Complainant is L'Oréal SA, Paris, France, represented by Dreyfus & Associés, Pairs, France.
Respondent is LV Kefeng, Zhejiang and Guangxi, People's Republic of China.
2. The Domain Names and Registrar
The disputed domain names <lorealchina.org> and <maybellinechina.org> (the “domain names”)are registered with Web Commerce Communications Limited dba WebNic.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2009. On September 17, 2009, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the disputed domain names. On September 18, 2009, Web Commerce Communications Limited dba WebNic.cc transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on September 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 14, 2009.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on October 21, 2009. 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
Complainant in this case is L'Oréal, a French industrial group of companies specialized in cosmetics and beauty products. The company was founded in 1909. L'Oréal is the world's number one cosmetics group, has a presence in 130 countries and had sales in 2008 of 17,5 billion Euros.
L'Oréal markets over 500 brands, amongst which are L'ORÉAL and MAYBELLINE, the latter is the world's number one cosmetics brand, and is available in more than 90 countries including China. Maybelline offers over 200 products. Complainant holds trademark registrations for both L'ORÉAL and MAYBELLINE in several countries including China.
On June 9, 2009, Complainant´s representative received an email from Respondent, indicating that he had registered the domain name <maybellinechina.org> by accident. He further explained that he was writing the email with no purpose and that wanted to help Complainant protect its brand. At that time the domain name was resolving towards an inactive page. Complainant replied to this email, requesting the domain name <maybellinechina.org> be cancelled.
On June 19, 2009, Respondent informed Complainant that he could not cancel the domain name <maybellinechina.org> until its expiration. Respondent also indicated that he did not intend to claim 3,000 or 4,000 Euros for the transfer of the domain name, but only the reimbursement of its costs. He further indicated that he had noticed other domain names reproducing L'ORÉAL trademarks, and that he just wanted to help protect L'ORÉAL's trademarks.
On August 8, 2009 Respondent sent another email to Complainant, indicating that he had registered the domain names <maybellinechina.org> and <lorealchina.org> and that he preferred transfer them to L'Oréal at a low price but otherwise he would sell them to someone else who was interested in buying them.
At this time <lorealchina.org> was resolving to a parking page displaying commercial links, some of which were related to L'Oréal's competitors. The domain name <maybellinechina.org> was resolving to a page indicating that the domain name was for sale.
On August 27, 2009, Complainant noted a change in the redirection of the domain names. Since then both domain names have resolved to Webpages displaying pornographic links and pictures.
5. Parties' Contentions
A. Complainant
Complainant alleges that the domain names are confusingly similar to the trademarks in which Complainant has rights that Respondent has no rights, or legitimate interests in respect of the domain names, and that Respondent has registered and is using the domain names in bad faith.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain names combine Complainant's well-known trademarks L'ORÉAL and MAYBELLINE with the geographical indication China. The Panel finds that the domain names reproduce Complainant's trademarks in their entirety. The Panel further finds that both trademarks are not common words, hence their use can only be associated with Complainant's well known trademarks. This Panel considers both trademarks to be well known within the industry and amongst consumers; Complainant has produced several trademark registration titles which further evidence its rights over both trademarks.
Panels have found that a domain name is confusingly similar to a mark where a common geographical term is added to a trademark. Wal-Mart Stores, Inc. v. Lars Stork,
WIPO Case No. D2000-0628 (<wal-mart-europe.com held confusingly similar to the Wal-Mart trademark).
Accordingly, the Panel finds that the domain names <lorealchina.org> and <maybellinechina.org> are confusingly similar to Complainant's L'ORÉAL and MAYBELLINE trademarks.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out [an initial] 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.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant has made out a prima facie case demonstrating that Respondent has no rights or legitimate interests in respect of the domain names and Respondent has failed to assert any such rights.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name's.
C. Registered and Used in Bad Faith
Complainant's trademarks L'ORÉAL and MAYBELLINE are well known throughout the world, they are both registered in China. Complainant sells both lines of products within the China market. In the Panel's view, it is difficult to believe that Respondent registered both sites by accident and it is even harder to believe he did not know of Complainant at the time he registered the domain names. Moreover, the correspondence between Complainant and Respondent, and the fact that at one point Respondent offer both sites for sale to Complainant and that Respondent offered at least one of them for sale on line, is further evidence that Respondent registered the domain names with full knowledge of Complainant and its business.
Respondent's use of Complainant's L'ORÉAL and MAYBELLINE marks in its domain names was apparently done for the purpose of attracting Internet users to the sites for commercial gain, under the initial interest theory. Respondent may also have sought to obtain a monetary gain by selling both domains to Complainant. This conduct constitutes bad faith registration and use per the example set out in paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Respondent has registered and is using the domain names in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <lorealchina.org> and <maybellinechina.org> be transferred to Complainant.
Francisco Castillo-Chacón Sole Panelist
Dated: October 28, 2009
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