The Complainants are Laboratoires M&L, France, and L’Occitane International S.A., Switzerland, represented by Wilhelm Gillieron Attorney Corp., Switzerland.
The Respondent is Ronald Tsitsey, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 21, 2021, 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 January 25, 2021. On January 21, 2021, the Center sent email communications in English and Russian regarding the language of the proceeding. The same day the Respondent responded with the following email in English “take your domain and stop sending your spam into my inbox!!!!!!!!!!!!!!!!! Enough!!!!!!!!!!”. The Complainant requested English to be the language of the proceeding on January 27, 2021. 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 English and Russian, and the proceedings commenced on February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Respondent did not submit any formal response. The Center appointed Olga Zalomiy as the sole panelist in this matter on March 8, 2021. 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 Complainants are a part of L’Occitane Group, a global, natural and organic ingredient-based cosmetics and well-being products manufacturer and retailer. Laboratoires M&L (“the Complainant 1”) owns several trademark registrations for the well-known L’OCCITANE trademark, such as: -International Registration No. 1006052, registered on August 8, 2008; -International Registration No. 579875, registered on November 5, 1991; -International Registration No. 1330027, registered on Jun 28, 2016. L’Occitane International S.A (“the Complainant 2”) owns several domain name registrations including the L’OCCITANE trademark, such as ˂loccitane.com˃, registered on April 7, 1997. The Respondent registered the Domain Name on July 23, 2020. The Domain Name redirects to the Complainants’ website “www.hu.loccitane.com” in English and Hungarian. 5. Parties’ Contentions A. Complainant The Complainants are a part of L’Occitane Group, a global, natural and organic ingredient-based cosmetics and well-being products manufacturer and retailer. The Complainant 1 holds several trademark registrations for the L’OCCITANE mark. The Complainant 2 owns numerous domain name registrations including L’OCCITANE mark. The Complainants claim that the L’OCCITANE mark is well-known. The Complainants assert that the Domain Name is confusingly similar to the Complainants’ mark because the addition of a geographical term “hu” is merely descriptive and does not exclude the likelihood of confusion. The Complainants assert that the term “hu” exacerbates the confusion because it makes Internet users mistakenly believe that the website connected to the Domain Name is the official website of the Complainants in Hungary. The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name because: 1) the Respondent is not commonly known by the Domain Name; 2) the Respondent does not own any trademark/service mark rights related to the L’OCCITANE term; 3) the Complainants have never authorized, nor granted any license to the Respondent allowing it to use the L’OCCITANE trademark in any way; 4) the Respondent’s use of the Domain Name does not demonstrate any intent to use or preparations to use it in connection with a bona fide offering of goods or services. The Complainants allege that the Respondent registered and is using the Domain Name in bad faith because the Respondent used the Complainants’ well-known trademark in the Domain Name and because the Domain Name automatically redirected users to the official Hungarian version of the Complainants’ website, it is obvious that the Respondent was aware of the Complainants’ trademark when it registered the Domain Name. The Complainants argue that the Domain Name so obviously connected with the Complainant 1’s well-known trademark that its very use by someone with no connection with the Complainants suggests opportunistic bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Respondent sent three emails dated January 21, 2021, February 3, 2021 and February 9, 2021 with essential the same text in English requesting that Complainant take their Domain Name and stopped sending emails to the Respondent. 6. Discussion and Finding 6. 1. Procedural Issue – Consolidation of the Parties Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. Multiple complainants may file a single complaint against a respondent if the complainants establish that 1: “(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.2 The Panel finds that consolidation in this case is proper. The Complainants, filed a joint Complaint against the Respondent. The Complainant 1 holds and manages the L’Occitane Group’s trademark portfolio. The Complainant 2 holds and manages the L’Occitane Group’s domain name portfolio. The Respondent registered and is using the Domain Name, which is confusingly similar to the Complainant 1’s trademark to redirect to the Complainant 2’s domain name. The activities of the Respondent, explained in more detail in Section 6.3 B and C of this Decision, have affected both Complainants, and they therefore have a common grievance against the Respondent. It is equitable and procedurally efficient to permit the consolidation. Despite ample opportunity to do so, the Respondent did not object to the consolidation or indicated that it would suffer any prejudice. 6.2. Procedural Issue – Language of the Proceeding Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case. Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainants requested that English be the language of the administrative proceeding because of the following reasons: (i) there is an English version of the Registration agreement; (ii) the Domain Name is in Latin script and not in Cyrillic script; (ii) the word “L’Occitane” refers to the Complainant 1’s trademarks; and (iv) the Respondent understands English and speaks English because the Respondent’s January 21, 2021 email in English indicates a sufficient comprehension of the language. Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”3 . The Panel grants the Complainants’ request that English be the language of this proceeding because of the following circumstances: (i) it is likely that the Respondent understands English because the Respondent sent three e-mails in English to the Complainants and the Center and the Domain Name redirects to a Complainant’s 2 multi-language website available in English and Hungarian; (ii) the Complainants are not conversant with the Russian language and would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language; (iii) the language/script of the Domain Name is Latin and not Cyrillic. For the reasons stated, the Panel grants the Complainants’ request that English be the language of this proceeding. 6.3 Substantive Issues Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant 1 owns several trademark registrations for the L’OCCITANE trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. “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.”4 It is well-established, that the applicable generic Top-Level Domain (“gTLD”) should be disregarded under the confusingly similarity test as a standard registration requirement.5 Here, the Domain Name consists of the letters “hu”, which are similar to the country code top-level domain (“ccTLD”) for Hungary; a hyphen and the Complainant’s 1 L’OCCITANE trademark and the gTLD “.site”. Because the Complainant’s 1 L’OCCITANE trademark is recognizable within the Domain Name, neither the inclusion of the hyphen, nor the addition of the ccTLD for Hungry or the gTLD “.site” detracts from confusing similarity. Thus, the Domain Name is confusingly similar to the Complainant’s 1 L’OCCITANE trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To prove the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.6 Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is 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. The evidence shows that (i) the Respondent Ronald Tsitsey has not been commonly known by the Domain Name; (ii) the Complainants have never authorized, nor granted any license to the Respondent allowing it to use the L’OCCITANE trademark in any way; and iii) the Respondent’s use of the Domain Name does not demonstrate any intent to use or preparations to use it in connection with a bona fide offering of goods or services. There is no evidence that the Respondent owns any trademark/service mark rights related to the L’OCCITANE term. Moreover, the Respondent’s emails indicate that it does not own any rights or legitimate interests in the Domain Name, because all three of the emails state: “take your domain”. The Panel finds that the Complainants have made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainants are deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement of the respondent’s website or location, or of a product or service on the respondent’s website or location. See Policy, paragraph 4(b)(iv). Previous UDRP panels have 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 famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”7 . Further, UDRP panels may take judicial notice of the repute of a trade mark within their personal knowledge where it cannot reasonably be contested8 . The Panel takes a judicial notice of the Complainants’ L’OCCITANE mark being well-known 9. Therefore, the Respondent’s registration of the Domain Name, which is confusingly similar to the Complainant’s 1 mark, creates presumption of bad faith. Prior UDRP panels have found “the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, … (vi) absence of any conceivable good faith use.”8 Given that the Respondent does not have any rights or legitimate interests in the Domain Name and that it is redirecting users to Complainant’s 2 website “www.hu.loccitane.com”, the Respondent benefit financially from and/or unlawfully trade upon the renown associated with Complainants’ well-known trademarks and absence of any conceivable good faith use, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. The Complainant has satisfied the third element of the UDRP. 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 Olga Zalomiy 1 Section 4.11.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 2 Id. 3 Section 4.5.1 of the WIPO Overview 3.0. 4 Section 1.8, WIPO Overview 3.0. 5 Section 1.11.2, WIPO Overview 3.0. 6 Section 2.1, WIPO Overview 3.0. 7 Section 3.1.4, WIPO Overview 3.0. 8 Section 4.8, WIPO Overview 3.0. 9 See also, Loro Piana S.p.A. v. Duan Zuochun,WIPO Case No. D2012-1114, finding the L’OCCITANE mark to be well-known.
Sole Panelist
Date: March 17, 2021
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