The Complainant is Fondation Bettencourt Schueller of Paris, France, represented by TAoMA Partners, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Web designer Web designer of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 December 7, 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 December 11, 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 December 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 18, 2019. 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 the Fondation Bettencourt Schueller (the “Foundation”), which is a French charitable foundation established in 1987 by Liliane Bettencourt and family to support projects in the field of life science, arts, and social progress. Mrs. Bettencourt, born Schueller, was the largest shareholder of cosmetics and fragrance company L’Oréal and was at one time ranked as the world’s wealthiest woman. The Foundation is organized in France as a not-for-profit organization performing a general interest service. Its activities include awarding prizes and supporting projects in its focus areas. Internationally, the Foundation supports projects such as an exhibition in Venice and a research center in Japan.
Complainant is the proprietor of numerous trademark registrations, including the following:
- European Union trademark (“EUTM”) No. 009381427 for FONDATION BETTENCOURT SCHUELLER (work mark) in classes 35, 36, 41, 42, 45, filed on September 16, 2010 and registered on March 6, 2011;
- Canadian trademark No. TMA874451 for FONDATION BETTENCOURT SCHUELLER (word mark) in classes 35, 36, 41, 42, 45, filed on October 5, 2010 and registered on March 31, 2014;
- International trademark No.1065267 for FONDATION BETTENCOURT SCHUELLER (word mark) in classes 35, 36, 41, 42, 45, registered on November 30, 2010.
Complainant is also the holder of approximately 700 domain names, including at the second-level “bettencourtschueller-fondation”, “fondationbettencourt”, “foundation-bettencourt”, “foundation-bettencourt-schueller”, “fondationbettencourtschueller”, “foundation-bettencourtschueller”, registered with the top-level domains “.ong”, “.ngo”, “.com”, “.fr”, “.info”, “.net”, “.org”, “.eu” and “.foundation”. The second-level portions of domain names, namely, “lafondationsbettencourt”, “la-fondationbettencourt” and “la-fondation-bettencourt” are registered by Complainant with the top-level domains “.com”, “.net”, “.org”, “.eu” and “.fr”.
The Domain Name was registered by an unknown party identified as “Web designer Web designer” of Istanbul, Turkey, on August 9, 2018. The Domain Name resolved to a website mimicking the Complainant.
Respondent did not respond to the Complaint. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is almost identical, or highly similar, to its trademark FONDATION BETTENCOURT SCHUELLER. The Domain Name reproduces two of the three words of the earlier trademarks and includes the word “foundation” - the English translation of the French word “fondation”-, also contained in the Complainant’s name, trademarks and domain names. The words share visual and aural similarities. Further, the family name “Bettencourt” is famous worldwide and appears uniquely associated with the word “fondation” or “foundation” in the Domain Name.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent has no known rights in the words “Bettencourt Foundation”. Complainant has no connection or affiliation with Respondent. Complainant has not authorized Respondent to use the trademark FONDATION BETTENCOURT SCHUELLER. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor is Respondent making legitimate noncommercial or fair use of the domain. Respondent is not commonly known by the Domain Name. Respondent’s actions to seek donations to a purported “Bettencourt Foundation” are intended to divert consumers and to tarnish Complainant’s trademarks.
Finally, Complainant submits that Respondent registered the Domain Name in bad faith. Complainant’s trademarks and domain names predate the registration of the Domain Name. As mentioned in an earlier decision, Fondation Bettencourt Schueller v. Ms. Jessica Chun,WIPO Case No. D2012-0524, Liliane Bettencourt Schueller had earned considerable international press coverage and therefore she and the Foundation would have been known to Respondent.
The Domain Name impersonates Complainant and misleads Internet users. The Domain Name, which now resolves to a hosting site indicating that the account is suspended, previously resolved to a website soliciting donations to humanitarian projects supported by the “Bettencourt Foundation” featuring images and text relating to Liliane Bettencourt. However, Complainant did not authorize the website and, as Complainant does not ask for donations, the activities displayed therein are fraudulent. This website was inactivated by the hosting company at the request of Complainant. Mrs. Bettencourt had wholly financed her foundation and had never sought any donations thereto. Respondent registered the Domain Name using false and incomplete information, thereby evidencing bad faith. It is Complainant’s view that Respondent registered the Domain Name for the purpose of attracting, for commercial gain, Internet users. Such actions tarnish Complainant’s trademarks, which are famous marks.
Complainant requests that the Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(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) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it has trademark registrations in many countries for the mark FONDATION BETTENCOURT SCHUELLER. The Panel finds that Complainant has also established that it has rights in a number of generic Top-Level domain names (“gTLDs”) and country code Top-Level domain names (“ccTLDs”) containing this mark.
The Domain Name is practically identical to the first two elements of the Complainant’s trademarks and domain names. The use of the English term “foundation” differs only by one letter from the term “fondation”, which has the same meaning in French. In the Panel’s view, the Domain Name wholly incorporates the dominant elements of those trademarks, namely the terms “Fondation” and “Bettencourt” and, consequently, it is confusingly similar to the Complainant’s trademarks and name. It is the consensus view of UDRP panels that a domain name that is comprised of a translation or transliteration of a trademark will normally be found to be identical or confusingly similar to such a trademark, where the trademark is incorporated into or is otherwise recognizable in the domain name. See Compagnie Generale Des Etablissements Michelin – Michelin & Cie v. Grame Foster,WIPO Case No. D2004-0279.
Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or employee of Complainant, nor is Respondent a licensee nor a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name. The website associated with the Domain Name is currently inactive and no information is provided on what rights or legitimate interests Respondent may have in the Domain Name.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden shifts to Respondent to establish rights or legitimate interests. Based on the evidence provided by the Complainant on record, the Domain Name resolved to a website impersonating Complainant’s Foundation and inviting Internet users to make online donations, and thus the Panel finds that Respondent is not using the Domain Name in connection with any bona fide offering. It is the consensus view of the Panels that the use of a Domain Name for fraudulent activity can never confer rights or legitimate interests on a respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1. Furthermore, Respondent has not filed a response to rebut the Complainant’s assertions.
Accordingly, the Panel finds that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The evidence submitted by Complainant supports a finding of bad faith, and Respondent has failed to provide any information that would cause the Panel to question Complainant’s arguments. In particular, the similarity between the Domain Name and Complainant’s trademarks and the purpose of the website to which the Domain Name previously directed support the conclusion that Respondent has deliberately attempted to attract Internet users for illegitimate reasons.
It is the consensus view of UDRP panels that the mere registration of a domain name that is confusingly similar to a well-known trademark by an unaffiliated entity can create a presumption of bad faith (see WIPO Overview 3.0, section 3.1.4). In this case, it appears beyond doubt that Respondent registered the Domain Name with prior knowledge of the Fondation Bettencourt Schueller and of its founder, Liliane Bettencourt Schueller.
As further evidence of bad faith, Respondent provided false and incomplete contact information in registering the Domain Name, in violation of its representations pursuant to paragraph 2(a) of the Policy.
Moreover, Respondent, through the website associated with the Domain Name, attempted to impersonate Complainant in order to obtain donations.
On the basis of all the undisputed facts, the Panel finds that the Domain Name was registered and is being used in bad faith with the meaning of the third element of 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 name be transferred to the Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: February 1, 2019
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