
Respondent registered the disputed domain name on November 22, 2016. The disputed domain name resolves to an inactive webpage. In addition, an email server was set up for the disputed domain name.
On November 22, 2016 – the registration date of the disputed domain name – the company “Al Mufid”, a distributor of L’Oréal, received an email originating from the email address “…@”. This email was ostensibly signed by Complainant’s employee, who has been working as Customer Care Executive for the United Arab Emirates and Kuwait since January 2016. The email requested “Al Mufid” to remit payments to a designated bank account. The payment, however, failed. On December 8, 2016, Al Mufid received a second email from the same email address, requesting that another payment be remitted to a second designated bank account.
According to the complaint, Complainant sent a deactivation notice to the Registrar on January 16, 2017, requesting that the Registrar block the email services and cancel/suspend the domain name. The Registrar confirmed the suspension of the domain name on January 23, 2017.
Complainant subsequently initiated this proceeding. Because the disputed domain name was set to expire during the course of the proceeding, Complainant exercised its option in accordance with paragraph 3.7.5.7 of the ICANN Registration Accreditation Agreement to renew the domain name under the same commercial terms as the registrant. The current expiry date of the disputed domain name registration is November 22, 2018. As such, the disputed domain name will remain under “Lock” status during the remaining pendency of these proceedings pursuant to paragraphs 4(a) and 4(b) of the Rules. Complainant seeks the transfer of the disputed domain name. 5. Parties’ Contentions A. Complainant
As to the first element of the Policy (identity or confusing similarity), Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark because the disputed domain name reproduces the trademark L’ORÉAL with merely the replacement of the letter “o” with the number figure “0”, the removal of the apostrophe following the letter “l,” and the addition of the extension “.com”. Complainant asserts that replacement of the letter “o” with the number figure “0” does not significantly affect the disputed domain name’s appearance, the removal of the apostrophe does not change the trademark’s pronunciation, and the extension “.com” is not to be taken into consideration when examining the identity or similarity between Complainant’s trademark and the disputed domain name. Finally, Complainant asserts that the public would reasonably assume that the disputed domain name would be owned by or related to Complainant because Complainant has used the trademark L’ORÉAL in connection with a wide variety of products and services around the world.
As to the second element of the Policy (no rights in the disputed domain name), Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name directs users to an inactive website. Moreover, Complainant contends that Respondent is engaged in a fraudulent scheme to deceive customers and employees, who incorrectly associate the disputed domain name with Complainant – as evidenced by Respondent’s attempt to deceive one of Complainant’s distributors. Finally, Complainant asserts that Respondent is not commonly known by the name “L’ORÉAL” or authorized or licensed to use the L’ORÉAL trademark in any form, including domain names. Accordingly, Complainant contends that Respondent cannot pretend to any legitimate interest in the disputed domain name because there is no evidence that Respondent has used or intends to use the disputed domain name in connection with a bona fide offering of goods and services or any other legitimate use or interest.
As to the third element of the Policy (bad faith), Complainant asserts that Respondent’s conduct indicates that the registration and use of the disputed domain names was in bad faith. Complainant alleges that it is implausible that Respondent was unaware of Complainant’s mark because L’ORÉAL is a well-known trademark that predates the registration date of the disputed domain name and because the disputed domain name is confusingly similar to Complainant’s trademark. Complainant notes that Respondent lacks any authorization or license from Complainant to use the L’ORÉAL mark. Complainant also alleges that, despite the fact that the disputed domain name directs users to an inactive website, the disputed domain name was set up with email services used for fraudulent activities. For example, Complainant alleges that Respondent used an email address containing the disputed domain name in a “phishing scheme” to deceive one of Complainant’s distributors into believing it was dealing with Complainant. Therefore, Complainant concludes that Respondent’s use of the Domain Names does not constitute a use in connection with a bona fide offering of goods and services or any other legitimate use or interest. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
“(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.”
Respondent provided no Response, and the deadline for doing so expired on December 19, 2017. The Center served a copy of the Complaint on Respondent as provided by the Policy and the Rules. Accordingly, Complaint has been properly served on Respondent, and Respondent has had due notice of the dispute. Therefore, Respondent is in default.
In these circumstances, paragraph 5(e) of the Rules requires the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the complaint. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
The Panel finds that Complainant has met each of the elements required by the Policy. In particular, the disputed domain Name is confusingly similar to Complainant’s marks, Respondent has no rights or legitimate interests in the disputed domain name, and Respondent registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
Complainant’s rights in its L’ORÉAL mark are evidenced by its registrations of the mark and in its continued use of the mark. The Panel refers to the Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview 3.0”), at section 1.1: “If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”1
The Panel next turns to whether the disputed domain name is confusingly similar to Complainant’s L’ORÉAL mark for purposes of paragraph 4(a)(i) of the Policy. Disputed domain names that include the complainant’s mark with insignificant alterations have been found confusingly similar by panels in previous cases under the Policy. See, e.g., Heartland Payment Systems v. Purple Bucquet,WIPO Case No. D2010-0722 (concluding that a disputed domain name that adds one letter to the complainant’s mark is confusingly similar because “an unsuspecting consumer would find the disputed domain name is visually and phonetically similar and almost identical to the complainant’s mark”); Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo,WIPO Case No. D2003-0707 (concluding that the deliberate misspelling of a mark fails to distinguish a disputed domain name from a complainant’s mark); L’Oreal v. Tracy Johnson,WIPO Case No. D2008-1721 (concluding that typographic differences such as the inclusion or exclusion of grammatical marks are inadequate to avoid a finding of confusing similarity); Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 (concluding that the Top-Level Domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). In addition, the respondent’s use of the domain names is in certain circumstances relevant in this consideration. See, e.g., National Westminster Bank plc v. Babalola, Awokoya,WIPO Case No. D2012-1737 (finding that the respondent’s use of the domain names to display websites identical or substantially and confusingly similar to the complainant’s website indicates to the panel that the respondent viewed the disputed domain name to be confusingly similar to complainant’s trademark).
Here, the disputed domain name differs from Complainant’s L’ORÉAL mark only in the above regards. The disputed domain name differs from Complainant’s mark by (1) the replacement of an “o” with the number figure “0”, (2) the removal of an apostrophe following the letter “l”, and (3) the addition of the extension “.com”. The disputed domain name is visually and phonetically similar and almost identical to Complainant’s mark. In addition, Respondent’s use of the disputed domain name in an attempt to deceive one of Complainant’s distributors indicates that Respondent viewed the disputed domain name as confusingly similar to Complainant’s trademark.
Respondent does not rebut the above showing or make any contrary claim or assertion. Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s L’ORÉAL mark in which Complainant has rights. The first condition of paragraph 4(a) is, therefore, satisfied. B. Rights or Legitimate Interests
The Panel next turns to whether Respondent has no rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy provides that:
“[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
It is uncontested that (1) Respondent did not use – and currently does not use – the disputed domain name for a bona fide offering of goods or services as defined by the Policy; (2) Respondent is not commonly known by the domain name; and (3) Respondent used the disputed domain name to mislead Complainant’s employees and customers.
At the time the disputed domain name was registered, Complainant’s mark was registered and well-known.
Therefore, Respondent had actual or constructive knowledge of Complainant’s trademark. See, e.g., Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. D2001-0601 (“[A]t the time of the registration of the Domain Name, Respondent was fully aware of the Complainant’s trademark. The Panel, therefore, finds that Respondent selected and used the Domain Name solely in order to attract Internet users to its website by trading on the fame of the Complainant’s trademark. This does not constitute a ‘bona fide’ offering of goods.”). While the disputed domain name has remained inactive in terms of web content, Respondent has not offered any evidence that its purpose was for anything other than the deceit of Complainant’s employees and customers. In addition, the Whois information identifies the Registrant of the disputed domain name as “link daniel”. This WhoIs information does not resemble the disputed domain name in any manner, and therefore, Respondent is not commonly known by the disputed domain name.
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its L’ORÉAL mark in any form. See, e.g., Arcelormittal S.A. v. Ram Mittal,WIPO Case No. D2016-0449 (treating the lack of authorization to use complainant’s trademark as prima facie evidence of the absence of respondent’s rights or legitimate interests in a disputed domain name).
Consequently, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. The second condition of paragraph 4(a) is, therefore, satisfied. C. Registered and Used in Bad Faith
Finally, the Panel turns to whether or not the disputed domain name has been registered and used in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
Complainant’s registration of the L’ORÉAL mark can permit an inference that Respondent knew of Complainant’s mark prior to registration of the disputed domain name. See, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113 (“[T]he Panel concurs with previous …UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.”). Paragraph 2 of the Policy states that “[b]y applying to register a domain name . . . you hereby represent and warrant to us that . . . to your knowledge you will not infringe upon or otherwise violate the rights of any third party...” Here, it can be inferred that Respondent had actual or constructive knowledge of Complainant’s L’ORÉAL mark because L’ORÉAL is a well-known trademark that predates the registration date of the disputed domain name.
Currently, the disputed domain name resolves to an inactive website, but this fact alone is not determinative. See, e.g., Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421 (“A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, help passively without any evident usage or purpose.”); Telstra Corporations Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (concluding that the respondent’s passive holding of the disputed domain name satisfied the bad faith requirement of paragraph 4(a)(iii)). Here, Complainant’s argument is bolstered by Respondent’s inclusion of the disputed domain name in an email server used in attempts to deceive Complainant’s distributor company. One email was sent on the same day that the disputed domain name was registered. Respondent has not contested Complainant’s allegations that Respondent used an email address containing the disputed domain name in a “phishing scheme” to deceive one of its distributors into believing it was dealing with Complainant and extract funds on that basis. Previous UDRP panels have concluded that the use of a disputed domain name in a “phishing scheme” is clear evidence of registration and use of a domain name in bad faith. See, e.g., OLX, Inc. v. J. D. Mason Singh,WIPO Case No. D2014-1037).
In conclusion, the Panel finds that Respondent’s registration and use of the disputed domain name falls within the meaning of paragraph 4(b)(iv) of the Policy. The final condition of paragraph 4(a) is, therefore, 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 Complainant.
Michael A. Albert
Sole Panelist
Date: January 25, 2018
1 Although the WIPO Overview 3.0 is not binding precedent, it embodies a consensus of positions set forth in the opinions of hundreds of WIPO panelists during the now over 15 years of the administration of the UDRP. See Fresh Intellectual Properties, Inc. v. 800N, Inc.,WIPO Case No. D2005-0061. It is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014. See also, Last Minute Network Limited v. Web Domain Names,WIPO Case No. D2007-1161.
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