ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION L’Oréal v. Loic Tregan Case No. D2024-3153 1. The Parties The Complainant is L’Oréal, France, represented by Dreyfus & associés, France. The Respondent is Loic Tregan, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2024. On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2024, 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 August 9, 2024. 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 August 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2024. The Respondent sent an email communication to the Center on August 14, 2024. On September 16, 2024, the Center sent the commencement of panel appointment process email. The Center appointed Peter Burgstaller as the sole panelist in this matter on September 20, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a leading French industrial group of cosmetic products, headquartered in Clichy, France. It produces cosmetic products in all sectors of the beauty business which are distributed all over the world especially under the mark L’ORÉAL (Annexes 3 and 7 to the Complaint). The Complainant owns numerous trademark registrations containing the mark L’OREAL around the world, inter alia: - International trademark registration for L’OREAL (word), Reg. No. 394615, registered on December 12, 1972, designated for several countries around the world; - International trademark registration for L’OREAL (word), Reg. No. 1532645, registered on April 29, 2020, designated for several countries around the world; - United States trademark registration for L’OREAL (word), Reg. No. 4945102, registered April 26, 2016 (Annex 4 to the Complaint). Moreover, the Complainant owns the domain names , registered on October 24, 1997, and , registered on April 16, 1999 (Annex 5 to the Complaint). The Complainant also operates under “https://gpt.loreal.net” for its internal use. The Complainant sent a cease-and-desist letter to the Respondent on June 13, 2024, a first reminder on June 17, 2024, a second reminder on June 19, 2024 and finally a third reminder on June 21, 2024; the Respondent did not react (Annex 6 to the Complaint). The disputed domain name was registered on November 25, 2023 (Annex 1 to the Complaint). At the time of filing the Complaint, the disputed domain name resolved to a website under construction which announced “Launching Soon” with a field requiring the email address to “Sign up to be the first to know about our soft launch events” (Annexes 1 and 6 to the Complaint). Further, the Respondent has established Mail Exchange (“MX”) records for the disputed domain name (Annex 1 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the L’OREAL trademark is a famous and well-known trademark. It is noted that the disputed domain name entirely incorporates such trademark; the mere addition of the term “gpt” which is the common abbreviation for “Generative Pretrained Transformer” does not prevent any likelihood of confusion as Internet users may be led into believing the disputed domain name is endorsed by the Complainant. The Complainant submits, that there is no legal relationship whatsoever between the Complainant and the Respondent. The disputed domain name is neither used in connection with a bona fide offering of goods or/and services nor constitutes a legitimate noncommercial fair use.
page 3 Further, the Complainant submits that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name, since the mark L’OREAL is well known and distinctive so that the reservation of the disputed domain name cannot be a coincidence. Moreover, a simple search via Google or any other search engine using the keywords “L’ORÉAL” would have demonstrated that all first results relate to the Complainant or its products or news. Finally, the Respondent did not react to the cease-and-desist letter. B. Respondent The Respondent sent an email correspondence on August 14, 2024 to the Center. The Respondent contents that there are many sites which include a brand name and gpt concatenated – e.g., (for ) or (for ). Further, the Respondent alleges that the above-mentioned sites have not been reclaimed by the brands, and “would not treat [the disputed domain name] in a different way”, and that there is absolutely no intent with the current content to try to impersonate the brand or pretend it is done by the Complainant’s employees. 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 trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark L’OREAL for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. In the present case, the disputed domain name is confusingly similar to the L’OREAL mark in which the Complainant has rights since it incorporates the entirety of the mark L’OREAL and only adds the term “gpt”. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms does not prevent a finding of confusing similarity under the first element of the Policy. This is the case at present. WIPO Overview 3.0, section 1.8. Finally, it has also long been held that generic Top-level Domains (“gTLDs”) (in this case “.com”) are generally disregarded when evaluating the confusing similarity of a disputed domain name. WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, since it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the L’OREAL trademark in any manner. The Respondent is not known under the disputed domain name and the disputed domain name is not being used for a bona fide offering of goods or services; rather the disputed domain name is passively held by the Respondent. Furthermore, the Complainant has the domain name for its internal use. The nature of the disputed domain name, incorporating the entirety of the distinctive and famous mark L’OREAL with the term “gpt” - a common abbreviation for “Generative Pre-trained Transformer”, cannot be considered fair use as it may suggest an affiliation with the Complainant that does not exist. WIPO Overview 3.0, section 2.5.1. The Respondent did not provide any evidence showing its rights or legitimate interests in the disputed domain name. Based on the available record, the Panel finds the second element of the Policy has been established C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith; and - the disputed domain name is being used by the Respondent in bad faith. (i) The Complainant has established rights in the registered trademark L’OREAL long before the registration of the disputed domain name. Furthermore, the trademark L’OREAL is distinctive, famous and extensively used on the Internet. Because of the distinctiveness and reputation of the L’OREAL mark, it is inconceivable for this Panel that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a distinctive trademark by an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Finally, a simple online search for “l’oreal” would have shown the Complainant and its famous L’OREAL marks. WIPO Overview 3.0, section 3.2.3. Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent. (ii) The disputed domain name is also being used in bad faith. Although there is no evidence that the disputed domain name is being actively used or resolves to a website with substantive content, panels have found that the non-use of a domain name (including a blank or “coming soon” page, like in the present case) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.
page 5 The distinctiveness and reputation of the Complainant’s trademark, and the nature of the disputed domain name support the finding that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Furthermore, this Panel concludes that the disputed domain name is being used in bad faith, putting emphasis on the following: - the Complainant’s trademark L’OREAL is distinctive and known; - the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name; - the disputed domain name is inherently misleading, and is thus suited to divert or mislead potential Internet users from the website they are trying to visit (the Complainant’s site) and giving the false impression that the Respondent may be in some way related with the Complainant, which is not the case; - the disputed domain name has active MX records, as shown in the MX records lookup, which indicates a possible use for email services; - the Respondent did not reply to the cease-and-desist letter sent by the Complainant; and - there is no conceivable, plausible good faith use with regard to the disputed domain name considering it clearly targets the Complainant’s trademark. The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name further supports the finding of bad faith. Based on the available record, the Panel finds that the Complainant has established the third 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 be transferred to the Complainant. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: October 4, 2024
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