The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0149511181 of Toronto, Canada / Jerry Peter of Ikeja, Nigeria. 2. The Domain Name and Registrar
The disputed 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 August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 3, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on September 28, 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 industrial group specialized in the field of cosmetics and beauty and is today one of the world's largest groups in the cosmetic industry with a presence in over 150 countries world-wide.
The Complainant markets more than 30 global beauty brands including L'Oréal, L'Oréal Paris and L'Oréal Professionnel in connection to various products in all sectors of the beauty business, e.g., fragrances, cosmetics, hair care, hair color, skin and body care, men care and skincare devices.
The Complainant holds a portfolio of international brands that is unique in the world and that covers all the lines of cosmetics: hair care, coloring, skin care, makeup and perfume as it is the International trademark L'ORÉAL No. 184970 registered on May 23, 1955 (duly renewed) and covering goods in classes 3 and 5.
In addition, the Complainant operates, among other, domain names reflecting its trademark L'ORÉAL, such as registered on October 24, 1997.
The Panel alos notes that other panels have considered the Complainant‘s trademark to be well-known (L'Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021; L’Oréal v. Xu Guo Xing, Ji Nan Xia Hua Yuan Shang Mao You Xian Gong Si / Shimei Wang,WIPO Case No. D2017-0673; L’Oréal v. Dmitry Makukhin,WIPO Case No. D2016-0137; L'Oréal v. Noorinet,WIPO Case No. D2015-0755).
The Respondent is Customer 0149511181 of Toronto, Canada / Jerry Peter of Ikeja, Nigeria and registered the disputed domain name on October 20, 2017. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The disputed domain name is confusingly similar to the Complainant’s trademark L'ORÉAL, as the disputed domain name reproduces the Complainant’s trademark L'ORÉAL in its entirety; the absence of apostrophe between the letter “L” and the letter “O” as well as the absence of the accent on the letter E in the disputed domain name including the trademark L’ORÉAL do not have any impact on the likelihood of confusion. The lack of apostrophe does not change the trademark pronunciation. Typographic differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity
- The disputed domain name reproduces the trademark L'ORÉAL with the addition of the generic term “franchise”. In this type of combination, it is clear that the L'ORÉAL trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark and is registered by the Complainant to promote franchise services.
- The Respondent is neither affiliated with the Complainant in any way nor has he been authorised or licensed by the Complainant to use and register its trademark L’ORÉAL, or to seek registration of any domain name incorporating the aforesaid trademark. The Respondent is not known by the name of L’ORÉAL.
- The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of L’ORÉAL trademarks preceded the registration of the disputed domain name for years.
- Besides, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Previously, the disputed domain name resolved to a website entitled "L'Oréal Franchise" reproducing, without authorization, the Complainant's trademarks and visuals. The website contained descriptions about certain key brands of the Complainant, namely LANCÔME, NYX and MAYBELLINE and offered false franchise services. In this respect, an online application form related to a franchise partnership was inserted on the landing page for interested people or companies; due to these elements, Internet users are likely to wrongly believe that this is an official website of the Complainant.
- Additionally, the registrant has impersonated one of the Complainant’s employees, D. M. to send fraudulent emails. As such, the disputed domain name has been used in a fraudulent email scheme using the name of one of the Complainant's employees. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use.
- In these emails, the Respondent has offered false franchise opportunities on the NYX PROFESSIONAL MAKEUP brand (which is owned by the Complainant), also stating that "the minimum investment to acquire NYX Cosmetics franchise is $300,000 USD". Besides, the recipient of said email was sent an invoice of USD 50,000 as franchise for NYX in Bangladesh, with a deadline to pay said invoice.
- The Respondent is engaged in a phishing scheme, a practice intended to defraud consumers or employees into revealing personal and financial information. It deceives consumers/employees, who incorrectly understand that they are referred to the Complainant’s bona fide services.
- L’ORÉAL is a well-known trademark throughout the world and it is unlikely that the Respondent was not aware of the Complainant’s rights in the said trademark.
- In view of the composition of the disputed domain name which incorporates the trademark L’ORÉAL, cumulatively with the fraudulent webpage along with the fraudulent email scam, it is impossible that the Respondent did not have the Complainant’s trademark L’ORÉAL and activities in mind while registering the disputed domain name.
- Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Thus, given the reputation of the L'ORÉAL trademark, registration in bad faith can be inferred.
- The domain name currently resolves towards a page which indicates that the website is expired. Thus, it does not show any sign of activity. Nevertheless, this state of inactivity does not mean that the disputed domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith: “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, held passively without any evident usage or purpose”.
- Finally, it can be deduced that the Respondent registered the domain name to prevent the Complainant from using its trademark in the disputed domain name. According to previous UDRP panelists, this type of conduct constitutes evidence of the Respondent’s bad faith.
- Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Policy requires that Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Based on the assertions of the Complainant and the evidence presented supporting these assertions, the Panel finds that the Complainant holds rights in the trademark L'ORÉAL. Moreover, the Complainant operates its website under the domain name registered on October 24, 1997, which indicates the way the Complainant translates its trademark into Internet recognition.
This Panel also finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark L'ORÉAL as the disputed domain name reproduces the Complainant’s trademark L'ORÉAL in its entirety and its use on Internet by the Complainant itself.
Moreover, the disputed domain name reproduces the trademark L'ORÉAL with the addition of the generic term “franchise”. In this type of combination, it is clear that the L'ORÉAL trademark stands out and leads Internet user to think that the disputed domain name is connected to the owner of the registered trademark and is registered by the Complainant to promote franchise services.
For all the reasons above, the Panel finds that the disputed domain name is confusingly similar to the L’ORÉAL marks and that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under this element the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as he did not reply to the Complainant’s contentions.
According to the Complainant, the Respondent is neither affiliated with the Complainant in any way nor has he been authorised or licensed by the Complainant to use and register its trademark L’ORÉAL, or to seek registration of any domain name incorporating the aforesaid trademark. The Respondent is not known by the name of L’ORÉAL.
Moreover, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the L’ORÉAL trademarks preceded the registration of the disputed domain name for years.
Besides, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Previously, according to the Complainant who brought evidences, the disputed domain name resolved to a website entitled "L'Oréal Franchise", which reproduced, without authorization, the Complainant's trademarks and visuals. The website even contained descriptions about certain key brands of the Complainant, namely LANCÔME, NYX and MAYBELLINE and offered false franchise services. In this respect, an online application form related to a franchise partnership was inserted on the landing page for interested people or companies. Due to these elements, Internet users were likely to wrongly believe that this is an official website of the Complainant. In addition according to the Complainant who brought evidences, the registrant has impersonated one of the Complainant’s employees to send fraudulent emails. In these emails, the Respondent has offered false franchise opportunities on the NYX PROFESSIONAL MAKEUP brand (which is owned by the Complainant), also stating that "the minimum investment to acquire NYX Cosmetics franchise is $300,000 USD". In addition, the recipient of said email was sent an invoice of USD 50,000 as franchise for NYX in Bangladesh, with a deadline to pay said invoice.
As noted, the contentions of the Complainant had not been rebutted by the Respondent, and the Panel agrees with the Complainant that the activities of impersonating the Complainant and of offering fake franchise opportunities cannot be considered as bona fide activities, but rather as phishing scheme, a practice intended to defraud consumers or employees into revealing personal and financial information.
Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Complainant asserts different circumstances which the Panel considers relevant evidence for the bad faith of the Respondent in registering and using the disputed domain name.
Bad faith has already been found in UDRP practice where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith as per WIPO Overview 3.0, section 3.2.1.
Thus, given the reputation of L'ORÉAL trademark, registration in bad faith can be inferred. Moreover, the Respondent’s use of the disputed domain name to direct Internet users to a website entitled "L'Oréal Franchise", reproducing, without authorization, the Complainant's trademarks and visuals, or the impersonation of the Complainant, as noted under 6.B above, represents a phishing scheme, a practice intended to defraud consumers or employees into revealing personal and financial information, which is clearly held as bad faith registration and use under WIPO Overview 3.0, section 3.4.
The circumstance that the disputed domain name currently resolves towards a page which indicates that the website is expired and does not show any sign of activity does not mean that the disputed domain name is used in good faith. Passive holding does not preclude a finding of bad faith under WIPO Overview 3.0, section 3.3.
Accordingly, the Complainant has demonstrated that the Respondent registered and used in bad faith the disputed domain name and therefore, the third element of paragraph 4(a) of the Policy is established. 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.
Dr. Beatrice Onica Jarka
Sole Panelist
Date: October 12, 2018
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