WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fondation Bettencourt Schueller v. Dennis Bettencourt
Case No. D2019-0850
1. The Parties
The Complainant is Fondation Bettencourt Schueller, France, represented by ATurquoise société d’avocats, France.
The Respondent is Dennis Bettencourt, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bettencourt.org> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2019. On April 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 19, 2019.
The Center verified that the Complaint, together with the amendment to 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 April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Center received an email from the Respondent on May 6, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on May 17, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 24, 2019. 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 Fondation Bettencourt Schueller is a public-interest foundation created in 1987 by the Bettencourt Schueller family, a member of which was the late Mrs. Liliane Bettencourt Schueller - the principal shareholder of the L’Oreal group. The Complainant’s fields of engagement are life sciences, the arts, and social progress. As part of its support to research in the life science, the Complainant created the “Young researchers Bettencourt prize”, “Liliane Bettencourt prize for life sciences”, and “Bettencourt prix coup d’élan pour la recherche française”. Since 2003, the Inserm Liliane Bettencourt School supports students in medicine for conducting a science formation in parallel of their studies. In the field of culture, the Complainant has supported outstanding expertise in arts and crafts and choral singing with the “Liliane Bettencourt choral singing prize” since 1989, and with the “Prix Lilianne Bettencourt pour l’intelligence de la main” since 1999.
The Complainant has rights in the following trademark registrations containing the name “Bettencourt” (the “BETTENCOURT trademark”):
- the trademark CURSUS LILIANE BETTENCOURT with registration No.3766821, registered in France for services in International Classes 35, 36, 41, 42, and 45, dated September 16, 2010;
- the trademark COLLEGE LILIANE BETTENCOURT with registration No. 3766825, registered in France for services in International Classes 35, 36, 41, 42, and 45, dated September 16, 2010;
- the word trademark FONDATION BETTENCOURT SCHUELLER with registration No. 9381427, registered as a European Union trademark on March 6, 2011, for services in International Classes 35, 36, 41, 42, and 45;
- the combined trademark FONDATION BETTENCOURT SCHUELLER with registration No. 9384652, registered as a European Union trademark on March 6, 2011, for services in International Classes 35, 36, 41, 42, and 45; and
- the trademark PRIX LILIANNE BETTENCOURT POUR L’INTELLIGENCE DE LA MAIN with registration No. 99779010, registered by Mrs. Liliane Bettencourt Schueller in France for goods and services in International Classes 3, 6, 8, 14, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 31, 35, 41, and 44, dated March 4, 1999.
The Complainant has registered the domain names <fondationbettencourt.com> and <fondation‑bettencourt.com>.
The disputed domain name was registered on October 26, 1999. At the time of filing of the Complaint, it resolved to a parking page containing links entitled “Meyers”, “Liliane”, “fonds”, “argent”, “charity donations”, as well as links to third party charities and foundations. According to the evidence provided by the Complainant, the disputed domain name has been used to send emails purporting to be sent from the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it has acquired rights in the trade name “Fondation Bettencourt Schueller” prior to the registration of the disputed domain name. It has made its trade name and the name “Bettencourt” (the name of the co-founder of the Complainant) well known through its activities over the last thirty years, and is recognized as a major actor in the field of philanthropy. Mrs. Liliane Bettencourt Schueller was awarded the Légion d’honneur in 2001 for her works in philanthropy, and for the activities of the Complainant.
The Complainant submits that the disputed domain name is identical or confusingly similar to the BETTENCOURT trademark in which the Complainant has rights, as it reproduces the distinctive and dominant “Bettencourt” element present in this trademark, and is registered in the “.org” generic Top-Level Domain (“gTLD”), which is intended for non-profit entities and is operated by the Public Interest Registry, and thus refers directly to the Complainant’s non-profit activities. The website at the disputed domain name contains links to “charity donations”, “fonds”, “Liliane” and “Meyers” (which is the married name of Mrs. Liliane Bettencourt’s daughter) and thus creates additional confusion to the public.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought the Complainant’s consent to the use of the BETTENCOURT trademark and has no relation to the Complainant or to its activity. The disputed domain name doesn’t resolve to an active website, but is associated to an “under construction” page that displays links to “charity donations”, “Meyers”, “Liliane”, “fonds”, “argent”, “booking”, “Stichting Charlie Braveheart — Hospital Comfort Care for Kids - Please Donate for Stress-free Children Hospital Treatments”, “How can you do the most good? - Effective Altruism - Using evidence and reason to help others as much as possible” and “Charity — Malt 1st tech community — create freely a profile”. Therefore, the use of the disputed domain name is likely to cause confusion among Internet users, contributors, partners, and grantees of the Complainant, as well as allow the Respondent to benefit from and tarnish the goodwill associated with the BETTENCOURT trademark through its fraudulent activities on the Internet.
The Complainant submits that “Dennis Bettencourt” is not the real name of the Respondent. According to the Complainant, a person by that name either does not actually exist, or the actual registrant of the disputed domain name has engaged in identity theft of a real person with the name Dennis Bettencourt who has no connection to the disputed domain name.
The Complainant points out that the Respondent does not carry out a legitimate offering of goods or services, but uses the disputed domain name for a fraudulent email scheme for financial gain. The Complainant was made aware that fraudulent email messages were being sent from an email address associated to the disputed domain name. These messages were sent from the following email address incorporating the disputed domain name – “[…]@bettencourt.org” – on June 25, 2019, included a subject line: “DONATION”, and stated that, “[w]e the management of the Bettencourt Foundation announce to you that late Mrs. Liliane Bettencourt Foundation donated to you [USD] 5,000,000 donation. For more details contact Mrs. Liliane Bettencourt Foundation”.
The Complainant submits that it sent legal notices to formally ask the Respondent and the Registrar to stop any wrongful acts, but the Respondent never replied to the legal notice, and the same fraudulent email message was sent again on July 10, 2018, with the subject: “DONATION REMINDER”.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The name “Bettencourt” and the BETTENCOURT trademark have been known for more than 30 years in the philanthropic sector and for almost 70 years in the beauty and cosmetic sector as the name of the owner of the L’Oréal group. The Respondent could not ignore the Complainant’s rights in the BETTENCOURT trademark at the time of the registration of the disputed domain name. According to the Complainant, the disputed domain name was registered with the purpose of harming the reputation of the Complainant and its founders and in an intentional attempt to attract, for financial gain, Internet users to the Respondent’s website and to confuse the recipients of fraudulent emails by creating a likelihood of confusion with the BETTENCOURT trademark through the use of the misleading email address “[...]@bettencourt.org”.
According to the Complainant, this misleading email address and the messages sent to the recipients of the fraudulent email messages were designed to unlawfully collect personal information from the recipients such as their banking details, addresses, or passport details.
B. Respondent
Except for an email communication informing the Center of a new location for the Respondent, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established that it has rights in the BETTENCOURT trademark arising from it being the holder of trademark registrations in France and in the European Union and from its connection to its founders of the Bettencourt Schueller family, including the late Mrs. Liliane Bettencourt Schueller. See section 1.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The disputed domain name contains the element “bettencourt” combined with the “.org” gTLD. The “bettencourt” element of the disputed domain name is identical to the distinctive and dominant element “bettencourt” of the BETTENCOURT trademark. As pointed out by the Complainant, the website at the disputed domain name contains links to “charity donations”, “fonds”, “Liliane”, and “Meyers” (which is the married name of Mrs. Liliane Bettencourt’s daughter), and the use of the disputed domain name as an email address, support the finding of confusing similarity. See section 1.7 of the WIPO Overview 3.0.
In view of the above considerations, the Panel finds that the disputed domain name is confusingly similar to the BETTENCOURT trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on a complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the BETTENCOURT trademark, that there are no relations between the Parties, that the disputed domain name resolves to a webpage that displays links related to the Complainant, its founders or its charity activities and may thus confuse Internet users and the contributors, partners and grantees of the Complainant. The Complainant points out that the Respondent is not carrying out a bona fide use of the disputed domain name, but uses the disputed domain name for a fraudulent email scheme in an attempt for financial gain to collect sensitive information from deceived recipients of its email messages. The Complainant also disputes that the real name of the Respondent is “Dennis Bettencourt” and submits that such person either does not exist, or the actual registrant of the disputed domain name has engaged in identity theft. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that it has rights and legitimate interests in the disputed domain name. It has not disputed the Complainant’s contention that its real name is not “Dennis Bettencourt” and has not submitted any evidence to the contrary.
The disputed domain name is confusingly similar to the BETTENCOURT trademark, and the website associated to it contains links related to the Complainant, its founders, and its activities. As discussed above in section 6.A, Internet users may regard the disputed domain name as referring to an official website of the Complainant. The Complainant has commenced its activities in the 1980s, and was already known for its activities at the time of the registration of the disputed domain name.
As contended by the Complainant and not denied by the Respondent, the latter has distributed from an email address associated to the disputed domain name email messages that have an appearance and content that may confuse their recipients to wrongfully believe that they have received donations from the Complainant and that urge these recipients to contact the sender in order to receive these “donations”. It may well be that such recipients would then be required to submit sensitive data to the sender of these messages. Since the Respondent is in control of the disputed domain name, it is in control of the email accounts associated to it as well, and bears the liability for the actions carried out through such email accounts.
In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant and of its BETTENCOURT trademark, has registered and used the disputed domain name in an attempt to exploit this goodwill by attracting Internet users to its website and by distributing to Internet users fraudulent email messages in an attempt for financial gain to collect sensitive information from deceived recipients of these email messages. Such conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Given that the scenarios described above are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See section 3.1 of the WIPO Overview 3.0.
As discussed in section 6.A above, the disputed domain name fully incorporates the distinctive “bettencourt” element of the BETTENCOURT trademark, while the “.org” gTLD is intended for non-profit entities and thus refers directly to the Complainant’s non-profit activities. In addition, the Panel notes that the Complainant, the founding family and the Complainant’s activities predate the registration of the disputed domain name. The posterior use of the disputed domain name can support the targeting of the Complainant by the Respondent, with the acquisition of the domain name probably with the intent to unfairly capitalize on the Complainant’s reputation or on the Complainant’s nascent trademark rights. See section 3.8.2 of the WIPO Overview 3.0. The Respondent does not deny that the disputed domain name is linked to a website that features links related to the Complainant, its founders and activities, and does not deny that it has used the disputed domain name to create an email account associated to the disputed domain name from which to distribute to Internet users fraudulent email messages in an attempt for financial gain to collect sensitive information from deceived recipients of these email messages. The Complainant has submitted copies of these email messages and they have not been disputed by the Respondent.
Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and has targeted it and its BETTENCOURT trademark in an attempt to attract Internet users to its website and to confuse the recipients of its email messages that they have received genuine correspondence from the Complainant and then collect their sensitive information for commercial gain. This conduct of the Respondent satisfies the Panel that the Respondent has registered and used the disputed domain name in bad faith.
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 <bettencourt.org> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: May 31, 2019
