Complainant is L’Oréal, France, represented by Dreyfus & Associés, France.
Respondent is Ning Li, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2020. On April 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 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 Complainant, L’Oréal, is a French industrial group that specializes in cosmetics and beauty products. It has a portfolio of 36 brands, including Maybelline, employs 86,000 employees, and is present in 150 countries worldwide. Maybelline New York is a leading cosmetics brand, available in over 100 countries, including China. Complainant and its trademark MAYBELLINE enjoy a worldwide reputation. Complainant owns numerous MAYBELLINE trademark registrations around the world including the following: - International trademark MAYBELLINE No. 959892, registered on January 9, 2008; - European Union trademark MAYBELLINE No. 010950095, registered on October 17, 2012; - Chinese trademark MAYBELLINE No. 1616379, registered on August 14, 2001. Complainant is also the registrant and operates the following domain name reflecting its trademark to promote its services: - Complainant became aware of Respondent’s registration of the Domain Name On January 17, 2020, Complainant sent a notification to the registrar via email to request that the Domain Name The Domain Name was registered on December 10, 2019, and redirects the user to a website displaying links related to online gambling and pornography. 5. Parties’ Contentions A. Complainant Complainant contends that: (i) the Domain Name Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the 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 Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MAYBELLINE marks, which have been used since at least as early as 1997, well before Respondent registered the Domain Name on December 10, 2019. With Complainant’s rights in the MAYBELLINE trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc/Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s MAYBELLINE trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is fully incorporated into the Domain Name at the second level, and the addition of the letters “www” which are generally known to stand for “world wide web” and precedes many domain names in URL addresses, is insufficient to avoid a finding of confusing similarity with the Complainant’s mark. See, e.g., BJ’s Wholesale Club v. Lisa Katz,WIPO Case No. D2015-1601. Nor does the addition of the geographical term “china” after the mark prevent a finding of confusing similarity. See, e.g., Accor v. Serdar Ceylan,WIPO Case No. D2011-2231 and LeSportsace Inc. v. Zhao Zhao,WIPO Case No. D2012-2505. Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the MAYBELLINE marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MAYBELLINE trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the Domain Name to redirect Internet users to a gambling and pornographic site. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interest in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you 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 finds that Complainant provided ample evidence to show that registration and use of the MAYBELLINE marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including China, where Respondent resides. Therefore, Respondent was likely aware of the MAYBELLINE marks when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods/Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s well‑known MAYBELLINE trademark, the letters “www” and the term “china” suggest that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the MAYBELLINE mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well‑known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. Moreover, Respondent uses the Domain Name to redirect users to a website displaying links related to online gambling and pornography. Respondent’s use and association of the Domain Name with a pornographic or gambling site may result in tarnishing Complainant’s well-known MAYBELLINE trademark, Complainant’s good will and reputation. The Panel finds that by using the Domain Name incorporating Complainant’s trademark in its entirety in connection with a website to offer products or services unrelated to those offered by Complainant, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark, and to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein. Indeed, Respondent’s registration and use of the Domain Name to divert traffic to a gambling and pornographic site is bad faith under paragraph 4(a)(iii) of the Policy. Moreover, such use of the Domain Name disrupts Complainant’s business. In addition to the circumstances of registration and use referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under 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 Domain Name Kimberley Chen Nobles
Sole Panelist
Date: June 4, 2020
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