WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oreal , Lancôme Parfums et Beaute & Cie v. InfoChina ltd
Case No. D2008-0981
1 The Parties
The First Complainant is L'Oreal of Paris, France. The Second Complainant is Lancôme Parfums et Beaute & Cie, of Paris, France. The Complainants are represented by Cabinet Dreyfus & Associés, of France.
The Respondent is InfoChina ltd, of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <lancomefaq.com> and <lorealfaq.com> are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 30, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On the same day, Network Solutions, LLC 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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2008.
The Center appointed Soh Kar Liang as the sole panelist in this matter on August 8, 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 First Complainant was founded in 1909 by a French chemist by the name L'Oréal, and is a French industrial group specialized in the field of cosmetics and beauty. The First Complainant is present in over 130 countries and has over 3,000 employees of 60 nationalities working across 30 different disciplines. The First Complainant markets over 500 brands covering over 2,000 products in the beauty industry including hair color, styling aids, cosmetics, cleansers and fragrances.
The Second Complainant is a subsidiary of the First Complainant and was founded in 1935. It produces luxury products including fragrances and cosmetics and is ranked first on the market for beauty products.
The Complainants are international leaders in the cosmetics industry and own numerous well-known trade marks relating to their names worldwide and in China. The Complaint provided a list of international trade mark registrations belonging to the Complainants comprising 30 incorporating the word L'Oreal and 12 incorporating the word Lancôme. These include international registrations 699948 and 666567 for L'OREAL and LANCÔME respectively.
The Complainants also own the following domain names:
Searches on the words “l'oreal”, “lancôme”, “loreal” and “lancome” on the World Wide Web using popular search engines (e.g., Google) produce many pages of hits referring to the Complainant's products. The Complainants are no stranger to domain name disputes. Their trade marks L'OREAL and LANCÔME appear to be popular targets of spurious registrants and cybersquatters. The Complainants have filed no less than four Complaints with the Center previously (L'oreal v. Lewis Cheng, WIPO Case No. D2008-0437; Lancome Parfums Et Beaute & Cie v. 10 Selling, WIPO Case No. D2008-0226; L'oreal v. Liao quanyong, WIPO Case No. D2007-1552; L'oreal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie, v. Spiral Matrix, WIPO Case No. D2006-0869). The domain names which the Complainants have disputed and recovered included:
The Respondent registered both disputed domain names on March 1, 2008. Both disputed domain names redirect to an alternate website. The alternate website redirected from <lorealfaq.com> has a heading section comprising the words “loreafaq.com” and provided links to various “FAQs” for operating systems (e.g., XP, Windows, Unix) and computer games (e.g., World Of Warcraft, Sims) while that redirected from <lancomefaq.com> has a heading section comprising the words “lancomefaq.com” and provided links for diverse topics (e.g., travel, insurance, online dating, music, lawyers). Other than the links, both websites are identical in layout, colour and graphic images. There is also an identical section in both websites for searching and buying domain names online.
Through their representatives, the Complainants sent a cease and desist letter to the Respondent on April 3, 2008 to inter alia cease use of the disputed domain names but did not receive any response.
5. Parties' Contentions
The Complainant contends that
1) The disputed domain names are identical and confusingly similar to the Complainants' trade marks. The addition of the suffix “faq” is insufficient to distinguish the disputed domain names from the Complainants' trade marks;
2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has never been known by the names “l'oreal” or “lancôme”. The Respondent is not affiliated with the Complainants and is not authorised by the Complainants to register their trade marks or register domain names incorporating their trade marks; and
3) The disputed domain names were registered and are being used in bad faith. The Respondent is aware of the Complainants' trade marks. The Respondent registered the disputed domain names to divert Internet users to its websites and profiting from the reputation and goodwill of the Complainants.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainants must show that:
1) the disputed domain names are identical or confusingly similar to trade marks in which the Complainants have rights; and
2) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants own trade mark registrations, including international trade mark registrations, in the trade marks L'OREAL and LANCÔME, and many other trade marks incorporating these words. All these trade mark registrations precede the registration of the disputed domain names. L'OREAL and LANCÔME are clearly prior trade marks in which the Complainants have rights.
In accordance with established practice, the top level domain portion, “.com”, may be ignored in comparing a domain name with a trade mark (e.g., see Gerling Beteiligungs – GmbH (GBG) v. World Space Corp., WIPO Case No. D2006-0223; DZ Bank AG v. Bentz, WIPO Case No. D2006-0414).
Although domain names are no longer restricted to the ASCII alphanumeric character set, it remains a common practice to reduce words comprising diacritics (eg, accents, circumflexes) to their lowercase alphanumeric ASCII forms for registration as domain names. It is also still not possible to include punctuation marks (except for the hyphen) in domain names. Words like “L'oréal” and “Lancôme” naturally become “loreal” and “lancome” respectively in domain name form. Further, diacritics and punctuation marks typically do not significantly affect the appearance of words. Therefore, in comparing the disputed domain names with the Complainants' trade marks, this Panel shall ignore the diacritic and punctuation marks in the trade marks. It is noted that a similar approach was taken by the panel in Lancôme Parfums et Beauté & Cie, L'oréal v 10 Selling, WIPO Case No. D2008-0226.
In view of the above, the only difference between the Complainants' trade marks and the disputed domain names is distilled to the suffix letters “faq” in the disputed domain names. The term “faq” is a well-known acronym for “frequently asked questions”. Its prolific use by netizens has already spilled-over into everyday language. The conjoined terms “lorealfaq” and “lancomefaq” will be readily understood as “loreal frequently asked questions” and “lancome frequently asked questions” respectively. As such, the descriptive nature of the letters “faq” is such that concatenating it with a trade mark does not create a domain name that is distinguishable from the trade mark. The essential nature of the trade mark remains (see F Hoffmann-La Roche AG v Drugfaq Canada, WIPO Case No. D2005-1281).
This conclusion is consistent with the broader established principle that a domain name which incorporates a trade mark in its entirety is not distinguishable from the trade mark by addition of descriptive and generic elements and remains confusingly similar to the trade mark (see Compagnie Gervais Danone v. Joseph Welter, WIPO Case No. D2008-0594; The Ritz Hotel, Limited v Damir Kruzicevic, WIPO Case No. D2005-1137; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).
Therefore, the Panel holds that the disputed domain names are confusingly similar to the Complainants trade marks. The Complainants have successfully met the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Based on the Complainants' submissions, this Panel accepts that the following have been established on a prima facie basis:
1) The Respondent is not affiliated with the Complainants and has not been authorized by the Complainants to use the trade marks L'OREAL and LANCÔME, or register any domain name incorporating these trade marks;
2) The Respondent has never used the terms “l'oreal” and “lancôme” prior to the domain name registrations and have never been known under these names;
3) Despite the Complainants' cease and desist letter, the Respondent chose not to respond and clarify its interests and rights in the disputed domain names, if any; and
4) The disputed domain names do not serve any discernible purpose other than to serve up redirection websites that bear no relation to the disputed domain names.
The Respondent has failed to controvert the above and/or provide any justification of a right or legitimate interest in respect of the disputed domain names despite the above cogent factors. As such, this Panel concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent is required by Paragraph 2 of the Policy to:
“… represent and warrant to [the Registrar] that … (b) to [the Respondent's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) [the Respondent is] not registering the domain name for an unlawful purpose; and (d) [the Respondent] will not knowingly use the domain name in violation of any applicable laws or regulations …”
The Complainants trade marks are well-known worldwide and in China, it is inconceivable without the benefit of additional information that the Respondent was unaware of the Complainants' trade mark rights in L'OREAL and LANCÔME. The notoriety of the Complainants' trade marks has already been previously endorsed by earlier panels and this Panel finds similarly on the facts submitted by the Complainants.
The use of a well-known mark as a domain name by a person with no connection to products identified by the well-known mark and the attraction of Internet users to a website for commercial gain are evidence of opportunistic bad faith registration and use (e.g., F Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956; Safoni-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). The Respondent's pattern of behavior in selecting two domain names, namely the disputed domain names, for directing traffic to its websites with multiple links to products and services that are not connected to the Complainants' trade marks is certainly suggestive as such.
Paragraph 4(b)(iv) of the Policy provides that the following is evidence of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
The section on the Respondent's redirection websites which purports to sell domain names appears calculated to generate financial gain for the Respondent. The deliberate use of various trade marks of the Complainants to attract traffic to the redirection websites created a likelihood of confusion with the Complainants' trade marks as to the source, sponsorship, affiliation or endorsement of the website. Together with the unauthorized and unjustified use of the Complainant's trade marks on the heading sections of the Respondent's redirection websites, all factors point unequivocally to a strong inference of bad faith registration and use on the part of the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain names <lorealfaq.com> and <lancomefaq.com> be transferred to the Complainants.
Soh Kar Liang
Dated: August 22, 2008