The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected, Panama / Young Boss, Young, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 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 June 29, 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 July 2, 2020. 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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020. The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 3, 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 factual findings pertinent to the decision in this case are that: (1) the Complainant sells cosmetic and beauty products by reference to the trade mark, L’ORÉAL (the “Trade Mark”); (2) the Trade Mark is the subject, inter alia, of United States Patent and Trademark Office (“USPTO”) Reg. No. 86705120, registered on April 26, 2016; (3) the disputed domain name was registered on February 25, 2020; (4) currently the disputed domain name is not in use but prior to June 2020, it resolved to a landing page hosted by the Registrar with links to the Complainant and to beauty products in general; (5) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark; and (6) the Respondent did not answer pre-Complaint correspondence from the Complainant. 5. Parties’ Contentions A. Complainant The Complainant asserts trade mark rights in L’ORÉAL. It holds national and international registrations for the Trade Mark and submits that the disputed domain name is “virtually identical” to the Trade Mark. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because it has no trade mark rights; it is not known by the disputed domain name; and what use there has been of the disputed domain name was not bona fide. The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. The Complainant accordingly requests the Panel to order transfer of the disputed domain name. B. Respondent The Respondent did not submit a Response. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the 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. It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark. Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy. 1 The Complainant provides evidence of its USPTO registration2 of the Trade Mark and so the Panel finds that the Complainant has trade mark rights. For the purposes of comparing the disputed domain name with the Trade Mark, the generic Top-Level Domain (“gTLD”) “.email” can be disregarded.3 The Panel finds that the disputed domain name is identical to the Trade Mark. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant may first make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name. 4 Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy: “(i) before any notice to you of the dispute, your use of, or 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” In consequence of these proceedings the Registrar advised the Center that the disputed domain name registrant is “Young Boss”. That name does not suggest that the Respondent might be commonly known by the disputed domain name and the Panel finds no other evidence that the Respondent might be known by the disputed domain name. Further, the Complainant states that there is no association between the Parties and the Panel finds that there is nothing to contradict that claim. There is no evidence that the Respondent has any trade mark rights. As stated already, the disputed domain name is currently not in use and the evidence is that prior to June 2020, it resolved to a landing page hosted by the Registrar with links to the Complainant and to beauty products in general. Regardless of when the matter is assessed, there has been no use of the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out circumstances, which shall be evidence of the registration and use of a domain name in bad faith. They are: “(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 use of the disputed domain name is caught by subparagraph 4(b)(iv) above. The Panel has already found the disputed domain name to be identical to the Trade Mark for the purposes of the Policy. Confusion is likely, and arguably inevitable. At the time the disputed domain name was in use, the Panel finds it more likely than not that the Respondent benefited from a commercial gain. In terms of subparagraph 4(b)(iv), the Panel finds that the Respondent has used the disputed domain name to attract Internet users to an online location by causing a likelihood of confusion as to the source or endorsement of that location. Furthermore, the fact that the disputed domain name does not currently the resolve to an active website does not prevent the Panel from finding, as separate matters, registration and use in bad faith. Previous decisions under this Policy where proceedings were brought by the Complainant have held that the Trade Mark is well-known, if not famous. Absent a Response, the Panel makes the reasonable inference that the Trade Mark was known to the Respondent at the time of registration of the disputed domain name. The Panel finds registration in bad faith. Further, even in the absence of actual use, the Panel finds bad faith use on the basis of so-called “passive holding” as first laid out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel finds that case to be directly applicable to the circumstances here involving the Trade Mark. The Panel finds that the Complainant has satisfied the third and final element 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 Debrett G. Lyons 1 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Sole Panelist
Date: August 12, 2020
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