WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling
Case No. D2008-0226
1. The Parties
Complainants are LANCOME PARFUMS ET BEAUTE & CIE and L’OREAL, of Paris, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is 10 Selling, of California, United States of America.
2. The Domain Names and Registrar
The disputed domain names
are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2008. On February 14, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On February 14, 2008, Go Daddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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 February 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 13, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 20, 2008. 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 trademarks upon which the Complaint is based are LANCOME and L’OREAL. According to the documentary evidence and contentions submitted, Complainant LANCOME owns a number of trademark registrations for the LANCOME trademark around the world and particularly in the United States of America. The LANCOME trademark was first registered in the United States of America under No. 0425129 on November 5, 1946 and was later registered under No. 1144179 on December 23, 1980. Complainant LANCOME owns a number of domain names which include the name LANCOME, particularly the domain names <lancome.com>, registered on July 8, 1997, and <lancome.info>, registered on August 10, 2001.
According to the documentary evidence and contentions submitted, Complainant L’OREAL owns a number of trademark registrations for the L’OREAL trademark around the world and particularly in the United States of America. The L’OREAL trademark was first registered in the United States of America under No. 0540541 on April 3, 1951 and under No. 0661746 on May 13, 1958. Complainant LANCOME owns a number of domain names which include the name L’OREAL, particularly the domain names <l-oreal.com>, registered on October 22, 1996.
According to the documentary evidence and contentions submitted, Complainant LANCOME is a French company created in 1935, is currently a subsidiary of Complainant L’OREAL, uses LANCOME as its corporate and trade name, and is well known all over the world in the perfume and cosmetics businesses. LANCOME products which include skincare items are distributed in 160 countries and are sold in the United States of America since 1953.
According to the documentary evidence and contentions submitted, Complainant L’OREAL is a French company created in 1909, uses L’OREAL as its corporate and trade name, and is currently the international leader in the beauty and cosmetics businesses. L’OREAL products are distributed in 150 countries and the L’OREAL company began operations in the United States of America in 1953.
The notoriety of the L’OREAL and LANCOME trademarks has been recognized in prior WIPO UDRP decisions. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869; L’Oreal v. Liao quanyong, WIPO Case No. D2007-1552; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072.
According to the documentary evidence and contentions submitted, the domain names were first registered by North Tustin Dental Association and since at least November 5, 2007 the disputed domain names are registered by Respondent. Complainants sent cease and desist letters to North Tustin Dental Association on September 11, 2007 and September 27, 2007, and North Tustin Dental Association replied on September 27, 2007 proposing a license arrangement with Complainants. Complainants sent a cease and desist letter to Respondent on November 5, 2007. Complainants state that Respondent never replied.
5. Parties’ Contentions
Complainants contend that the disputed domain names are identical or at least similar to Complainants’ trademarks because they reproduce the LANCOME and L’OREAL trademarks in their entirety and the difference between the domain names and the Complainants’ trademarks are only (i) the suppression of the apostrophe in the L’OREAL trademark and the circumflex accent in the LANCOME trademark, (ii) the adjunction of a generic term, and (iii) the adjunction of a gTLD <.com> and <.info>.
Complainants further argue that Respondent does not have legitimate rights or interests regarding the disputed domain names because (i) Respondent is not affiliated with Complainants in any way, and has not been authorized to use and register their trademarks, (ii) Respondent never used the words “Loreal” and “Lancome” before and is not known under those names, and (iii) Respondent’s reproduction of the well known L’OREAL and LANCOME trademarks is intended to misleadingly divert Internet consumers.
Finally, Complainants contend that Respondent registered the disputed domain names in bad faith because (i) Complainants are well known in the United States of America where Respondent is domiciled, (ii) Respondent knew the existence of Complainants, and (iii) a trademark search at the time of the registration of the domain names would have revealed Complainants’ registrations in the United States of America. Complainants also contend that Respondent uses the disputed domain names in bad faith because (i) by registering a domain name corresponding to a famous trademark Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainants’ marks, (ii) Respondent intended to make a profit from the illegitimate registration as Respondent offered to become a licensee of Complainants, (iii) the practice of registering domain names containing third parties’ trademarks suggests intent to profit from the activities of others, and (iv) passive holding constitutes an evidence of bad faith use where there are other factors present.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Multiple Complainants
The question of the multiplicity of marks, domain names, and complainants being consolidated in one single complaint has been addressed in previous UDRP decisions. As indicated in Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336, “[w]hen a complainant (or, as in this case, a group of closely related entities) are seeking redress against a single respondent and their complaint is based on the same set or similar sets of facts and on the same legal basis, it seems appropriate to allow them to proceed in this way. See e.g. Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO Case No. D2005-1052 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623”.
The Panel notes that in prior cases involving the Complainants and the LANCOME and L’OREAL trademarks, panels have admitted that, because they are related companies in the same group, the complaint may be made by more than one complainant. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra; L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, supra.
Therefore, this Panel finds that this is a proper case to bring a single proceeding under the Policy.
B. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g. Hitachi, Ltd. v. Arthur Wrangle, supra; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable and famous, as in the instant case. Each of the domain names at issue incorporates the whole of either the famous LANCOME or L’OREAL trademarks, and that fact may lead the public to think that the disputed domain names are somehow connected to the owner of the registered trademarks. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
The Panel accepts Complainants’ contention that the differences between the domain names at issue and Complainants’ trademarks are not sufficient to avoid confusion or to render a domain name dissimilar, for the following reasons:
(i) The suppression of the apostrophe in the L’OREAL trademark and the circumflex accent in the LANCOME trademarks does not affect significantly the appearance or the pronunciation of the domain names. As it has been decided in other cases under the Policy, contributing factors to the likelihood of confusion are the visual similarity between the domain name and complainant’s mark, and the mark being strong and immediately recognizable. See Microsoft Corporation v. Microsof.com a.k.a. Tarek Ahmed, WIPO Case No. D2000-0548; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489.
(ii) The addition of the letter “a” in the domain name <alancome.com> and of the letter “z” in the domain names <lorealzoutlet.com>, <lancomezoutlet.com>, <lancomez.com>, <lancomeztsore.com>, and <lancomezmall.com> does not affect a finding of confusing similarity. The practice of “typosquatting” has consistently been regarded in previous WIPO decisions as creating domain names confusingly similar to the relevant mark. This is a point well-established in WIPO domain name case law. CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
(iii) It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. Furthermore, in the domain name <lorealopening.com> the L’OREAL trademark stands out and may create an association between the owner of the domain name and the owner of the registered trademark.
In the domain name <lorealmakeup.info>, the word “make up” is descriptive of the L’OREAL products and, therefore, increases the risk of confusion between the disputed domain name and the registered trademark. The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2006-1137; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Cologne Zone, WIPO Case No. D2001-1039; The Elisabeth Taylor Cosmetics Company v. NOLDC, Inc., WIPO Case No. D2006-0800; Accor v. Yossi Hasidim, WIPO Case No. D2001-0392. That domain name also creates a false association with the official L’OREAL Make Up website which can be accessed at “www.lorealmakeup.com”.
The addition of the term “store” in the domain name <lancomezstore.com>, of the terms “outlet”, “official outlet” and “best outlet” in the domain names <lorealzoutlet.com>, <lancomeoutlet.info>, <lancomezoutlet.com>, <bestoutletloreal.com>, <lorealoutlet.com>, <officialoutletloreal.com>, <theoutletloreal.com>, <outletloreal.com>, and <lorealoutlets.com>, and of the term “mall” in the domain name <lancomezmall.com> gives no distinctiveness to the domain names which incorporate Complainants’ trademarks since the terms “store”, “outlet” and “mall” are generic terms used to identify a place where products can be found. Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffman La Roche AG v. DNS Administrator/ Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047; F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
(iv) Finally, the addition of the suffixes “.com” or “.info” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
The consensus view in the URDP Panel decisions has been that a complainant is required to make out an initial prima facie case, thereby shifting the burden of demonstrating rights or legitimate interests in the domain name to respondent. If respondent fails to carry this evidentiary burden, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel accepts Complainants’ contentions that Respondent has no association or affiliation with Complainants, and has not been authorized to use the disputed domain names by Complainants, that Respondent is not known under the names “Loreal” or “LANCOME”, and that Respondent reproduced the L’OREAL and LANCOME trademarks to take advantage of the well known reputation associated therewith. By defaulting, Respondent failed to rebut such contentions and such facts as asserted by Complainants will be taken as true.
Paragraph 4(c)(i) of the Policy provides that respondents’ rights or legitimate interests to a domain name for the purposes of Paragraph 4(a)(ii) would be demonstrated by “before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name … in connection with bona fide offering of goods and services”. Paragraph 4(c)(iii) further provides that respondents’ rights or legitimate interests to a domain name for the purposes of Paragraph 4(a)(ii) would be demonstrated by “making a legitimate … fair use of the domain name, without intent for commercial gain to misleadingly divert consumers …”.
As a result of an independent research made on March 29, 2008, by attempting to access a website to which each of the domain names at issue might resolve, the Panel noted that the disputed domain names are apparently inactive. Therefore, the Panel has not found any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
In light of the reputation of the LANCOME and L’OREAL trademarks, the reproduction by Respondent of those trademarks in their entirety, and the combination of each of those trademarks with generic and descriptive terms or with misspelling errors, it is clear that Respondent in all likelihood knew of the existence of Complainants’ trademarks and of their relevance in the United States market. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464. See also Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
While that finding would suffice to dispose of the issue of bad faith registration, the Panel also agrees with Complainants’ contention that a contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain names would have revealed Complainants’ long standing registrations in the United States. See, for instance, RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242.
Also, as indicated in another Policy case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”. Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325. In fact, “[i]t simply defies reason to think that the Respondent, upon learning of the Complainant’s …[product line], and appreciating the resulting widespread recognition which the mark …. would quickly attain, had absolutely no intention of misappropriating some of that recognition for his own ends – specifically as a means of substantially increasing the number of visitors to his websites than he would otherwise attract”. Sound Unseen, Ltd., Apple Bottoms, LLC, and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636. That is what some case precedents have termed as “opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
Complainants contend that Respondent registered the disputed domain names to make a profit because the original registrant, North Tustin Dental Association, offered to become a licensee of Complainants in response to Complainants’ cease and desist letters. Complainants also argue that North Tustin Dental Association shows a practice of registering domain names containing third parties’ trademarks in view of the decision in MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412. It is also asserted that Respondent 10 Selling and North Tustin Dental Association are the same entity because they have the same mail address and the same administrative contact in the domain name registration records. The Panel finds it unnecessary to its determination of bad faith registration to resolve that issue.
Finally, Complainants state that the disputed domain names are unexploited since their registration and, relying on previous UDRP decisions, argue that passive holding constitutes an evidence of bad faith use where there are other factors present.
The consensus view in the URDP Panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2). See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc., WIPO Case No. D2000-0022; J. García Carrión, S.A. v. María José Catalán Frias, WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, supra.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case the majority of the facts referred to above are present and, therefore, the Panel concludes that the disputed domain names are being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <lancomeoutlet.info>, <alancome.com>, <lancomezoutlet.com>, <lancomez.com>, <lancomezstore.com>, and <lancomezmall.com> be transferred to Complainant LANCOME, and that the domain names <lorealmakeup.info>, <lorealzoutlet.com>, <lorealoutlet.com>, <lorealoutlets.com>, <lorealopening.com>, <outletloreal.com>, <theoutletloreal.com>, <bestoutletloreal.com>, and <officialoutletloreal.com> be transferred to Complainant L’OREAL.
Manoel J. Pereira dos Santos
Dated: April 3, 2008