WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal v. beats

Case No. D2019-2655

1. The Parties

The Complainant is L’Oréal, France, represented by Studio Barbero S.p.A., Italy.

The Respondent is beats, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <nyx-cosmetics.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2019, 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.

On November 11, 2019, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On November 12, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

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 in English and Korean of the Complaint, and the proceedings commenced on November 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2019.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 6, 2020. 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 L’Oréal, founded in 1909, is a world leader in the field of cosmetics and beauty products. The Complainant is present in over 140 countries and markets 35 global beauty brands including L’OREAL, GARNIER, MAYBELLINE, KERASTASE and thousands of products in all sectors of the beauty business.

The Complainant acquired NYX Logs Angeles Inc. and its trademark portfolio in 2014. The Complainant and its NYX and NYX PROFESSIONAL MAKEUP trademarks have received many awards, and their trademarks are strongly supported by global advertising campaigns and the Complainant’s social commitments. The Complainant owns numerous trademark registrations for NYX and variations thereof such as NYX PROFESSIONAL MAKEUP around the world including but not limited to the following:

- International Trademark Registration No. 1052316A for NYX, registered on August 25, 2010 in Class 3, designating European Union;

- International Trademark Registration No. 1184769A for NYX, registered on October 31, 2013 in Classes 18, 21, and 35, designating, inter alia,European Union;

- International Trademark Registration No. 1155413 for NYX PROFESSIONAL MAKEUP figurative, registered on February 19, 2013 in classes 3, 18, 21, and 35, designating, amongst others, the Republic of Korea;

- the Republic of Korea Trademark Registration No. 4008084700000 for NYX in class 21, registered on December 9, 2009 ;

- the Republic of Korea Trademark Registration No. 4101917390000 for NYX in class 35, registered on November 17, 2009; and

- the Republic of Korea Trademark Registration No. 4008084690000 for NYX in class 3, registered on December 9, 2009.

In addition, the Complainant and its subsidiaries own and use the following domain names <nyxcosmetics.com>, <nyx-cosmetic.com>, <nyx-cosmetics.co.kr>, <nyxcosmetics.kr> and <nyx-cosmetics.kr> for websites to promote their goods and services.

The disputed domain name <nyx-cosmetics.com> was registered on April 14, 2014, and the disputed domain name is redirected to a webpage with sponsored pay-per-click links to various commercial websites.

On November 20, 2017, the Complainant sent a cease and desist letter to the Respondent requesting to immediately cease any use of the disputed domain name and transfer it to the Complainant. Various reminders of such cease and desist letter were sent via email but the Respondent did not provide any response.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks NYX or NYX PROFESSIONAL MAKEUP; (ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Nyx” or “Nyx professional makeup.”

The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent (i) intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source or affiliation of the Respondent’s website; (ii) registered numerous domain names comprised of the famous trademarks of third parties including the present case, and such action shows a pattern of conduct by the Respondent of preventing the owners of the trademarks from reflecting the marks in the corresponding domain name; and (iii) was fully aware of the Complainant’s reputation and well-known trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent neither replied to the Complainant nor responded to the Center’s communication of notification of the Complaint before the due date for Response on December 10, 2019, and no email communications were received from the Respondent during the proceeding. The consensus view of UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

However, paragraph 14 of the Rules provides in the event of default that a panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that “[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.” Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.”; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004.

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the Parties, subject to the authority of the Panel to determine otherwise.

In this case, the language of the Registration Agreement is Korean. However, in determining the language of the proceeding in the present case, pursuant to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers the following points:

(i) the Respondent did not respond to any of the communications made by the Center in both English and Korean, showing his unwillingness to participate in this proceeding, in particular, the Respondent did not comment on the language of the proceeding; (ii) English words are used on the corresponding website at the disputed domain name <nyx-cosmetics.com>; (iii) the Respondent has been involved in at least nine prior UDRP disputes and one of the decisions indicates the Respondent’s ability to communicate in English; and (v) ordering the Complainant to translate the Complaint in Korean will cause undue delay and expense in the process.

In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.

B. Identical or Confusingly Similar

The disputed domain name <nyx-cosmetics.com> incorporates the Complainant’s NYX trademark in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0; see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (“When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.”). Moreover, the generic Top-Level Domain (“gTLD”), such as “.com,” is normally disregarded during the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.

In this case, in the disputed domain name, the descriptive term “cosmetics” and a hyphen, and the gTLD “.com,” are attached to the Complainant’s NYX trademark. However, given that the term “cosmetics” or a hyphen is a merely descriptive term, it does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name. See Sonera Ojyand Telia AB (Publ.) v. Daungsoo Ghim, WIPO Case No. D2002-0403; see also, JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486 (“The mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names.”). Moreover, the mere addition of the gTLD “.com” also does not eliminate confusing similarity because gTLD is viewed as a standard registration requirement as the “use of gTLD is required of domain name registrants.” See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0 provides that “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.”

After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademarks to the Respondent. The Complainant has not authorized or permitted the Respondent to use its NYX or NYX PROFESSIONAL MAKEUP trademarks. The Panel thus finds that the Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain name, which wholly incorporates the Complainant’s marks. F.Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.

Furthermore, the Panel agrees that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is there evidence, which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Nyx” or “Nyx professional makeup.”

Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

By failing to respond to the Complainant’s position before the deadline, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.

In addition, the nature of the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s trademarks 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.

It is generally accepted under the Policy that, for a bad faith registration, (i) the respondent must have been aware of the complainant or its trademark when it registered the disputed domain name, and (ii) the registration must in some way have been targeted at the complainant or its trademark, for example, by seeking to capitalize on it. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 and Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954.

Given that NYX is a famous trademark worldwide, it is highly likely that the Respondent was aware of the rights the Complainant has in the trademark, and the value of the said trademark, at the point of the registration. The fact that the Respondent’s website offered the disputed domain name for a sale via the Sedo platform and had numerous sponsored pay-per-click links, mentioning the Complainant’s trademark, indicates not only that the Respondent had a prior knowledge about the Complainant’s business and trademark, but also that it registered the disputed domain name to potentially attract Internet users to the Respondent’s website for commercial gains by creating confusion.

Moreover, the Respondent registered various other domain names comprised of the famous trademarks of third parties and was involved in several UDRP cases which were concluded with decisions rendered in favor of the Complainants. Such history, in combination with the present case, shows a pattern of conduct by the Respondent of preventing the owner of the trademark from reflecting the mark in a corresponding domain name, which constitutes bad faith under paragraph 4(b)(ii) of the Policy. See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.

For the reasons above, the Panel finds 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 <nyx-cosmetics.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: January 20, 2020