The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is N Rahmany, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2021, 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 December 9, 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 December 10, 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 December 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2022. The Respondent submitted a response on December 13, 2021 and issued a further email to the Center on January 10, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 7, 2022. 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 BackgroundThe Complainant is a French industrial group which specializes in the field of cosmetics and beauty. It has a portfolio of 36 brands together with a complement of 88,000 employees, and is present in 150 countries. On September 30, 2021, the Complainant reported third-quarter revenue of EUR 7.9 billion. On December 3, 2021, the Complainant’s share price was valued at around EUR 400.
The Complainant’s shares are traded on the Euronext Paris market in France and the Nasdaq market in the United States, the latter as an American Depositary Receipt (“ADR”). The Complainant’s ADR is identified on the applicable stock exchange in the United States under the ticker symbol “LRLCY”. A ticker symbol is a combination of characters, usually letters, selected by a company when it issues shares to the public. It is often related to the company’s name and is used by those providing information on the stock exchange to identify the company. A Google search produced by the Complainant demonstrates that all references to “LRLCY” are references to the Complainant’s company.
The Complainant is the owner of Benelux Registered Trademark no. 1450917 for the word mark LRLCY, registered on September 28, 2021 in Classes 3, 35 and 36.
The disputed domain name was registered on August 6, 2021 and points to a parking page provided by the Registrar. In a letter apparently addressed to the CEO of the Complainant which bears the date of August 3, 2021 and was postmarked August 11, 2021, a person signing themselves only with the Respondent’s email address (and using the Respondent’s surname on the envelope) wrote: “Your United States trade stock exchange symbol of lrlcy is not registered in the United States. / I am the register [sic] owner of lrlcy.com. / I would like to propose selling you the registered domain name as to avoid any conflict and issues. / If you are willing to purchase please email me your best offer and I will consider your offer. / Looking forward to hearing from you soon / Thank you”.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
Identical or confusingly similar
The Complainant enjoys a worldwide reputation and the “LRLCY” sign is known worldwide by professionals in the financial sector as the ticker symbol for the Complainant on the stock market. Said sign cannot be linked to any other company and such professionals will immediately recognize the Complainant from it. This confers a reputation upon “LRLCY” worldwide. It is also protected by Benelux Registered Trademark no. 1450917. The requirements of the first element of the Policy are satisfied by such mark. The disputed domain name is identical to such mark and reproduces it in its entirety. Panels have considered that such entire reproduction may be sufficient to establish identity or confusing similarity for Policy purposes. It does not matter for the purposes of this element that the disputed domain name predates the Complainant’s trademark.
Rights or legitimate interests
The Respondent’s statement in its letter demonstrates that the Respondent knows that only the Complainant can have a legitimate interest in registering the disputed domain name. The Respondent is not commonly known by the name “LRLCY”, which is usually integrated into the addresses of web pages providing information on the stock exchange and the Complainant’s share price. All related Google search results reference the Complainant. The Respondent is not affiliated with the Complainant in any way, nor permitted to use the “LRLCY” sign or to register the disputed domain name. Panels have found that in the absence of such permission to use a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name concerned could reasonably be claimed. The Respondent has not demonstrated use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The suggestion of selling the disputed domain name “to avoid any conflict and issues” gives the letter a form of hidden threat. The disputed domain name directs users to a pay-per-click (“PPC”) parking page which is likely to generate revenue, so that it cannot be inferred that the Respondent’s use is noncommercial.
The disputed domain name was registered for the sole purpose of selling it to the Complainant, which cannot amount to a legitimate interest or a bona fide offering of goods and services.
Registered and used in bad faith
Based on the Respondent’s letter, it is obvious that the disputed domain name was registered in order to resell it to the Complainant for financial gain. The mention of “conflict and issues” demonstrates that the Respondent is aware of the sensitive nature of the disputed domain name and likely damage to the Complainant if it should be used to disseminate false information. Said letter is a veiled threat to the Complainant’s stock price. An offer to sell a domain name by a respondent in excess of out-of-pocket expenses can be compelling evidence of bad faith registration.
The Respondent has used the disputed domain name to direct Internet users to a PPC webpage. Numerous panels have considered this behavior as an additional proof of bad faith. The Respondent is trying to benefit from the Complainant’s fame and to scare the Complainant into buying the disputed domain name from the Respondent in excess of the Respondent’s out-of-pocket costs. It is more than likely that the Respondent’s primary motive in registering the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest confusion.
The Respondent is a well-known cybersquatter and has been the subject of many proceedings under the Policy.
B. RespondentIn the Response contained in the Respondent’s email of December 13, 2021, the terms of which were partially repeated in a further email of January 10, 2021, the Respondent contends as follows:
The Complaint should be denied. The Respondent is the only registered user of the disputed domain name. The disputed domain name does not conflict with and does not infringe a trademark of the Complainant. The Respondent did not register the disputed domain name in bad faith as the Complainant claims. The Complainant is a billion dollar company and, like many top companies, they should have registered the name internationally. The Respondent is not responsible for the Complainant’s negligence. If the Complainant is interested, the Respondent will sell the disputed domain name to the Complainant for the right price.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe first element assessment under the Policy is typically conducted in two stages. First, the Complainant must demonstrate that it has UDRP-relevant rights in a trademark. For the purposes of the first element assessment, the trademark concerned need not necessarily pre-date the registration date of the disputed domain name. Secondly, the disputed domain name is compared to the trademark, typically on a straightforward side-by-side basis, in order to determine whether the latter is recognizable in the former. The Top-Level Domain of the disputed domain name is usually disregarded in the comparison process on the basis that this is required for technical reasons only. In the event that the trademark is found to have been incorporated in its entirety in the disputed domain name, or that a sufficient portion has been included, such that the mark is recognizable therein, confusing similarity will generally be found.
The Complainant in the present case relies upon its Benelux mark, which is described in the factual background section above. The Respondent did not take issue with the Complainant’s submissions on this topic. The Panel finds that the Complainant has UDRP-relevant rights in said Benelux mark. Comparing the disputed domain name to this mark, the Panel notes that the mark is identical to the Second-Level of the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based on the Complainant’s submissions that the Respondent is not commonly known by the disputed domain name, is not affiliated with the Complainant nor permitted to use “LRLCY” sign or register the disputed domain name, has not demonstrated any preparations to use the disputed domain name for a bona fide offering of goods or services, and has attempted to sell the disputed domain name to the Complainant on the basis of a veiled threat of avoiding “any conflict and issues”.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might claim in respect of the disputed domain name. The Respondent does not make any specific assertions with reference to paragraph 4(c) of the Policy. Instead, the Respondent merely states that it is the only registered user of the disputed domain name and that this does not conflict with nor infringe a trademark of the Complainant. It does not elaborate further on this topic.
The disputed domain name exactly matches the Complainant’s stock ticker “LRLCY”, a moniker by which it is known to countless financial services professionals and investors worldwide. The ticker is partly an abbreviation of the Complainant’s corporate name and forms part of the address of numerous webpages designed to reference the Complainant’s activities and perform evaluations of the Complainant’s publicly traded shares. The Complainant shows by virtue of a Google search that all the results for this term reference the Complainant. It appears to have no other meaning, nor does the Respondent attempt to assert any such alternative meaning.
The facts of the case show that the disputed domain name was registered on August 6, 2021. In less than a week, the Respondent had obtained the Complainant’s address details and had sent a letter proposing that the Complainant purchase the disputed domain name from it. It appears to the Panel that the Respondent’s own position in registering the disputed domain name and making this approach was that the term “lrlcy”, as found in the disputed domain name, exclusively references the Complainant, and furthermore that the Respondent’s sole intent was therefore to resell the disputed domain name to the Complainant for an amount in excess of its out-of-pocket costs.
The Respondent attempts to escape the general thrust of the Policy by asserting that the disputed domain name does not constitute an infringement of the Complainant’s trademark. However, that is not the test which the Panel must apply under the Policy. On this particular element, the Panel must decide whether the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name. Although there may be some conceptual overlap, trademark infringement and abusive registration of domain names within the meaning of paragraph 4(a) of the Policy are not always the same thing (see Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza,WIPO Case No. D2003-0372, and 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461).
In referencing trademark infringement, it is possible that the Respondent might be alluding to the fact that the disputed domain name pre-dates the date of registration of the Complainant’s Benelux registered trademark in the mark LRLCY. However, that does not avail the Respondent in the circumstances of this particular case. There is good evidence before the Panel that the Complainant is a substantial international entity which is extremely well-known globally by the name of its stock ticker. Indeed, there is no evidence before the Panel that the combination of letters in the Second-Level of the disputed domain name means anything else other than the Complainant (as an entity whose shares are publicly traded) and the Respondent’s swift approach to the Complainant following its registration of the disputed domain name suggests that the Respondent knew and relied upon this fact, and that it intended to use the disputed domain name to target the Complainant. This would not confer rights or legitimate interests upon the Respondent within the meaning of the Policy.
In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case in respect of rights and legitimate interests and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances 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 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”.
For bad faith registration and use to be made out under the Policy, panels have typically determined that there must be a degree of targeting of a complainant or its mark, or at the very least that a respondent must have had the complainant or its trademark in mind when selecting the disputed domain name (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). Furthermore, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent1 .
In the present case, the Panel reasonably infers from the proximity in time between the date of registration of the disputed domain name and the date on which the Respondent wrote to the Complainant, and the terms of the Respondent’s letter itself, that the Respondent had the Complainant firmly in mind and intended to target it when it selected the disputed domain name. This inference is fortified by the Complainant’s evidence that the term “LRLCY” is a distinctive identifier exclusively referencing the Complainant, which is in widespread use globally by all interested parties in connection with the trading of the Complainant’s shares on the relevant public market. Such interested parties include financiers, investment houses, private investors and media outlets. It matters not, therefore, that the Complainant’s registered trademark for the word mark LRLCY post-dates the registration date of the disputed domain name. The Complainant was evidently well-known by that term long before the disputed domain name was registered, such that it can be concluded the Respondent was probably aware of the Complainant’s LRCY distinctive identifier, registering the disputed domain name to take advantage of its identity with the Complainant’s LRCY identifier. Indeed, the Respondent fails to address the submissions and evidence to this effect in the Complaint, merely responding with a conclusory allegation that it has not infringed the Complainant’s mark.
While the Respondent makes the bare assertion that it did not register the disputed domain name in bad faith, it provides the Panel with no evidence or submissions to support this and, in the absence of such, the facts and circumstances of the case as outlined above point firmly in the opposite direction. The Respondent adds that it has not infringed a trademark of the Complainant, and has violated no laws in the United States or internationally. As noted above, this is not the test which the Panel must apply under the Policy. The Policy deals with cybersquatting and the Panel must decide in the third element assessment whether the Complainant has proved on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith.
On this topic, the Panel notes in particular that the Respondent not only approached the Complainant regarding the disputed domain name within a week of registering it but also that the Respondent made veiled threats during this approach regarding the Complainant’s need “to avoid any conflict and issues”. This does not strike the Panel as the actions of a registrant in good faith. If still further assurance were needed that the Respondent’s motivations in the present case more probably than not fall short of being bona fide, the Panel notes that in Dassault Aviation, Groupe Industriel Marcel Dassault v. N Rahmany,WIPO Case No. D2015-0999, another case under the Policy involving the Respondent and a well-known French company, the Respondent was described by the panel as being the owner of many domain names containing the well-known trademarks of others, and was found to have registered and used the domain names which were the subject of that case in bad faith. The Complainant makes a specific case that the Respondent has engaged in a pattern of cybersquatting behavior based on both this and another case under the Policy involving the Respondent in which a similar finding of registration and use in bad faith was made, namely Serco Group Plc v. N Rahmany,WIPO Case No. D2015-0894. The Respondent did not make any attempt to answer this specific allegation.
In all the circumstances of this case, the Panel finds that the Complainant has proved to its satisfaction that the disputed domain name has been registered and is being used in bad faith. Accordingly, the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Andrew D. S. Lothian
Sole Panelist
Date: January 21, 2022
1 See section 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).