The Complainant is L'Oréal S.A. of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Lianfa of guangzhoushi, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2014. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 26, 2014.
The Center verified that the Complaint 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on April 4, 2014. 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.
The Panel extended the Decision due date to April 25, 2014, in accordance with its general posers, under paragraph 10 of the Rules. 4. Factual Background
The Complainant is a French based industrial group, founded in 1909. The Complainant engages in cosmetics and beauty, and is nowadays one of the international leaders in its field.
The Complainant is present all over the world and including in China where it has a local subsidiary established in 1997. The Complainant, along its subsidiary companies, has a global workforce of over 72,600 workers in 130 countries.
The Complainant markets more than 500 brands and 2,000 products in all sectors of the beauty and cosmetics industry under different names, such as L'OREAL PARIS, L'OREAL PROFESSIONNEL and others.
Besides its other products, the Complainant distributes consumer product under various brands among which is Maybelline New York. MAYBELLINE was created in 1915 and acquired by L'Oréal USA Inc., a subsidiary of L'Oréal in 2000.
The Complainant is also the owner of the trade mark YUE-SAI that was created in 1992 and acquired by the Complainant in 2004.
The Complainant is the owner of multiple registered trademarks containing the trade mark L'OREAL. For example, International trademark registration No. 184970 L'OREAL logo, with the registration date of May 23, 1955, with designations of Austria, China, Germany, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Montenegro, Mongolia, Portugal and others; International trademark registration No. 230114 L'OREAL logo, with the registration date of March 28, 1960, designating Austria, Bosnia and Herzegovina, China, Czech Republic, Germany, Egypt, Spain, Croatia, Hungary, Italy and others; International trademark registration No. 328403 L'OREAL logo, with the registration date of November 28, 1966, designating Bulgaria, Czech Republic, Egypt, Spain, Croatia, Hungary, Italy, Democratic People's Republic of Korea, Liechtenstein, Morocco, Monaco, Montenegro, Mongolia, Russia and others; International trademark registration No. 238337 L'Oréal de Paris, registered on December 10, 1960 and designating Austria, China, Germany, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Montenegro, Mongolia, Portugal and others; and others.
The Complainant is the owner of multiple registrations containing/for the trade mark MAYBELLINE. For example, International trademark registration No. 959892 MAYBELLINE of January 9, 2008.
The Complainant is the owner of registered trademarks containing the word "yue sai". For example, Community Trademark Registration No. 4256483 YUE-SAI (stylized logo) filed on February 25,
2005 and registered on April 11, 2006.
The Complainant is also the owner of Chinese Trademark Registration No. 1487385 L'OREAL of July 12, 2000, Chinese Trademark Registration No. 212780 MAYBELLINE registered on September 15, 1994, and Chinese Trademark Registration No. 628603 YUE-SAI registered on February 10, 1993.
The Complainant has developed a formidable presence on the Internet and is the owner of several domain names, which contain the words "L'Oreal", Maybeline" and "Yue-sai". For example: , , , , , , and many more. The Complainant is using these domain names in connection with its activities.
The disputed domain names , and were registered on May 9, 2013 and currently resolve to inactive webpages. According to the evidence displayed by the Complainant, the disputed domain name resolved until recently to an advertisement webpage in Chinese displaying mobile phone devices.
The Complainant sent a Cease and Desist letter to the Respondent on October 10,2013, informing the Respondent of its intellectual property rights in the trade mark MAYBELLINE and demanding that the domain name be transferred to the Complainant. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names , and are identical or confusingly similar to the L'OREAL, MAYBELLINE and YUE-SAI trade marks, owned by the Complainant, seeing that they incorporates the trade marks as a whole.
The Complainant further argues that the omission of the apostrophe after the letter L and the accent mark on the letter E in the disputed domain name , and the omission of the hyphen in the disputed domain are insufficient to avoid confusing similarity as typographical discrepancies such as the inclusion or omission of grammatical marks are inadequate for that purpose.
The Complainant further argues that the additional word "China" in the disputed domain names and do not distinguish the disputed domain name from the L'OREAL and MAYBELLINE marks, as they are merely geographical descriptions rather than substantial elements.
The Complainant further argues that it has exclusive rights to the L'OREAL, MAYBELLINE and YUE-SAI trade marks as these are widely recognized with the Complainant and with its operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the L'OREAL, MAYBELLINE and YUE-SAI marks.
The Complainant further argues that the Respondent did not make legitimate use of the disputed domain names.
The Complainant argues that it has sent a cease and desist letter for the disputed domain name along with several reminders to the Respondent but the latter never replied and therefore it can be presumed that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant further argues that the Respondent was aware of the Complainant's existence and of the L'OREAL, MAYBELLINE and YUE-SAI marks and products at the time the Complainant registered the disputed domain names and that they were registered and used in bad faith.
The Complainant further argues that the fact that Respondent chose to register three domain names containing Complainant's trademarks shows that Respondent had Complainant in mind at the time of the registration and is a proof of Respondent's registration in bad faith
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of multiple registered trademarks containing the marks L'OREAL,MAYBELLINE and YUE-SAI.
The disputed domain name differs from the registered L'OREAL trademark by the additional word "China", the omission of grammatical indicators (apostrophe and accent marks) and the additional country code Top-Level domain ("ccTLD") ".pw".
The disputed domain name integrates the Complainant's L'OREAL trade mark in its entirety, as a dominant element.
The omission of grammatical indicators does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's L'ORERAL trademark. Previous UDRP Panels have ruled that "minor typographical differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity (See for example, L'Oreal v. Tracey Johnson,WIPO Case No. D2008-1721).
The addition of the geographical name "China" is also insufficient to avoid confusing similarity, as it is a non-significant element that is somewhat connected with the Complainant, which markets its products, among others, in China.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (see Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The addition of the ccTLD ".pw" to the disputed domain name does not avoid confusing similarity. (See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.) Thus, the ccTLD ".pw" is without legal significance since the use of a ccTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark, in which the Complainant has rights.
The disputed domain name differs from the registered MAYBELLINE trade mark by the additional word "China" and the additional ccTLD ".pw".
The disputed domain name integrates the Complainant's MAYBELLINE trademark in its entirety, as a dominant element.
The addition of the geographical name "China" is also insufficient to avoid confusing similarity, as it is a non-significant element that is somewhat connected with the Complainant, which markets its products, among others, in China. In fact, the addition of a geographic indication may result in greater confusion. (See Accor v. Thawan Laungrungthip,WIPO Case No. D2006-0365.)
The addition of the ccTLD ".pw" to the disputed domain name does not avoid confusing similarity. Thus, the ccTLD ".pw" is without legal significance since the use of a ccTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The disputed domain name differs from the registered YUE-SAI trade mark, the omission of grammatical indicator (hyphen) and the additional ccTLD ".pw". In fact, the omission of a grammatical indication making the domain name easier to type may increase the likelihood of confusion, since it is common for Internet users to type a domain name without hyphens or other grammatical indications.
The disputed domain name integrates the Complainant's YUE-SAI trade mark in its entirety, as a dominant element.
The omission of grammatical indicators does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's YUE-SAI trademark. (See L'Oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd,WIPO Case No. D2010-1318.)
The addition of the ccTLD ".pw" to the disputed domain name does not avoid confusing similarity. The ccTLD ".pw" is without legal significance since the use of a ccTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trade mark, in which the Complainant has rights. B. Rights or Legitimate Interests
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trade marks, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent failed to submit any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant has submitted evidence which shows that the Respondent registered the disputed domain names long after the Complainant registered its trade marks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the L'OREAL trademark at least since the year 1955, for the MAYBELLINE trade mark at least since the year 1994, and for the YUE-SAI trade mark at least since the year 1993. It is suggestive of the Respondent's bad faith in these particular circumstances that the trade marks, owned by the Complainant, were registered long before the registration of the disputed domain names (see for example, Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735.)
The Complainant provided evidence to demonstrate its trademarks' goodwill. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith". See Swarovski Aktiengesellschaft v. Zhang Yulin,WIPO Case No. D2009-0947. It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain names, especially in view of the fact that all three disputed domain names incorporate the Complainant's trademarks.
The disputed domain names currently resolve to inactive webpages. However, the fact that the Respondent does not use the disputed domain names at the moment does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. (See Mobimate Ltd. v. "World Mate" and Sachiwo Inagaki,WIPO Case No. D2008-1867.)
The Respondent's passive holding of the disputed domain names also indicates bad faith registration and use of the disputed domain names: "The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept". See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754. See also: "The significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith" (see Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003).
In addition, the Panel notes that the Respondent failed to reply to the Complainant's cease and desist letter.
In the present circumstances, this constitutes additional evidence to be taken into consideration when assessing if the Respondent acted in bad faith.
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the similarity between the disputed domain names, the Complainant's trademarks and the Respondent's lack of response to the Complainant's cease and desist letter, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 disputed domain names, , and , be transferred to the Complainant.
Francine Tan
Sole Panelist
ate: April 25, 2014
Full & Egal Universal Law Academy