The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / 国景 林, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 25, 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 May 27, 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 June 1, 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, and the proceedings commenced on June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2021. The Center appointed Ellen B. Shankman as the sole panelist in this matter on July 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 Complainant, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty and is the first cosmetics group worldwide. It has a portfolio of 36 brands, employs 86,000 employees, and is present in 150 countries. The date of the Domain Name registration is January 18, 2021. The Complainant provided evidence of multiple trademark registrations for the VICHY mark, including, inter alia: United States trademark VICHY Registration No. 3278055, registered on August 7, 2007, duly renewed and covering goods in Class 3; and European Union trademark VICHY Registration No. 013131669, registered on December 10, 2014, covering goods in Class 3. The Complainant provided evidence that the Domain Name first resolved to an inactive page and later resolved to a website in Chinese with links to gambling and pornography. The Panel also conducted an independent search to determine that the Domain Name currently resolves to a page in Chinese with numerous links and advertising. The Complainant also provided evidence of “cease and desist” demand letters (“C&D” letters) sent to the Registrar and the Respondent to which the Complainant asserts it never received response. However, in the interim the above identified change in resolution of the Domain Name page occurred. 5. Parties’ Contentions A. Complainant The Complainant and its trademark VICHY enjoy a worldwide reputation. The Complainant owns numerous VICHY trademark registrations around the world. The Complaint alleges that one of the Complainant’s major brand is VICHY. Since 1931, VICHY’s skin products combine the virtues of its internationally renowned volcanic water with the pharmaceutical expertise of the Vichy’s laboratories. VICHY is a worldwide brand, sold exclusively in pharmacies. The Complainant claims that it became aware of the Respondent’s registration of the Domain Name which entirely reproduces its trademark VICHY and associates it with the term “shopping”. The Domain Name initially resolved towards an inactive page. As the Complainant considered this Domain Name as infringing by its composition, it attempted to resolve the matter amicably, and sent a notification to the Registrar on March 11, 2021 in order to request the blocking of the Domain Name. However, the Registrar’s response was not satisfactory. In the meantime, the situation has changed and the domain started directing to a website containing pornographic videos and links in Chinese, related to online gambling, which is extremely damaging for the Complainant’s reputation. In the view of the circumstances, the Complainant sent a notification to the hosting company and requested the deactivation of the website on March 30, 2021. No response was obtained despite several reminders. As no amicable settlement could be found, the Complainant had no other choice but to initiate an UDRP procedure against the Respondent in order to obtain the transfer of the Domain Name. The Domain Name reproduces the Complainant’s trademark VICHY in its entirety. The addition of the term “shopping” at the end cannot prevent any likelihood of confusion. On the contrary, such likelihood of confusion is increased as Internet users may wrongly believe that the Domain Name directs to a website authorized by the Complainant allowing them to shop Vichy’s products. Furthermore, the trademark VICHY is well known all over the world as the products they designate have been produced for over 90 years. The reputation of the thermal source from the city of Vichy (France) goes beyond the frontiers and has reached consumers everywhere, making VICHY cosmetics one of the most reputed health and beauty care products. The Domain Name which incorporates the Complainant’s trademark, resolves towards a pornographic website in Chinese, containing links related to online gambling, which is extremely damaging for Complainant’s reputation. This cannot be considered as a use of the Domain Name in connection with a bona fide offering of goods and services. The Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names. Moreover, since the Respondent applied for this Domain Name under a proxy and even when the identity was revealed, the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Also, the Complaint alleges that the Respondent registered the Domain Name with a privacy shield service to hide his identity and prevent the Complainant from contacting him. Thus, such a behaviour highlights the fact that the Respondent has no rights or legitimate interests in respect of the Domain Name. Moreover, by clicking on any of these links, the Internet users are redirected to other websites in Chinese, requesting Internet user’s personal data which represents an obvious proof of the Respondent’s intention to steal valuable and sensitive information. Consequently, the use of the Domain Name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The Complainant alleges that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. The Complainant sent its notices to both the privacy service listed on the Domain Name’s WhoIs and the relevant Registrar to no avail. To summarize the Complaint, the Complainant is the owner of registrations for the trademark VICHY, in respect of cosmetics. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that comprises the Complainant’s VICHY trademark in its entirety, with the mere addition of the generic term “shopping” as well as the generic Top-Level Domain (“gTLD”) “.com”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. The addition of these does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has linked the Domain Name to gambling and pornographic sites in Chinese which is evidence of opportunistic bad faith. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VICHY. Further, the Panel finds that the Domain Name integrates the Complainant’s marks in its entirety and that the Domain Name is confusingly similar to the Complainant’s trademark. In addition, the Panel finds that the addition identified earlier in the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”. Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Name, does not have permission to use the VICHY mark, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to redirect Internet users to various third party websites, including gambling and pornographic websites, almost certainly for the Respondent’s commercial gain, which is not a legitimate noncommercial purpose. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo,WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”). By registering the Domain Name that comprises the Complainant’s trademark in its entirety, together with the term “shopping” and then linking the Domain Name to other commercial (and illicit links) the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about this distinctive sign to its own website, where sponsored links had been published, and that the Respondent’s purpose in registering the Domain Name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about the Complainant. See Hoffmann-La Roche Inc. v. Doroven,WIPO Case No. D2010-1196. A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy paragraph 4(b)(iv). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4 (“Panels have moreover 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: (i) actual confusion, (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, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith. The Panel’s view that when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant. In addition, the Panel believes that the Respondent’s website featuring links to third-party websites that appear to create revenue for the Respondent (PPC links) using a confusingly similar domain name is also evidence of and supports a finding of registration and use in bad faith. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). See also PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”). The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc.,WIPO Case No. D2003-0230. See also WIPO Overview 3.0, section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”). The Panel finds that this is a classic example of the unfortunate abusive and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark, in bad faith use and registration. The Panel is especially persuaded by the bad faith of the Respondent who after being contacted with the cease and desist letter chose to redirect the original “inactive” website to one that has active arguably tarnishing content/links. Further, the fact that the Domain Name used to be inactive does not prevent a finding of bad faith. UDRP panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3). Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Name Ellen B. Shankman
Sole Panelist
Date: July 16, 2021
Full & Egal Universal Law Academy