Complainant is L’Oréal, France, represented by Dreyfus & Associés, France.
Respondent is Private by Design, LLC, United States of America (United States) / Yong Sik Choi, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2019. On December 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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 Complainant on December 24, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 27, 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 Respondent of the Complaint, and the proceedings commenced on January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2020. The Center appointed Scott R. Austin as the sole panelist in this matter on February 28, 2020. 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 states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support that Complainant, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty and is among the top cosmetics groups worldwide and Complainant’s global presence includes a portfolio of 36 brands, employs 86,000 employees, and is present in 150 countries. L’Oréal is richly endowed with a portfolio of international brands that is unique in the world and that covers all the lines of cosmetics: hair care, coloring, skin care, make- up and perfume” (the “L’Oréal Mark”). Complainant and its L’ORÉAL Mark enjoy a worldwide reputation. Complainant owns numerous L’ORÉAL trademark registrations around the world”, including: a) International trademark L’ORÉAL No. 184970 protected in multiple jurisdictions, registered on May 23, 1955, duly renewed, and covering goods in classes 3 and 5; b) International trademark L’ORÉAL No. 230114, protected in multiple jurisdictions, registered on March 28, 1960, duly renewed, and covering goods in classes 1 to 34; c) United States Trademark L’ORÉAL No. 86705120, filed on July 27, 2015 and registered on April 26, 2016, covering goods in class 3; and d) United States Trademark L’ORÉAL No. 71597300, filed on May 11, 1950 and registered on April 3, 1951, duly renewed, covering goods in class 3. Complainant operates, among others, the following domain names reflecting its trademark in order to promote its services, The disputed domain name The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because: a) “Complainant’s [L’ORÉAL Mark], is considered to be ‘well-known’or ‘famous’“; b) “[T]he incorporation of a well-known trademark in its entirety [within the disputed domain name] may be sufficient to establish that the [disputed] domain name is identical or confusingly similar to Complainant’s [L’Oréal Mark]”; c) “Typographic differences, such as the inclusion or omission of grammatical marks, for example hyphens and apostrophes [such as the omission of the apostrophe after the letter ‘l’ in the L’ORÉAL Mark], are inadequate to avoid a finding of confusing similarity”; d) “[T]he mere adjunction of a TLD such as ‘.blog’ is irrelevant as it is well established that it is insufficient to avoid a finding of confusing similarity”; e) “[B]y registering [the disputed] domain name, Respondent has created a likelihood of confusion with Complainant’s trademark” and “[i]t is likely that the domain name could mislead Internet users into thinking that it is, in some way, associated with Complainant”. Respondent has no rights or legitimate interests in the disputed domain name because: a) “Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark”; b) “Respondent cannot claim prior rights or legitimate interest in the domain name, as the L’ORÉAL [Mark] precedes the registration of the disputed domain name for years”; c) “Respondent is not commonly known by the disputed domain name or the name ‘L’ORÉAL’, in accordance with paragraph 4(c)(ii) of the Policy”; d) “Respondent cannot assert that, before any notice of this dispute, it was using, or had made 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, in accordance with paragraph 4(c)(i) of the Policy”; e) “[T]here is no indication that Respondent is using, or intending to use, the disputed domain name, in a legitimate, noncommercial or fair use manner”; f) “[G]iven Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights”; g) “[M]erely registering a domain name with a “.blog” TLD is not enough to qualify as genuine and noncommercial criticism”; h) “Respondent […] has not yet used [the disputed domain name] to publish a website, any website, and certainly not a website or a blog about Complainant”; i) “Respondent is not using Complainant’s L’ORÉAL [Mark] in the disputed domain name to communicate a message but is rather using it to falsely imply that Respondent is at the origin of the [disputed] domain name”. The disputed domain name has been registered and is being used in bad faith because: a) Complainant’s reputation is worldwide, making it unlikely that Respondent was not aware of Complainant’s rights in [the L’Oréal Mark]”; b) “[Bad faith can be 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. bad faith by Respondent”; c) “[K]nowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration”; d) “It is most likely to be believed that Respondent registered the domain name e) “[G]iven Complainant’s goodwill and renown, and the nature of the disputed domain name, Respondent could simply not have chosen the [disputed]domain name f) “Respondent’s passive holding of the domain name [satisfies] the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith”; and g) “[G]iven Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. A. Identical or Confusingly Similar To prove this element, Complainant must have trade or service mark rights and the disputed domain name must be identical or confusingly similar to Complainant’s trade or service mark. Based upon the trademark registrations cited by Complainant, as well as supporting documents submitted as evidence and the decisions of prior UDRP panels, the Panel finds that Complainant has through decades of use established trademark rights in and to its well-known L’Oreal Mark in connection with the services identified in section 4 above. Complainant contends, inter alia, that the disputed domain name is confusingly similar to its well-known and famous L’Oreal Mark in which Complainant has rights because “the incorporation of a well-known trademark in its entirety [within the disputed domain name] may be sufficient to establish that the [disputed] domain name is identical or confusingly similar to Complainant’s [L’Oréal Mark]”. Previous panels have found Complainant’s L’Oréal Mark to be “well-known” or “famous”. See, L’Oréal, v. Hoang lan / Whois Privacy Protection Service, Inc.,WIPO Case No. D2016-0917; L’Oréal S.A. v. Lianfa,WIPO Case No. DPW2014-0003; L’Oréal v. Vitaly P Pak,WIPO Case No. D2012-0521; L’Oréal v. Wen Tao,WIPO Case No. D2013-0291; L’Oréal v Rampe Purda/Privacy- Protect.org,WIPO Case No. D2020-0870. For the disputed domain name to be found identical or confusingly similar to the L’Oréal Mark, the relevant comparison is with the second-level portion “loreal” of the disputed domain name, Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 (the issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.) The Panel agrees and notes that section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. Given that Complainant’s famous and well-known L’Oréal Mark is readily recognizable as incorporated in its entirety into the disputed domain name here, this Panel finds the disputed domain name confusingly similar (indeed, it is identical, except for punctuation and accent marks) to the L’Oréal Mark in which Complainant has established trademark rights. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate evidence, a complainant is generally deemed to have satisfied the second element, WIPO Overview 3.0, section 2.1. See also, Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register its L’Oréal Mark or to register any domain name incorporating Complainant’s L’Oréal Mark. Prior panels under the Policy have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA,WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”). Complainant contends Respondent is not commonly known by the disputed domain name or the name “L’ORÉAL”, in accordance with paragraph 4(c)(ii) of the Policy”. The Panel finds upon review of the record and evidence submitted by Complainant that Respondent is not commonly known by the disputed domain name. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been authorized or licensed to use Complainant’s Mark or is commonly known by the disputed domain name. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). The Panel has found above that the disputed domain name is confusingly similar to Complainant’s L’Oréal Mark. The Panel accepts Complainant’s contentions that Respondent is not commonly known by the disputed domain name and that Respondent has never been authorized by Complainant to use Complainant’s L’Oréal Mark. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has submitted evidence in the record to support its contention that the disputed domain name at the time of filing the Complaint, “resolved towards the default page of the registrar and e-mail servers were configured on the disputed domain name and that Respondent […] has not yet used [the disputed domain name] to publish a website, any website, and certainly not a website or a blog about Complainant”. Complainant claims, therefore, that Respondent is neither making active use of the disputed domain name in connection with its own bona fide offering of goods or services, nor making fair use of the disputed domain name without intent for commercial gain. The Panel notes that due to the nature of domain name dispute practice where the UDRP proceeding normally limits the parties to a single round of filings to set out their arguments (to be supported by appropriate evidence), the complainant must in some sense anticipate potential argument that might be raised by a respondent or even by a panelist in the event of a default where, as here, no response was received. Due to the limited submissions allowed under the Policy, filing a UDRP Complaint has in some respects been compared, to filing a motion for summary judgment in court. See e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com",WIPO Case No. D2000-0847 (limited submissions under Policy makes UDRP proceedings “somewhat akin to a summary judgment motion under the United States Federal Rules of Civil Procedure”). Complainant has argued for example, that the “.blog” gTLD could be used for purposes of commentary, possibly criticism that could be protected as legitimate fair use under this element of the Policy. While Complainant’s decision to raise this point and their corresponding defenses is reasonable, the Panel considers such speculation unnecessary where no use has been made of the domain for any site, much less one providing criticism of Complainant or its products. See Section 2.6 of the WIPO Overview 3.0. Further no evidence anticipating such use has been submitted by Respondent. This Panelist agrees with Complainant, therefore, and finds that merely registering a domain name with a “.blog“ TLD is not enough to qualify as genuine and noncommercial criticism, and therefore, insufficient for a finding of legitimate fair use. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy, paragraph 4(b): (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. The Panel finds that Respondent has registered the disputed domain name in bad faith for at least the following reasons. Complainant contends that given the renown and worldwide use by Complainant of the L’Oréal Mark, it is implausible that Respondent was unaware of Complainant when it registered the disputed domain name, and, therefore, Respondent’s knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration”. See cases cited in Section 6B above supporting the well-known and worldwide fame of Complainant’s L’Oréal Mark. The Panel finds that Respondent’s registration of the disputed domain name with awareness of Complainant and the L’Oréal Mark, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by the Respondent. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019-0624. The Panel also finds as one prior UDRP panel did, that where a domain name such as the disputed domain name here is so obviously connected with such a well-known mark and services, its very use by someone with no connection with the services suggests opportunistic bad faith. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226. Given that the disputed domain name is so obviously connected with Complainant and Complainant’s established rights in its L’Oréal Mark through its use of the L’Oréal Mark for almost 70 years as shown in the evidence submitted by Complainant, the Panel finds that Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. See Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492. The Panel also finds that Respondent’s use of the disputed domain name is in bad faith. Complainant contends Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel concluded that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent because: (1) Complainant’s trademark had a strong reputation and was widely known; (2) Respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. See, Telstra Corporation Limited v. Nuclear Marshmallows, supra. As in Telstra Corporation Limited v. Nuclear Marshmallows, supra,Complainant here has a strong, worldwide reputation and Respondent has provided no evidence of its actual or contemplated use, but has concealed its identity, which this Panel considers supportive of a finding of bad faith use of the disputed domain name. In addition, in light of the long history of Complainant’s trademarks and Complainant’s significant renown and brand recognition in the United States, where Respondent is located, the Panel finds it is likely that Respondent knew of Complainant’s mark and by incorporating it in its entirety into the disputed domain name, Respondent sought to obtain a commercial benefit by attracting Internet users based on the confusion he created between the disputed domain name and the L’Oréal Mark. See Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850. The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied 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 Scott R. Austin
Sole Panelist
Date: March 13, 2020
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