The Complainant is L’Oreal of Paris, France / L’Oreal Australia Pty of Melbourne, Victoria, Australia represented by Dreyfus & associés, France.
The Respondent is Namewise Pty Ltd. of Victoria, Australia / Nicholas Bolton of Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with N. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2013. On March 22, 2013, the Center transmitted by email to N a request for registrar verification in connection with the disputed domain name. On March 25, 2013 and March 28, 2013, N transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2013. Due to an administrative error the Center resent the Written Notice of the proceedings to the Respondent’s address and granted the Respondent a further 10 calendar days to indicate whether it wished to participate in these proceedings. The Respondent provided no response to the Complaint during the further period granted.
The Center appointed Derek M. Minus as the sole panelist in this matter on May 13, 2013. 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, the L’Oreal group, is a French based cosmetics and beauty business. Established in 1909, it is one of the world’s leading cosmetics companies with businesses in 130 countries and over 68,900 employees around the world. It markets over 500 brands and more than 2,000 products in all sectors of the beauty business.
The L’Oreal brand is marketed in Australia through the Complainant’s subsidiary, L'Oreal Australia Pty Ltd. The Complainant and its L'OREAL trade mark enjoy a worldwide reputation, particularly in Australia. The Complainant owns numerous trade mark registrations around the world, including:
L’OREAL, Australian Trade mark no. 191519, dated of November 23 1964, in class 3;
L’OREAL, United Kingdom Trade mark no. 476691, dated of January 14, 1924, in class 3;
L’OREAL, United Kingdom Trade mark no. 785218, dated of December 1958, in class 3;
L’OREAL, United Kingdom Trade mark no. 1181128, dated of September 3, 1982, in class 3.
The Complainant also owns various domain names, including: registered October 14, 1997, registered October 24, 1997 and . 5. Parties’ Contentions A. Complainant
According to the Complainant:
(i) The Complainant has used the L’OREAL trade mark in connection with a wide variety of products and services in Australia and around the world. Consequently, the public has learned to perceive the goods and services offered under this mark as being those of the Complainant. The public would reasonably assume that the Complainant owns the disputed domain name or at least assume that it is related to L’Oreal and its well-known trade mark.
(ii) The term L’OREAL is unique and is only known in relation to the Complainant and it has no meaning in English except in connexion with the Complainant. The disputed domain name is confusingly similar to the trademark L’OREAL and reproduces the trade mark in its entirety. In many UDRP and auDRP decisions, panels have considered that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark.
(iii) The mere addition of the generic word “store” does not diminish the confusing similarity between the disputed domain name and the Complainant’s trade marks. The addition of merely generic, descriptive or geographical words to a trademark in a domain name is normally insufficient to avoid a finding of confusing similarity. The use of the generic term “store”, will lead internet users to believe that this domain name will direct them to an online store created by, affiliated or endorsed by L’Oreal and reinforces the risk of confusion.
(iv) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent holds no trade mark registrations for any L’OREAL mark and has never received a license, or any other form of authorisation or consent from the Complainant to make use of its trade mark.
(v) The Respondent cannot claim any actual or contemplated bona fide or legitimate interest in the disputed domain name as it appears that it adopted the disputed domain name solely to create a confusion in the mind of consumers to believe either that the Respondent directly managed a “L’Oreal store” or that its products are related to, affiliated to, sponsored by, or endorsed by the Complainant.
(vi) The Respondent never responded to the cease-and-desist letter and reminder sent by the Complainant. In many auDRP and UDRP decisions, panels have considered that the lack of response from a respondent suggests the absence of rights or legitimate interests in a disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The issue to be determined in this Complaint is whether the registration of the disputed domain name by the Respondent constitutes a breach of the auDRP such that the domain name should be transferred to the Complainant.
The purpose of an administrative process conducted under the auDRP is stated in clause 1.2 of the Policy:
“… to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name.”
The auDRP is contained in Schedule A, clause 4(a) of which requires a complainant to prove, on the balance of probability, each of the following matters:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 or subsequently used in bad faith.
It is important to note, as set out in clause 1.4 of the auDRP:
“Some parts of the auDRP are substantively different from the UDRP. Prospective complainants should not assume that principles derived from UDRP decisions will be applicable to auDRP disputes.”
However, to the extent that the UDRP and the auDRP overlap in principle, the Panel will refer to UDRP jurisprudence in this Decision.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the Respondent’s failure to submit a Response as the Panel considers appropriate (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
The Panel accepts the submission of the Complainant that previous UDRP panels have considered the L’OREAL trade mark to be well known (see L’Oréal SA v. Private Registrations Aktien Gesellschaft, Domain Admin,WIPO Case No. D2012-0780 and L'Oreal v. Wen Tao,WIPO Case No. D2012-0521).
In this case, the disputed domain name consists of the Complainant’s LOREAL mark together with the word “store” and the country Top-Level Domain suffix “.” which is generally disregarded for the purpose of comparison, see Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
It has been consistently held in numerous auDRP and UDRP decisions that a domain name is generally considered as identical or confusingly similar to a complainant’s trade mark “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”, see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion.”
The addition of the word “store” only serves to increase the confusing similarity with the L’OREAL trade mark as the Complainant’s products are frequently sold in department stores, see Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding and other domain names incorporating DELL mark confusingly similar to DELL) and Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding and other domain names incorporating TELSTRA mark confusingly similar to TELSTRA).
Therefore the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s registered L’OREAL trade mark in which the Complainant has rights.
The Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element that a complainant under the Policy must show is that, on the balance of probability, the respondent has no rights or legitimate interests in the disputed domain name. If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus reverts to the respondent to displace that presumption.
Paragraph 4(c) of the Policy states that, in responding to a complaint, rights to and legitimate interest in a domain name may be demonstrated by a Respondent evidencing one of the following, non-exhaustive, situations:
(iv) before any notice of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names acquired for the purpose of selling, renting or otherwise transferring); or
(v) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(vi) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue
The Complainant’s evidence establishes that the Respondent is not affiliated with the Complainant and has no licence or authorisation to use the Complainant’s L’OREAL trade mark or any domain name incorporating it. The Respondent has no prior rights or legitimate interests in the disputed domain name as both the registration of the L’OREAL trade marks and the Complainant’s own domain name preceded the registration of the disputed domain name by many years. As the Respondent has failed to provide a response, there is no evidence that the Respondent was ever commonly known by the name “L’OREAL” and in fact, the WhoIs database search identifies the registrant as Nicholas Bolton.
The Complainant has provided evidence that the disputed domain name directs Internet users to a website which displays generic illustrations of different categories of cosmetic products underneath a menu bar that includes the terms: “Loreal”, “Loreal Cosmetics” and “Loreal Shampoo”. The Panel is entitled to conduct its own research (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.5 and Team Viewer GmbH v. Nigel Burke,WIPO Case No. DAU2012-0027. As the website had not been locked, the Panel conducted its own investigation and was able to confirm this situation and that on clicking on the illustrations, Internet users would then be redirected to a list of links offering competitive commercial products, often with no relationship (e.g. dog care and television sets) to the products illustrated.
As has been noted by previous auDRP and UDRP panels, “it does not matter that an Internet user, on visiting the Respondent’s website, might become aware that the website is not that of the Complainant’s. The confusion arises by a simple comparison between the Complainant's trade marks and the disputed domain name”. See: Aastra Telecom Inc. v. Spring Mountain Enterprise Ply Ltd.,WIPO Case No. DAU2008-003 and GM Holden Ltd v. Blogger Pty Ltd., WIPO Case No. DAU2008-0016.
It has been previously held that “pay-per-click” or “click-through” links do not constitute a bona fide offering of goods or services. See Freelife International Holdings, LLC and Freelife International Australia Pty Ltd. v. Nick Nastevski dba Health Doctor,WIPO Case No. DAU2012- 0017 (finding that “pay-per-click advertising links to third party sites that promote products, services and companies some of which are in competition with the Complainant’s … is not a bona fide offering of goods or services”).
The Complainant, having made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden therefore shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name. See WIPO Overview 2.0 at paragraph 2.1:
“[C]omplainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Respondent has not submitted a response to the Complaint, so there is no evidence to rebut the Complainant’s contentions or demonstrate that the Respondent has some right or legitimate interest in the disputed domain name. See Ahead Software AG. v. Leduc Jean,WIPO Case No. D2004-0323; and Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (finding that the respondent’s default alone was sufficient to conclude that it had no right or legitimate interest in the domain name).
The Panel found no evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights or legitimate interests of the Respondent in the disputed domain name. On the contrary, the Panel finds that the Respondent is making use of the disputed domain name in a way that is antithetical to a bona fide offering of any goods or services by directing traffic to products unrelated to either its purported “L’Oreal Store” or products of the Complainant.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered or Subsequently Used in Bad Faith
Unlike the UDRP on which it is based, the auDRP does not require a complainant to prove both that the disputed domain name has been registered and used in bad faith. Proof of either limb is sufficient to satisfy the requirements of Schedule A, paragraph 4(a)(iii), which provides that any of the circumstances described at paragraph 4(b) of the Policy, if proved, will be evidence of bad faith registration and use.
Paragraph 4(b) of Schedule A deems the following, non-exhaustively, to be evidence of registration or use in bad faith:
(vii) circumstances indicating that the domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, or
(viii) the domain name has been registered in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name, or
(ix) the domain name has been registered primarily for the purpose of disrupting the business or activities of another person; or
(x) the domain name has been used to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
In the Panel’s view, it is clear that the Respondent knew of the Complainant’s products and reputation at the time of registration of the disputed domain name. The Respondent’s uses links to the same types of (cosmetic) products manufactured by the Complainant and even uses the Complainant’s L’OREAL trade mark for menu headings on its website.
Previous auDRP and UDRP panels have found that a respondent has acted in bad faith where a domain name is registered and used by someone with no connection to the trademark or business of the complainant. See: Facebook, Inc. v. Callverse Ply Ltd.,WIPO Case No. DAU2008-0007 (finding that, “The word FACEBOOK is clearly connected with the Complainant’s well known online social network service and its very use by the Respondent, someone with no connection with the service, suggests opportunistic bad faith.”) and, Google Inc. v. Dmitri Rytsk, WIPO Case No. DAU2007-0004 (finding that, “The use in the domain name of such a famous trademark as GOOGLE is almost evidence in itself of bad faith, for it instantly arouses suspicion that at least one motivation for registering the domain name must have been to create a false impression that the website was in some way connected with Google itself”). Given the “well-known” reputation of the L’OREAL trade mark, it can be similarly inferred that the registration of the disputed domain name by the Respondent, was in bad faith.
Further, by providing “click-through” links to products other than those of the Complainant, the Respondent has intentionally attempted to attract Internet users to its website at which the disputed domain name resolves, in order to obtain a commercial gain, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the website and the products that are offered for sale. The Respondent’s use of the disputed domain name is clearly for a commercial purpose and previous panels have found that such use amounts to bad faith, see: Pickles Auctions Pty Ltd v. Complete Hire Pty Ltd ACN 070 489 173,WIPO Case No. DAU2012-0005 (finding that providing pay-per-click access to third party websites was not a bona fide use of the disputed domain name in connection with the supply of goods or services and its use in this way was in bad faith.
Finally, the Complainant has provided damning evidence that the Respondent has been involved in a pattern of abusive registration, infringement and cybersquatting. WhoIs entries show that the Respondent has registered many domain names incorporating famous and distinctive trademarks such as: “BLACKBERRY”, “CHANEL”, “FACEBOOK”, “HOTMAIL”, “MACBOOK”, “MARVEL”, “MTV”, “NINTENDO”, “STAR-WARS” and “TWITTER”. The Panel accepts that this constitutes a “pattern of conduct” of both the registration and use of a domain names to prevent the owner of that name, trademark or service mark from reflecting that name or mark in a corresponding domain name.
The Panel therefore finds that the Respondent’s conduct is evidence of bad faith, within paragraph 4b(ii) of the Policy and that the Complainant has satisfied the third requirement of paragraph 4(a) 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.
Derek M. Minus
Sole Panelist
Date: May 27, 2013
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