The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is Darya Goshovskaya, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 2, 2020, 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 March 5, 2020, 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 March 9, 2020. On March 5, 2020, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On March 6, 2020, the Center received the Complainant’s response in which it confirmed its request for English to be the language of the proceedings. The Respondent did not comment on the language of the proceeding. 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 in both Russian and English, and the proceedings commenced on March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. The Response was filed with the Center on April 12, 2020. The Center appointed Mariya Koval as the sole panelist in this matter on April 21, 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 The Complainant, is a French personal care company and is one of the world’s largest cosmetics company, which has developed activities in the field concentrating on hair colour, skin care, sun protection, make-up, perfume, and hair care. The Complainant employs 86,000 employees, and is present in 150 countries, including Russian Federation from 1990, where inter alia it has a factory and Training Academies. The Complainant has provided evidence that previous UDRP panels have determined the L’OREAL trademark (the “L’OREAL Trademark”) as being well-known or famous. See L'Oréal, v. Hoang lan / Whois Privacy Protection Service, Inc,WIPO Case No. D2016-0917 (“The Panel agrees that L'OREAL is a long-established and famous trademark”); L’Oreal v Rampe Purda/Privacy-Protect.org,WIPO Case No. D2010-0870 (“L'OREAL is clearly a widely known mark”). The Complainant is the owner of numerous L’OREAL Trademark registrations around the world, among which are: - International Registration No. 184970, registered on May 23, 1955, in respect of goods in classes 3 and 5; - International Registration No. 230114, registered on March 28, 1960, in respect of goods in classes 1 to 34; - Russian Federation Trademark No. 19334, registered on December 28, 1960, in respect of goods in classes 1 to 34. The Complainant operates, among others, domain names reflecting its L’OREAL Trademark for promotion of its goods: - The Disputed Domain Name was registered on July 4, 2018. At the date of this Decision, the Disputed Domain Name does not resolve to any active website. However, according to the evidence presented by the Complainant (Annex 1 to the Complaint) the Disputed Domain Name previously resolved to a website in Russian offering various hair products under the Complainant’s L’OREAL Trademark. 5. Parties’ Contentions A. Complainant The Complainant contends that it 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 Complainant’s brands are managed within the group by divisions that each have expertise in their own distribution channel. The Complainant further contends that the Disputed Domain Name is confusingly similar its L'ORÉAL Trademark in view of the Disputed Domain Name reproduces the Complainant’s Trademark in its entirety, which previous panels have considered to be “well-known” or “famous”. The Complainant argues that the lack of apostrophe in the Disputed Domain Name does not change the Trademark pronunciation. Furthermore, the Disputed Domain Name associates the Complainant’s L’ORÉAL Trademark with the term “market”, however, it is well established that, where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive, geographical, pejorative, meaningless, or other terms does not prevent a finding of confusing similarity. As the dominant feature of the Disputed Domain Name is the Complainant’s L’ORÉAL Trademark, the adjunction of the term “market” is insufficient to avoid confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following: - the Respondent is neither affiliated with the Complainant in any way nor has been authorized by the Complainant to use and register its Trademark, or to seek registration of any domain name incorporating the said Trademark; - the Respondent cannot claim prior rights or legitimate interest in the Disputed Domain Name as the Complainant’s L’ORÉAL Trademark precedes the registration of the Disputed Domain Name for years; - the 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; there is simply no evidence that the Respondent may be commonly known by the name L’ORÉAL; - the Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. The Disputed Domain Name, which incorporates the Complainant’s Trademark, previously pointed towards an online retail website in Russian reproducing the Complainant’s L’ORÉAL Trademark and offering for sale various the Complainant’s products, ranging from shampoos, hair conditioners, hair volume sprays, hair oils, to hair products remedies, without the consent of the Complainant; - Email servers have been configured on the Disputed Domain Name and thus, there might be a risk that the Respondent is engaged in a phishing scheme. The Complainant further asserts that the Respondent registered and used the Disputed Domain Name in bad faith since the Complainant is well-known throughout the world and accordingly it is implausible that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name. Furthermore, the Complainant contends that the Respondent’s website is such that it will likely lead to confusion among Internet users as to the Complainant’s sponsorship of or affiliation with the resulting website. Such use is further evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. Finally, the Complainant alleges that given the Complainant’s goodwill and renown worldwide, and the nature of the Disputed Domain Name, which is confusingly similar to the Complainant’s Trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the Disputed Domain Name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. B. Respondent The Respondent submitted a response in Russian in which she asserts that the law of the Russian Federation must be applied to this proceeding and that the Complainant did not present any evidences of domain names registrations and their belonging to the Complainant. The Respondent presented its own contentions below. “В производстве Центра Всемирной Организации интеллектуальной Собственности по Арбитражу и Посредничеству в соответствии с Единой политикой по рассмотрению споров в сфере доменных имён, утверждённой Корпорацией Интернета по присвоению имён и номеров от 24.10.1999 года, Правилами Единой Политики по рассмотрению споров в сфере доменных имён и номеров, утверждёнными ICANN от 28.09.2013 года, вступившими в силу 31.07.2015 года и Дополнительными правилами ВОИС к политике от 31.07.2015 года (далее по тексту – Арбитраж), находится дело № D2020-0486, возбужденное по жалобе относительно незаконного использования доменных имён. Лицо, в отношении которого подана жалоба, по которой возбуждено дело № D2020-0486, считает необходимым дать следующие пояснения. Привлечённое к участию в деле лицо находит жалобу необоснованной по следующим основаниям. Как следует из материалов дела, привлечённым к участию в деле лицом, является лицо, личным правом которого является правом Российской Федерации, поэтому применению подлежат нормы права Российской Федерации. В связи с чем считаем необходимым обратить внимание на следующие обстоятельства. В силу п. 1 ст. 1232 Гражданского кодекса РФ в случаях, предусмотренных ГК РФ, исключительное право на результат интеллектуальной деятельности или на средство индивидуализации признается и охраняется при условии государственной регистрации такого результата или такого средства. Как следует из жалобы, доказательства регистрации интеллектуальной деятельности в виде доменных имён заявителем не предъявлены. В связи с изложенными обстоятельствами привлечённое к участию в деле № D2020-0486 от 23.03.2020 года лицо полагает, что требования заявителя подлежат оставлению без удовлетворения по причине недоказанности использования доменных имён, а также принадлежности их заявителю.” The Respondent has not replied to the Complainant’s contentious made under the UDRP. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith. 6.1. Language of Proceedings In accordance with paragraph 11 of the Rules unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian. The Complainant filed a request for the English language proceeding, submitting the following arguments: - The Complainant is located in France and has no knowledge of Russian. To proceed in this language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings; - the Disputed Domain Name includes only Latin characters which strongly suggests that the Respondent has knowledge of languages other than Russian. Neither the Complainant, nor its representative are not obviously able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding. The Disputed Domain Name and generic Top-Level-Domain (“gTLD”) comprise Latin script. Furthermore, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Russian, did not make any submissions regarding the language of the proceeding. Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition. Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding. A. Identical or Confusingly Similar The Complainant has properly asserted its rights in the L’ORÉAL Trademark due to the long use and number of registrations globally, including in the Russian Federation. Moreover, previous UDRP panels acknowledged the L’ORÉAL Trademark as well-known. The Disputed Domain Name incorporates the L’ORÉAL Trademark in its entirety (without apostrophe) with addition of the word “market”, combined with the gTLD suffix “.com”. The gTLD “.com” typically is not taken into account for purposes of the first element under the Policy. In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In this case, the addition of the dictionary term “market” to the L’ORÉAL Trademark does not prevent a finding of confusing similarity. Also, pursuant to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests The Complainant has used its L’ORÉAL Trademark for more than 100 years and its domain name ˂loreal.com˃ – since 1997, which is long before the Respondent registered the Disputed Domain Name in 2018. The Complainant’s L’ORÉAL Trademark is well-known throughout the world. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its Trademark, or to seek registration of any domain name incorporating said Trademark. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in view of the Disputed Domain Name previously resolved to a commercial website, where wide range of hair products under the L’ORÉAL Trademark was offered. Such use of the Disputed Domain Name creates strong impression of connection with the Complainant; however, at the same time the website under the Disputed Domain Name contained no information with respect to the relationship with the Complainant (or lack thereof). Therefore, the Panel cannot consider such commercial use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use. According to the WIPO Overview 3.0, section 2.8.1 panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. As is seen from the circumstances of this case the website under the Disputed Domain Name does not disclose the relationship between the Complainant and the Respondent. On the contrary, it creates an impression of official or related Complainant’s website, without being the same. Thus the Respondent does not satisfy the conditions of the Oki Data test. Also, in accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Therefore, the addition of the dictionary term “market” to the Complainant’s Trademark in the Disputed Domain Name also evidences that the Respondent was well aware of the L’ORÉAL Trademark at the time of registration of the Disputed Domain Name and has done so for the only purpose to create an impression that the Disputed Domain Name is connected with the well-known Complainant’s L’ORÉAL Trademark. In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel finds that the second element of the UDRP has been met by the Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you [respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The Panel comes to the conclusion that the Disputed Domain Name was registered and is being used in bad faith in view of the following. The Complainant’s products under the L’ORÉAL Trademark are well-known. The Disputed Domain Name was registered long after the Complainant registered its L’ORÉAL Trademark. The Disputed Domain Name incorporates the well-known L’ORÉAL Trademark in its entirety, therefore the Pane finds that the Respondent was aware of the Complainant’s L’ORÉAL Trademark when she registered the Disputed Domain Name. In accordance with section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a well known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is confusingly similar to the Complainant’s well-known L’ORÉAL Trademark. Moreover, the Respondent’s knowledge of the Complainant’s Trademark is also supported by the use of the Disputed Domain Name which previously resolved to a website selling the products under the Complainant’s L’ORÉAL Trademark. In view of the Disputed Domain Name previously resolved to website which displayed the Complainant’s Trademark that, in its turn, gave strong impression that this website was related to or authorized by the Complainant, the Internet users most likely considered that the Disputed Domain Name referred to the one of the Complainant’s or its distributor’s official websites. Furthermore, the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, is evidently deceptive for consumers. The Respondent obviously chose to register the Disputed Domain Name, which is confusingly similar to the Complainant’s L’ORÉAL Trademark, for the purpose of attracting the Internet users to its competing website (or probably websites) 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 of the products sold on it. In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith. 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 Mariya Koval
-
-
Sole Panelist
Date: May 5, 2020
Full & Egal Universal Law Academy