The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0155423461, Canada / Sarah Ghrieb, Steampod, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On September 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2019, 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 September 19, 2019, 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 23, 2019. 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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2019. The Center appointed Jane Seager as the sole panelist in this matter on October 29, 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 The Complainant, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty. The Complainant comprises 36 brands, covering a wide range of products, including hair care, coloring, skin care, makeup and fragrances. The Complainant is present in some 150 countries. In 2012, the Complainant together with Rowenta Salon Electricals launched the product “Steam Pod” – a steam hair straightening iron. For use in connection with its Steam Pod product, the Complainant is the owner of a number of registrations for the trademark STEAM POD in various jurisdictions around the world, including: - European Union Trade Mark Registration No. 006525059, STEAM POD, registered on December 11, 2008; and - International Trademark Registration No. 969603, STEAM POD, registered on June 6, 2008. The Complainant is also the registrant of the domain name The disputed domain name was registered on August 9, 2019. The disputed domain name previously resolved to a website resembling the Complainant’s official website, and purporting to offer for sale heavily-discounted Steam Pod products (the “Respondent’s website”). On August 20, 2019, the Complainant’s representatives wrote to the Registrar requesting that the disputed domain name be put on “clientHold” status1 , as well as to Shopify, the web hosting provider, requesting that the contents of the Respondent’s website be taken down. On August 21, 2019, the web hosting provider replied stating that the content listed as infringing the Complainant’s trademark had been taken down. At the time of this decision, the disputed domain name resolves to a Shopify landing page lacking substantive content. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to its STEAM POD trademark, as it reproduces the Complainant’s STEAM POD trademark in its entirety. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is neither affiliated with the Complainant, nor has it received any authorization from the Complainant to use or register its trademark, or to register any domain name incorporating its trademark. The Complainant asserts that the Respondent cannot claim to have used the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. Rather, the Respondent has used the disputed domain name in connection with a fraudulent website, reproducing the Complainant’s “L’Oréal” logo together with the Complainant’s STEAM POD trademark, offering for sale Steam Pod products without the Complainant’s authorization. The Complainant asserts that in light of the Respondent’s use of the disputed domain name, Internet users were likely to wrongly believe that the Respondent’s website was one of the Complainant’s official websites. In support of this contention, the Complainant has submitted evidence of complaints received from consumers who placed orders for Steam Pod products on the Respondent’s website, but never received the products that they had paid for. The Complainant further submits that the Respondent is not commonly known by the disputed domain name. In this regard, the Complainant alleges that there is no company named “Steampod” in France, and that the disputed domain name was registered using a fake name. The Complainant also asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent’s fraudulent actions evidence an intent to misleadingly divert consumers for commercial gain by taking unfair advantage of the goodwill and reputation of the Complainant’s STEAM POD trademark. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant notes that its trademark registrations significantly predate the registration of the disputed domain name. Furthermore, the composition of the disputed domain name, reproducing the Complainant’s STEAM POD trademark in its entirety, and the pointing of the disputed domain name to the Respondent’s website, which fraudulently purported to sell Steam Pod products, strongly suggest that the Respondent was targeting the Complainant when it registered the disputed domain name. The Complainant claims that the Respondent’s use of the disputed domain name demonstrates that the Respondent intentionally attempted to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products offered therein for the Respondent’s own fraudulent pecuniary gain. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely: (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 the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the STEAM POD trademark, by virtue of its registration and use, details of which are provided in the factual background section above. The disputed domain name comprises the Complainant’s trademark in its entirety, without alteration or addition, save for the omission of the space (being incapable of representation in a domain name per se) between the elements “steam” and “pod” making up the Complainant’s trademark. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Complainant has provided evidence in the form of screen captures indicating that prior to August 20, 2019, the disputed domain name resolved to a website purporting to offer for sale Steam Pod products at substantially-reduced prices. The Respondent’s website copied the appearance of official websites of the Complainant. The Complainant has also provided copies of consumer complaints relating to the disputed domain name, several of which indicate that products ordered and paid for via the Respondent’s website had not been received. The Panel finds that the Complainant’s evidence supports the finding that the Respondent has used the disputed domain name to impersonate the Complainant in order to defraud Internet users who mistakenly believed that they had arrived at an official website of the Complainant. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13, “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods […], phishing […], impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” The Respondent has not come forward to assert rights or legitimate interests in the disputed domain name as an unauthorized reseller of the Complainant’s goods or otherwise. The mere inclusion of “Steampod” in the Registrant Organization field of the WhoIs record for the disputed domain name is insufficient to support a finding that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy; see WIPO Overview 3.0, section 2.3. In the circumstances, the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name in terms of paragraph 4(c)(iii) of the Policy. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is clear from the use to which the disputed domain name has been put, as described above, that at the time that the disputed domain name was registered the Respondent was well aware of the Complainant’s STEAM POD trademark, whose registration substantially predated that of the disputed domain name. The Respondent’s use of the disputed domain name indicates that the Respondent, having no authorization to use the Complainant’s STEAM POD trademark, registered the disputed domain name with a view to taking unauthorized, illegitimate commercial advantage of the goodwill associated with the Complainant’s trademark. The Panel finds that the disputed domain name was registered in bad faith. Noting that the disputed domain name has been used in connection with a website that sought to impersonate the Complainant and mislead consumers into believing that they had arrived at an official website of the Complainant, with the underlying intention to defraud the Complainant’s customers, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s STEAM POD trademark as to the source, sponsorship, affiliation, or endorsement of its website and the products purportedly offered therein, in bad faith, pursuant to paragraph 4(b)(iv) of the Policy. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Jane Seager 1 For further information about Extensible Provisioning Protocol (“EPP”) Status codes, see: “https://www.icann.org/resources/pages/epp-status-codes-2014-06-16-en”.
Sole Panelist
Date: November 6, 2019
Full & Egal Universal Law Academy