ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION L’Oréal v. Sophia Case No. D2024-3335 1. The Parties The Complainant is L’Oréal, France, represented by Dreyfus & associés, France. The Respondent is Sophia, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2024. On August 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2024, 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 (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 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 20, 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 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2024.
page 2 The Center appointed Tommaso La Scala as the sole panelist in this matter on September 25, 2024. 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 is a well-known French group, one of the worldwide leading commercial entities in the cosmetic/beauty sector, operating in 150 countries through 36 brands and 86,000 employees. The Complainant is the owner of several trademarks for L’OREAL including the international trademark L’OREAL No. 394615, registered on December 12, 1972 and duly renewed. The Complainant is also the owner of several domain names including the L'OREAL trademark, such as the domain name , registered since 1997. The disputed domain name was registered on July 2, 2024, and it previously resolved to a website reproducing Complainant’s L’OREAL trademark and logo and offering alleged L’OREAL-branded products for sale, without any disclaimer of the lack of association with the Complainant. 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. The Complainant affirms that the disputed domain name is identical or confusingly similar to the Complainant’s well-known L’OREAL trademark, as it reproduces it in its entirety, with the mere addition of number “1909” (which besides is the year when the Complainant has been established). The Complainant submits that the Respondent is neither a licensee of the Complainant nor affiliated with the Complainant in any way. The Complainant says that it has not authorized the Respondent to make any use of its L’OREAL trademark. Lastly, the Complainant says that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, as intended under paragraph 4(c)(ii) of the Policy. Furthermore, the Complainant asserts that the Respondent registered and used the disputed domain name in bad faith, as the Respondent’s previous website reproducing the Complainant’s trademark and logo and offering its alleged products for sale shows the Respondent’s awareness of the trademark at the time of registration and the latter’s intent to mislead Internet users into believing that the website was somehow connected to or authorized by the Complainant. The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 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. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Indeed, the addition of number “1909” does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy, also considering the Complainant’s business activity has been established right in 1909. WIPO Overview 3.0, section 1.8. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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 available 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. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Furthermore, the Panel notes that disputed domain name previously resolved to a website allegedly selling L’OREAL-branded goods and displaying the L’OREAL trademark without any disclaimer of the lack of association with the Complainant. Such use cannot confer any rights and legitimate interests on the Respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
page 4 In the present case, the Panel notes that the registration of the L’OREAL trademark predates the disputed domain name and therefore, the Respondent clearly had the L’OREAL trademark in mind while registering the disputed domain name, as the latter previously resolved to a website purportedly selling L’OREAL-branded goods, bearing the L’OREAL trademark and even displaying a membership and special rewards list, without any disclaimer of the lack of association with the Complainant. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the distinctive and well-known L’OREAL trademark with the addition of the numbers “1909” unless there was an intention to create a likelihood of confusion between the disputed domain name and the L’OREAL trademark from which the Respondent would likely benefit. WIPO Overview 3.0, section 3.1.4 and paragraph 4(b)(iv) of the Policy. 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. /Tommaso La Scala/ Tommaso La Scala Sole Panelist Date: October 9, 2024
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