The Complainant is L’Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Xiu Zhi Cun, Zhi Cun Xiu of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2018, 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 26, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 English and Chinese of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 2, 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
The Complainant is a French company originally founded in 1909 by Eugène Schueller, and has grown into a global company active in the beauty and cosmetics industry. In 2004, the Complainant acquired full control over the company Shu Uemura Cosmetics Inc., including its main trademark SHU UEMURA, after already having acquired an initial share in the company via its Japanese subsidiary Nihon L’Oréal K.K in 2000. The Complainant currently uses the sign SHU UEMURA both as a business identifier and as a trademark.
The Complainant owns various trademark registrations (word marks) for SHU UEMURA in a number of jurisdictions throughout the world, including in the European Union (registration no. 000959130, registered on February 29, 2000), United States of America (registration no. 1394564, registered on May 27, 1986) and China (registration no. 1347652, registered on December 8, 1999). All registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on March 30, 2014. The disputed domain name previously resolved to a website selling products under the Complainant’s trademark. Currently the disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its prior trademarks for SHU UEMURA, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Complainant claims that its brand is well-regarded in the beauty and cosmetics industry and that the bulk of its sales revenues from products marketed under the Shu Uemura brand originate from Asia, including from China. The Complainant has provided evidence to show its SHU UEMURA trademarks have developed a substantial reputation and recognition worldwide, including in China.
The Complainant has also provided evidence regarding the actual use the Respondent has made of the disputed domain name, before it was suspended by the Registrar due to a complaint regarding wrong registration information. The Complainant contends that the disputed domain name was linked to a website presenting itself as a genuine website of the Complainant (including some official advertising images) and that the disputed domain name was used to sell unauthorized Shu Uemura-branded products. The Complainant contends that such use was not authored or permitted by the Complainant.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issues: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the Panel is given the authority to determine a language of proceeding other than the language of the registration agreement, taking into account the circumstances of every individual case.
In view of all elements of this case, being, in particular, the Complainant’s request, the language used in the disputed domain name itself, the use of English for some of the contents of the website corresponding to the disputed domain name, the lack of response of the Respondent (such that there will be no prejudice to the Respondent, who could have put forward arguments, and was provided an opportunity to do so either in English or Chinese), and the fact that the Center notified the Complaint to the Respondent in both English and Chinese, the Panel determines that the language of proceedings shall be English. 6.2. Substantive Issues
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
Based on the evidence submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the trademark SHU UEMURA based on its use and registration.
The disputed domain name incorporates the Complainant’s trademark SHU UEMURA in its entirety, as a clearly dominant feature. The addition of the descriptive element “online” does not differentiate it from the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element required by the Policy has been fulfilled. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The website to which the disputed domain name previously resolved purported to sell products of the Complainant. Even if the Panel is to give the Respondent the benefit of the doubt in that such products may have been genuine, there is nothing on the website to indicate that the Respondent is not affiliated with the Complainant. On the contrary, the website gives a misleading impression that the Respondent is the Complainant, or somehow affiliated with it. In light of the above, the Panel finds that none of the circumstances envisaged by paragraph 4(c) of the Policy applies. The Panel notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second requirement under the Policy. C. Registered and Used in Bad Faith
Before the website corresponding to the disputed domain name was suspended by the Registrar, it was used as an advertising and sales platform of products identical to the Complainant’s products, leading to the impression that the disputed domain name led to one of the Complainant’s official sites. Given the reputation and fame of the Complainant’s trademark, the use of the disputed domain name is clearly intended to attract consumers to the disputed domain name where unauthorized products were advertised and offered for sale, by creating a likelihood of confusion with the Complainant’s trademark. The addition of the term “online” to the Complainant’s trademark is even likely to increase the likelihood of confusion and may induce Internet users to believe that there is an association between the domain name and Complainant, as it suggests that the disputed domain name leads to the official online marketplace for goods and services marketed by the Complainant. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered, and is using the disputed domain name in bad faith.
Moreover, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under 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.
Deanna Wong Wai Man
Sole Panelist
Date: May 8, 2018
Full & Egal Universal Law Academy