WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L'Oréal v. Silvina Duarte

Case No. D2018-1609

1. The Parties

The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Silvina Duarte of Buenos Aires, Argentina, self-represented.

2. The Domain Name and Registrar

The disputed domain name <lorealduty.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2018. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2018, 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 for the disputed domain name.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on August 17, 2018. 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 Respondent contacted the Center on August 21, 2018 and August 24, 2018. The emails were not coherently written.

4. Factual Background

The Complainant is a French industrial group specialized in the field of cosmetics and beauty, created in 1909. It is one of the world's largest groups in the cosmetic industry and is present in over 130 countries worldwide. It markets more than 30 global beauty brands including L'ORÉAL, L'ORÉAL PARIS and L'ORÉAL PROFESSIONNEL and thousands of products in all sectors of the beauty business. It has a unique international portfolio of around 30 complementary brands.

The Complainant has been present in Argentina since 1936, and established a subsidiary in the country in 1963. The Complainant markets 17 of its brands in Argentina.

The Complainant owns a number of trademarks in jurisdictions around the world for the term L'ORÉAL, including the following:

- Argentinian trademark No. 2925989 for L'ORÉAL, registered on October 24, 1996, in class 3; and

- International trademark No. 184970 for L'ORÉAL, registered on May 23, 1955 in classes 3 and 5.

The Complainant also owns numerous domain names consisting of or including the term "L'Oréal" under generic Top-Level Domains such as <loreal.com> (registered on October 24, 1997) as well as under country code Top-Level Domains, such as <loreal.com.ar> (registered on February 27, 2014).

The disputed domain name was registered on December 21, 2017. The disputed domain name previously resolved to a page imitating the Complainant's official website, displaying the Complainant's trademark and products. The disputed domain name subsequently resolved to a page displaying the message "website coming soon!"

5. Parties' Contentions

A. The Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is identical to the Complainant's registered trademark, L'ORÉAL, in light of the fact that it wholly incorporates the Complainant's mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not provide a formal reply to the Complainant's contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a formal response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.

The Complainant is owner of multiple registrations in jurisdictions throughout the world for the trademark L'ORÉAL, as indicated in Section 4 above.

The disputed domain name wholly incorporates the Complainant's L'ORÉAL registered mark, which previous panels have considered to be well-known (see, e.g., L'Oréal, v. Hoang lan / Whois Privacy Protection Service, Inc., WIPO Case No. D2016-0917). Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it may be sufficient to establish identity or confusing similarity for the purpose of the Policy. See, e.g., L'Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627.

The lack of an apostrophe in the disputed domain name does not change the trademark pronunciation. Previous panels have held that the omission of the apostrophe after the letter "l" in the L'ORÉAL trademarks is insignificant. Typographic differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes would not avoid a finding of confusing similarity. See, e.g., L'Oréal v. Tracey Johnson, WIPO Case No. D2008-1721.

The addition of the term "duty" to the Complainant's trademark does not avoid confusing similarity between the disputed domain name and the Complainant's trademark. Previous panels have established that adding a descriptive term to a complainant's mark would not prevent a finding of confusing similarity under the first element. See, e.g., Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453. See also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

Previous panels have also held that the Top-Level Domain ".com" is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Accor v. Noldc Inc., WIPO Case No. D2005-0016.

In the light of the foregoing, the Panel finds that the disputed domain name <lorealduty.com> is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with "you" referring to the respondent):

"[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Respondent did not submit a formal response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Previous panels have held that in the absence of any license or permission from the complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, e.g., Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188.

There is nothing in the record to suggest that the Respondent is commonly known by the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the L'ORÉAL trademark, in a domain name or otherwise. There is no commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use or register the disputed domain name.

The disputed domain name currently resolves to a page under construction, but previously resolved to a page imitating the Complainant's official website, which reproduced the Complainant's L'ORÉAL mark and displayed the Complainant's products. The Respondent's use of the disputed domain name cannot amount to a legitimate commercial use, as such use generates a likelihood of confusion with the Complainant's L'ORÉAL trademark and it is aimed at disrupting, for commercial gain, the Complainant's business.

Furthermore, the Respondent did not respond to the Complainant's cease and desist letters nor to its Complaint. Previous panels have held that respondents who do not avail themselves of their rights to respond to a complainant can be assumed to have no rights or legitimate interest in a disputed domain name (see, e.g., Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

Given the Complainant's renown and goodwill worldwide, it would be implausible for the Respondent to argue that they did not have knowledge of the Complainant's L'ORÉAL trademark at the time of registration of the disputed domain name. The Complainant is well-known throughout the world by virtue of its business activities and registered trademarks and domain names, and previous panels have recognized the Complainant's worldwide reputation. Previous panels have held that bad faith can be found where a respondent knew or should have known of a complainant's trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interest (see, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320).

Previous panels have considered that in the absence of any license or permission from a complainant to use a widely known trademark, no actual or contemplated bona fide or legitimate use of a disputed domain name could reasonably be claimed. See, e.g., Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281.

Given that the disputed domain name incorporates the Complainant's L'ORÉAL mark in full, and that the disputed domain name previously resolved to a page directly related to the Complainant's business and products, it is likely that the Respondent registered the disputed domain name based on the notoriety of the Complainant's mark L'ORÉAL with the intent to divert Internet traffic to its website. Due to the Complainant's use of the L'ORÉAL trademark in connection with a wide variety of products and services around the world, consumers perceive goods and services offered under this mark as being those of the Complainant. Given the use of the term "loreal" in the disputed domain name, it is likely that consumers would reasonably assume that the disputed domain name is owned by, or associated with, the Complainant. Previous panels have found that the registration and use of a disputed domain name is so obviously connected with a well-known trademark by someone with no connection to the trademark suggests opportunistic bad faith. See, e.g., LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091.

Finally, email servers have been configured on the disputed domain name, which suggests there may be a risk of the Respondent being engaged in a phishing scheme by which they could gain access to valuable information such as credit cards from the Complainant's clients or employees. Such risk has been recognized by prior panels. See Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 name <lorealduty.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: August 31, 2018