The Complainants are L’Oréal and Lancôme Parfums Et Beauté & Compagnie (Lancôme) of Paris, France, represented by Dreyfus & associés of France (hereinafter the “Complainant”).
The Respondent is Hemin of Guangzhou, Guangdong, China. 2. The Domain Names and Registry
The disputed domain names and are registered with NIC.TM (the “Registry”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain names. On May 30, 2014, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 11, 2014, the Center notified the Complainant of deficiencies in its Complaint. The Complainant submitted an amended Complaint by email on June 13, 2014.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for Domain Names registered with NIC.TM (the “Policy”), the Rules for Domain Name Dispute Resolution for.TM Names (the “Rules”), and the WIPO Arbitration and Mediation Center Supplemental Rules for Domain Name Dispute Resolution Policy for .TM Names (the “Supplemental Rules”).
In accordance with the Rules of Procedure, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2014.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 1, 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 of Procedure, paragraph 7. 4. Factual Background
Based on the uncontested statements made in the Complaint, the Complainant L’Oréal and the Complainant Lancôme Parfums Et Beauté & Compagnie belong to the same corporate group, with the latter being a subsidiary of the former. L’Oréal is a well-known cosmetics and beauty company, creating and distributing beauty products in all sectors of the beauty industry. Lancôme is a leading company in the women selective cosmetic market, known especially for skincare and makeup. L’Oréal was established in 1909 and currently present in over 130 countries, including China. Lancôme was founded in 1935 and its products are similarly present around the world. The Complainant maintains a research center and enjoys significant sales and growth in China.
The Complainant distributes products under a variety of trademarks, including L’OREAL, L’OREAL PARIS and LANCÔME. The Complainant L’Oreal owns Registration No. 1487385 for L’OREAL in China, with application date of September 20, 1979, and Registration No. 6665726 for L’OREAL PARIS of April 17, 2008. It also provided evidence of Portuguese Registration No. 345523 of April 5, 2001 for L’OREAL PARIS. The Complainant Lancôme owns Chinese Registration No. 76096 for LANCÔME with the registration date of October 7, 1987. The Complainant also registered domain names incorporating its trademarks, including on July 8, 1997, and on June 5, 1998.
The disputed domain names and were registered by the Respondent on November 21, 2013. The disputed domain names do not appear to have ever been used in association with an active website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that all three required elements under the Policy have been satisfied in this matter.
Regarding the first element, the Complainant refers to its trademark registrations for L’OREAL, L’OREAL PARIS and LANCÔME. The Complainant asserts that the disputed domain name incorporates the L’OREAL and L’OREAL PARIS trademarks in their entirety, while the disputed domain name reproduces the entirety of the LANCÔME mark. The Complainant argues that the absence of punctuation and accent marks from the trademarks is insignificant for purposes of the Policy and thus that the disputed domain names are identical or confusingly similar to Complainant’s trademarks.
Under the second element, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the dispute domain names. The Complainant asserts that the Respondent is not commonly-known by the Complainant’s referenced marks, nor is the Respondent authorized by the Complainant to use the marks in disputed domain names. The Complainant further states that the Respondent has not made or demonstrated any preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
In connection with the third element, the Complainant argues that the Respondent has both registered and used the disputed domain names in bad faith. The Complainant contends that it is implausible that the Respondent was unaware of the Complainant at the time of registration as the marks are well-known around the world and would also be revealed upon a quick trademark or search engine query. The Complainant submits that the reproduction of its trademarks in its entirety in the disputed domain names demonstrate the Respondent’s awareness of the Complainant. The Complainant further asserts that although the disputed domain names are inactive, the Respondent’s bad faith use of the disputed domain names is to be inferred from the circumstances of the Respondent’s behavior. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
This Complaint has been brought under the Policy, which closely resembles the Uniform Domain Name Dispute Resolution Policy (UDRP). Accordingly, the principles developed by panels under the UDRP are relevant and instructive in many respects.
Before engaging in a substantive analysis under the Policy, it is necessary to briefly consider the question of consolidation. Both Complainant entities are part of the same corporate group, and as such have a common interest in the trademarks in question and a common grievance against the Respondent. The Panel finds it is procedurally efficient and equitable to consolidate this matter and continue with the Complaint as filed, and refers to both entities jointly as the “Complainant” for purposes of this proceeding. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985. A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
The Complainant has clearly established its rights in the L’OREAL, L’OREAL PARIS and LANCÔME marks by virtue of its trademark registrations duly submitted with its Complaint. These trademark registrations all significantly pre-date the registration of the disputed domain names.
The Panel finds that the disputed domain name incorporates the Complainant’s L’OREAL and L’OREAL PARIS marks in their entirety and that the disputed domain name incorporates the Complainant’s LANCÔME mark in its entirety, with the absence of apostrophes or accent marks in the disputed domain names being insignificant for the Panel’s assessment for purposes of the Policy. See L’Oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd,WIPO Case No. D2010-1318.
Regarding the Complainant’s L’OREAL mark, UDRP panels have found that the addition of a geographical term to a widely-known trademark in a domain name may create a domain name which is confusingly similar to that mark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768.
Moreover, it is well established that a Top-Level Domain (“TLD”) suffix, in this instance the country code TLD (“ccTLD”) suffix “.tm”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Samsung Networks Inc. v. Stan Samsung Hui,WIPO Case No. DTM2009-0001; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant demonstrate that the respondent has no rights or legitimate interests in the disputed domain name. However, UDRP panels have recognized that this may require the complainant to prove a negative. Therefore, UDRP panels have found that for purposes of this element, the complainant is instead required to make out a prima facie case that the respondent lacks rights or legitimate interests, which would then shift the burden of production to the respondent. See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). See also Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In the present matter, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant has not licensed or authorized the Respondent to use its L’OREAL, L’OREAL PARIS and LANCÔME marks in the disputed domain names, nor is there any evidence that the Respondent is commonly known by the disputed domain names.
Furthermore, there is no evidence on record that would permit the Panel to consider that the Respondent has used or is undertaking preparations to use the disputed domain names in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.
In the absence of any response from the Respondent, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered or Used in Bad Faith
Pursuant to the Policy, the Complainant needs to establish that the Respondent either registered or used the disputed domain names in bad faith to establish this element. For the following reasons, the Panel considers that the Complainant has established both that the Respondent has registered and used the disputed domain names in bad faith.
The Panel is satisfied that the Complainant’s L’OREAL, L’OREAL PARIS and LANCÔME marks are widely known around the world, including in China where the Respondent is apparently located. The registration and use of the Complainant’s marks in China significantly pre-date the registration of the disputed domain names, which reproduce the marks in their entirety. It is clear to the Panel that the Respondent was aware of and intentionally registered the disputed domain names incorporating the Complainant’s marks.
From the evidence available to the Panel, it does not appear that the disputed domain names have ever been used in connection with an active website. The Complainant contends that the passive holding of these disputed domain names are evidence of the Respondent’s bad faith. Although in some cases passive holding of a domain name may provide evidence of bad faith activity, it is necessary in every case to evaluate the issue in light of all the relevant facts and circumstances. Some of these key issues include whether: 1) the Complainant’s mark has a strong reputation and is widely known, 2) there is any evidence of the Respondent’s use of the domain names in connection with a contemplated good-faith activity, 3) the Respondent has taken active steps to conceal its identity or provided false contact details, and 4) whether it is impossible to conceive of any good faith use of the domain names by the Respondent which would not infringe the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In this case, the Complainant has convinced the Panel that circumstances exist to satisfy each of these key passive holding factors. The Panel is convinced of the fame of the Complainant’s marks, there is no demonstrable evidence that the Respondent has used the disputed domain names in connection with a possible good-faith activity, and it is impossible for the Panel to conceive of any good faith use of the disputed domain names by the Respondent. Furthermore, the physical contact information provided by the Respondent in its WhoIs records is insufficiently general to allow for postal delivery.
The Panel therefore concludes, on the totality of the circumstances, that the Respondent has both registered and used the disputed domain names in bad faith, satisfying the requirement of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(h) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant Lancôme Parfums Et Beauté & Compagnie and be transferred to the Complainant L’Oréal.
Torsten Bettinger
Sole Panelist
Date: August 14, 2014
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