The Complainant is L'oreal SA of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Zoran Vidanovic of Bitola, The Former Yugoslav Republic of Macedonia.
The disputed domain name <lorealtube.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2009. On July 24, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On July 24, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2009. On August 6, August 24, and August 25, 2009, the Center received informal Responses from the Respondent. For reasons given below, the Panel has accepted those Responses as the Response to the Complaint.
On August 14, and August 27, 2009 the Center received supplemental filings from the Complainant. For reasons given below, the Panel has accepted those supplemental filings and considered them in reaching its decision.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on September 11, 2009. 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 Complainant is a famous French industrial group specializing in cosmetics and beauty products. It was founded in 1909 and is now recognized as the international leader and one of the largest companies in its field. It operates in many countries throughout the world.
The Complainant is the registered owner of many trademarks for L'OREAL including the following:
(a) International trademark L'OREAL n° 394615 registered on December 12, 1972;
(b) numerous registered trademarks for L'OREAL registered in Macedonia; (collectively referred to as “the LOREAL trademarks”.)
Additionally, the Complainant is the owner of several domain names that it uses in its business, including <loreal.com>, <loreal.fr>, <lorealprofessionnel.com> and <lorealfinance.com>.
The Respondent registered the domain name <lorealtube.com> on May 26, 2009. It resolves to the website “www.lorealtube.com” which is described as being “a free Starter Web Page courtesy of Proya.biz.”
The Complainant alleges that the domain name <lorealtube.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered L'OREAL trademarks to which reference has already been made. It then says that the domain name <lorealtube.com> is identical or confusingly similar to the L'OREAL trademarks as the spelling of that word in the domain name is the same as the spelling of the same word in the trademarks with the omission of the apostrophe in the trademarks and the addition of the word “tube”, which is one means by which cosmetics and beauty products are packaged, thus suggesting that the domain name relates to the Complainant's products sold in tubes.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known L'OREAL mark and to use it in an illegitimate way, namely to intimidate the Complainant into buying the domain name from it and in the meantime to use it for a website directing Internet users towards a parking page with various sponsored links associated with the Complainant, its products and products similar to the Complainant's products. Moreover, the Complainant contends that it has never authorized the Respondent to use its trademark in a domain name and that the Respondent is not known under the name L'Oreal or any similar expression.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. With respect to the registration of the domain name, the Complainant submits that the L'OREAL trademark is very well known and that, as the Respondent has registered a domain name consisting solely of that trademark and one of the means of packaging its products, namely in tubes, the only conclusion open is that the Respondent registered the domain name in bad faith for the purpose of selling it or using it to earn income by giving the false impression that it was an official L'Oreal site. With respect to the use of the domain name, the Complainant submits that this also was in bad faith because the Respondent used it to realize financial gain through a parking page from which he could earn pay-per-click revenue, set up links to products that were the same as the Complainant's products to attract Internet users by creating a likelihood of confusion with Complainant's trademarks and tried to sell the domain name to the Complainant.
The Respondent's email of August 6, 2009.
By email received by the Center on August 6, 2009, the Respondent made the following submissions.
He had bought the domain name <lorealtube.com> on the open market and therefore legally. The domain name <lorealtube.com> was a contraction of the expression “loading real tube” but, because the expression was too long, he had contracted it to the expression in the domain name, namely “lorealtube” which simply “overlapped” with L'OREAL the brand.
He had never had any bad intentions towards the L'OREAL brand, but on the contrary his intention was to a website for loading advertisements in video format.
In any event he had offered the domain name for sale to the Complainant because there were some inappropriate examples of the use of domain names such as <pradatube.com> and <guciitube.com> (sic). He simply wanted the Complainant to have the domain name for a respectful compensation and after several communications the Complainant agreed to this for a small sum of money. As the Complainant has already agreed to pay for the domain name, the Respondent did not understand why it had now filed the Complaint.
The Respondent also submitted that he hoped that he would soon complete loading real tube and that it would find its place in the Internet world in its short form, as in the domain name <lorealtube.com>.
Finally, the Respondent supported his case by submitting that his situation was similar to cases where words had been added to <dreyfus.com> to make, for example,
<dreyfusrecords.com> and to cases where words had been added to the trademark L'OREAL to create domain names that were presently for sale at “www.sedo.com”.
The Respondent's email of August 24, 2009.
By email received by the Center on August 24, 2009, the Respondent made the following submissions.
He had originally thought that if he offered the disputed domain name to the Complainant, it would at least show some gratitude for that offer and he never imagined that the matter would proceed to the filing of the Complaint.
Accordingly, he felt it appropriate to repeat his previous submission that the domain name was based on the expression “loading real tube” which was a legitimate name for a business, where words and contractions of those words had been adopted in an appropriate manner. The name of his domain was therefore <lorealtube.com>.
Moreover, he was disappointed that the Complainant did not approach him personally, which would have given it a better understanding of his position, rather than by filing the Complaint.
The Respondent also denied the allegations of bad faith based on the further allegation that the disputed domain name was directed to a parking page with commercial links in the field of cosmetics which is the business of the Complainant. He denied those allegations on the ground that if a domain name is bought through “www.godaddy.com” or “www.proya.biz”, commercial links of that sort are automatically generated and displayed. In the present case, the links were thus generated automatically and the Respondent had not used them. However, when he was alerted to possible misunderstandings that could accrue from that situation, he changed them immediately.
By way of support for that contention, the Respondent added that he also owned the domain names <macedoniapress.com> and <macedoniamarket.com> where there are also some automatically generated links as there are in the case of <lorealtube.com>.
In response to the allegation that he had made a threat by alluding to <pradatube.com> and <guccitube.com> (sic), he thought that there was no need for a broad explanation because one could see for oneself that he had just been giving a mere example that some people do have bad intentions, in contrast to his. Other examples were <porschetube.com> and <mazdatube.com>.
He agreed that there was a kind of bad faith in those cases because one could clearly see the logo and products deliberately displayed for the purpose of selling, but his case was obviously very different from those cases.
Concerning the price of 35.000 Euros for the domain name, the Respondent submitted that he was offered that sum by a person on a blog where he was searching for information about Internet domain names and his right to possess them. That person had just asked the Respondent to sell him the disputed domain name, but he did not want to do so because he was in negotiations with the Complainant and was still in the process of finishing the website.
The Complainant's price of 50 Euros which it offered to buy the domain name and now denies was unreasonable.
The Respondent also notes that the following domain names are for sale: <loreal.org.cn>, <floreal.net>, <lorealty.com>, <lorealmakeup.cn>, <lorealbeauty.com.cn>, <lorealmakeup.com.cn>, <lorealbeauty.cn>, <loreallipstick.com>, <lorealproffessionnel.com>, <hellorealestate.me>, <lorealmineralmakeup.com>, <loreal-china.cn>, <lorealshop.com>, <lorealshampoo.com> and a lot of other names related to the Complainant.
In the light of that fact, the Respondent asks how it is that those names are for sale, but <lorealtube.com>, because the Respondent had offered it directly to the Complainant, was now the subject of the present proceedings.
He had hoped that the Complainant would have shown gratitude and cooperation rather than threaten him.
The Respondent again relied on his analogies with <dreyfus.com>.
Finally, the Respondent submitted that his prime and basic idea was not to deal with cosmetics or any other of the products of the Complainant, but to create a website with a short name coming from the expression “loading real tube.”
The Respondent's email of August 25, 2009
By email received by the Center on August 25, 2009, the Respondent reiterated the submissions he had made in his email to the Center received on August 24, 2009, and it is not necessary to repeat them here.
It is clear from the communications between the Center and the Respondent that, in submitting the above emails, he was intending that they should stand as his Response to the Complaint and the Panel will so regard them.
On August 14, and August 27, 2009, the Center received supplemental filings from the Complainant.
The terms of Paragraphs 10 and 12 of the Rules in effect give discretion to the Panel whether to accept or reject supplemental filings such as those submitted by the Complainant. That discretion must be exercised judicially and in accordance with established principles, one of which is that the discretion may be exercised in favour of allowing the supplemental filings if they are in reply to material submitted by the Respondent that is new and could not have been contemplated at the time the Complaint was drawn. That is the situation in the present case, for, although the Complainant and the Respondent had been in communication before the Complaint was filed, the Response set out in the Respondent's emails contained new arguments that had not been previously advanced. The Panel is obliged to consider the submissions of the Respondent and it is therefore appropriate that it also consider the Complainant's reply to those submissions.
In any event, it is desirable that the Panel should give its decision in this matter on the basis of all submissions that the parties wish to make and allowing the supplemental filings will enable that end to be achieved. The Panel will therefore admit and consider the Complainant's supplemental filings.
Supplemental Filing of August 14, 2009.
The Complainant submitted in its supplemental filing received on August 14, 2009 that the Respondent's contention was that the domain name <lorealtube.com> meant and was intended to mean “loading real tube” and that the expression in turn evoked the notion of loading Internet material in a video format, rather than the name of the Complainant and its products.
The Complainant submitted that this contention of the Respondent should be rejected by the Panel. In support of that submission the Complainant drew on the construction of the several expressions involved and the probabilities of how they would be interpreted by the Internet user. The Complainant concluded that its interpretation, that the domain name evoked the name of the Complainant and its products was the correct interpretation.
The Complainant also submitted that it was inconsistent with the contention of the Respondent that he should also have suggested, as he had, that he could sell the domain name for a pornography site, that he had already received an offer of 35,000 Euros for it and that the Complainant should buy it. Moreover, the Respondent's references to the domain names <pradatube.com> and guccitube.com> which resolved to pornography sites showed that the allegation that he had received an offer of 35,000 Euros for the domain name was in reality a threat to induce the Complainant to buy the domain name.
The Complainant then rejected the Respondent's contention that it had agreed to buy the domain name for anything more than the Respondent's registration costs and further submitted that it had offered only 50 Euros to compensate the Respondent for those costs.
The Complainant also submitted that the Respondent's contentions were internally inconsistent, for whereas he had claimed that he had offered the domain name for sale, he had also claimed that he intended to use it himself, that his website was finished and that it would soon be finished.
The Complainant also rejected the contentions of the Respondent by way of analogies he sought to draw with other domain names. In the Complainant's submission, the Complaint should be decided by comparing the domain name <lorealtube.com> with the L'OREAL trademarks and by having regard to the facts and circumstances of the particular case. For those reasons the Complaint should be decided in favour of the Complainant and the domain name transferred to it.
Supplemental Filing of August 27, 2009.
In its supplemental filing received on August 27, 2009, the Complainant took issue, first, with the Respondent's submission that it, the Complainant, did not try to settle the dispute amicably before filing the Complaint. The Complainant contended that in fact it had had communications with the Respondent before filing the Complaint in an attempt to resolve the matter amicably and had offered to compensate him for his registration costs up of up to 50 Euros if he would transfer the domain name to the Complainant.
The Complainant then took issue with the Respondent's assertion that the fact the domain name was linked to commercial websites advertising cosmetics was not the Respondent's fault but that it had happened automatically and that he had stopped it when it had been drawn to his attention. In reply to that argument the Complainant submitted that the provisions of those links were optional and not automatic and that those links and the fact that the domain name itself was offered for sale showed an element of commercial intent on the part of the Respondent.
Finally, the Complainant responded to the claim by the Respondent that he had not accepted the offer of 35,000 Euros for the domain name because he was still in the process of finishing his website. In response, the Complainant submitted that in fact the Respondent had asked for a new offer in view of the offer he had received of 35,000 Euros which, by necessary implication, was a request for an offer from the Complainant of more than that sum.
These matters were then said by the Complainant to support its contentions that the domain name is confusingly similar to its trademarks, that the Respondent has no right or legitimate interest in the domain name and that the Respondent has registered and used the domain name in bad faith.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that a respondent has not made a formal submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
The Panel accepts the evidence submitted by the Complainant that it owns the registered L'OREAL trademarks to which reference has been made, that they are all current and that it therefore has rights in those marks.
The Panel also finds that the disputed domain name is confusingly similar to the L'OREAL trademarks. The spelling of the substantial part of the domain name is the same as that of the mark; all that has been done to create the domain name is to add to the L'OREAL mark the word “tube” which is one means by which cosmetics and beauty products are packaged and generally understood by the community to be packaged, thus suggesting to the objective bystander that the domain name relates to the Complainant's products when they are sold in tubes. As the Complainant has submitted, the word “tube” is a common English word and numerous UDRP decisions have held that adding generic words such as that is insufficient to give any distinctiveness to the domain name in dispute; see Alstom v. FM Laughna, WIPO Case No. D2007-1736 and Groupe Auchan v. Jakub Kama, WIPO Case No. D2007-0565. Accordingly, the objective bystander, faced with the domain name and the L'OREAL trademark, would assume that the domain name was referring to the well known manufacturer of cosmetics and beauty products that are sold under the trademark.
In opposition to this interpretation, the Respondent has argued that when he devised the domain name he intended that it would embody the notion of “loading real tube”, meaning the loading of Internet advertising material in a video format, rather than the name of the Complainant and its products.
The short answer to this contention is that it is now well established that in deciding if a domain name is confusingly similar to a trademark, the only criteria that should be considered are the domain name and the trademark and that regard should not be given to the intention of the registrant or other factors such as the use to which the registrant has put the domain name in a website. In other words, the Policy calls for a strict comparison between the domain name and the trademark. Other facts such as the intention of the registrant may of course become relevant when the other elements of the Policy are considered, but not at the stage of considering the first element of identity or confusing similarity.
In any event, the Panel's view is that the interpretation contended for by the Respondent is not open. That is so for two reasons among others. First, it is a well accepted principle of the interpretation of documents and instruments that if there is a meaning that can be given to an expression that is clear and straightforward and does no violence to the language, that meaning should be given in preference to one that requires a contorted and artificial use of language. In the present case, partly because the trademark L'OREAL is so well known, the word “tube” is such a common word in everyday use and the two words fit together to comprise the easily understood concept of L'Oreal products packaged in tubes, that interpretation is to be preferred to the unlikely interpretation contended for by the Respondent.
Secondly, although opinions may differ, the opinion of the Panel is that it is implausible that anyone would interpret the words “lorealtube” to mean “loading real tube”, “lo” to mean “load”, or “tube” to mean anything other than a soft container, which is the universally accepted meaning of the word.
The Panel is therefore unable to accept the interpretation contended for by the Respondent.
It should also be said that, as the Complainant points out, a panel recently held that “the omission of the apostrophe after the letter “l” in the L'OREAL marks is insignificant and does not alter the overall impression that the Complainant's distinctive mark has been incorporated in the disputed domain name.” See L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721.
It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
For these reasons, the Panel finds that the domain name is confusingly similar to the trademarks and that the Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts amply demonstrated in the Complainant's case that:
(i) the L'OREAL trademark is very well known internationally and is registered in Macedonia, where the Respondent is domiciled, as well as in other international jurisdictions;
(ii) it indicates the name of a well know manufacturer of cosmetics and beauty products whose products are available internationally and in Macedonia;
(iii) the Respondent chose this prominent name for its domain name and added the word “tube” which is one means by which cosmetics and beauty products are packaged, thus suggesting that the domain name relates to the Complainant's products sold in tubes;
(vi) the Respondent has prima facie been using the domain name for an illegitimate purpose, namely to try to intimidate the Complainant into buying the domain name at an exorbitant price and in the meantime using it to facilitate links to the Complainant's own websites without its permission and to promote the products of the Complainant's competitors.
The Respondent in the present case was given notice that he had until August 26, 2009 to send in its Response and he thereupon made three submissions setting out his case for a right or legitimate interest in the domain name.
The question therefore is whether the Respondent has rebutted the prima facie case against him.
The Respondent has relied essentially on three grounds to establish his right or legitimate interest.
First, in his submission of August 6, 2009, he says that the meaning of the domain name gives it a legitimacy in itself, as it was designed to embody a legitimate notion, namely the loading of advertisements into a real tube or a video format. The Respondent says that as “loading real tube” was too long, he abbreviated it to “lorealtube” and that any similarity or “overlap” with the Complainant is coincidental.
The Panel does not accept that interpretation, as the words do not mean or express the process that the Respondent claims he was trying to encapsulate in the domain name. Furthermore, if the Respondent's interpretation were correct, he presumably would have used the expression “loadrealtube” rather than “lorealtube. Finally, the Respondent is not giving to the word “tube” the generally accepted and understood meaning of that word.
Secondly, in his submissions of August 24 and 25, 2009, the Respondent says that he had offered the domain name to the Complainant which should have shown gratitude instead of filing the Complaint. The Panel is unable to accept that position as showing a right or legitimate interest in the domain name. In any event, as will be seen, the Panel has reached the conclusion on the balance of probabilities that the Respondent offered the domain name for sale to the Complainant, but at an exorbitant price and in terrorem, for the offer was accompanied by a thinly veiled threat that if the Complainant did not comply with this demand the domain name might be used for a pornography site. Those conclusions reached by the Panel after considering the evidence and the balance of probabilities have led it to the conclusion not only that the facts do not rebut the prima facie case , but that they show positively that the Respondent has no right or legitimate interest in the domain name.
Thirdly, in the same submissions, the Respondent contended that his intention was to “…create a website with short name coming from loading real tube.” The Panel takes this as a submission that the Respondent derives a right or legitimate interest in the domain name by using it for a purpose unconnected with the Complainant's products.
The Panel does not accept that this assertion, even if correct, gives rise to a right or legitimate interest in the domain name. That is so for the following reasons.
First, it is true that the Respondent has put up on the Internet the beginnings of a website carrying the words “lo real tube.” But the Panel has already given its concluded view that such an expression would not be taken generally to mean the loading of advertisements onto the Internet, especially when it would have been much easier to say so with the normal and usual use of those words. As they have not been used, but the expression “lo real tube” has been used, it leads the Panel to the conclusion that the web site has been concocted to divert attention from the fact that the domain name is an illegitimate use of the Complainant's trademark with the addition of one means of packaging the Complainant's products.
Secondly and more importantly, the Panel does not accept that the website is a genuine expression of how the Respondent intended to use the domain name from the time of its registration. That is so because, when the Respondent put his domain name to its first use after registration he allowed it to be used on a parking page which actually promoted a website of the Complainant, some products of the Complainant and other products in the same line as the Complainant's products. This is amply demonstrated by Annex 22 attached to the Complaint, which shows links to those sites and which therefore shows that when the Respondent started this process and when he made his first overture to the Complainant to buy the domain name, he had already launched it to the world as a vehicle for links to the Complainant and its products. In the opinion of the Panel, on the basis of all of the evidence and submissions, that was always the intention of the Respondent.
The Respondent says in reply to this that it was not his doing, that the links were made by his registrar and that he brought them to an end when he was notified of them. That argument is sometimes advanced by registrants in a similar position and of course there are differing views on the issue. But in the present case, the conclusion must be that, at least, the Respondent allowed the domain name to be associated with providers and products in keeping with the only generally understood meaning given to his domain name, namely that evoking the Complainant and its beauty and cosmetic products. It is for that reason that virtually all of the links on the parking page are to beauty products and cosmetics and to tubes used in the normal and usual sense of that word (although there is one link to London Tube Transport).
All of these facts go to show that the domain name has been used illegitimately to trade off the name and reputation of the Complainant and thus do not give rise to a right or legitimate interest in the domain name on the part of the Respondent.
The Panel finds that the Respondent has not rebutted the prima facie case against it and that the Complainant has therefore made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(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; or
(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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(i) and (iv) and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(i) and (iv) of the Policy. That is so for the following reasons.
First, the evidence shows that the Respondent has registered as a domain name the Complainant's well known L'OREAL trademark. Not only is the trademark well known but, as the Complainant submits, several UDRP panels have recognised the notoriety of the Complainants' trademarks: Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oreal SA, L'Oreal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748, L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie v. Spiral Matrix; WIPO Case No. D2006-0869 and L'Oréal v. Liao Quanyong, WIPO Case No. D2007-1552.
To this trademark the Respondent has added only the word “tube” which is one method by which cosmetics and beauty products are packaged, thus suggesting that the domain name relates to the Complainant's products sold in tubes. This raises the assumption that the domain name was registered for the illegitimate purpose of trading off the name and reputation of the Complainant for commercial purposes and thus in bad faith, for the Respondent clearly had the Complainant in mind when he registered the domain name without permission. The case advanced by the Respondent to show that this was not so is singularly unpersuasive and for reasons already advanced, the Panel does not accept it. The Panel finds on the totality of the evidence that the Respondent registered the domain name in bad faith.
Secondly, the evidence adduced by the Complainant shows that, having registered the domain name, the Respondent tried to sell it to the Complainant on the following day. He subsequently furthered that intention by trying to sell the domain name to the Complainant for an exorbitant price and tried to intimidate the Complainant into buying it by making thinly veiled threats that the domain name might end up being used for a pornography site if the Complainant did not buy it. The Panel finds that the totality of the evidence shows that the Respondent registered the domain name with the intention of selling it to the Complainant within the meaning of paragraph 4(b)(i) of the Policy.
Thirdly, the evidence is also to the effect that the Respondent used the domain name as a link to a parking page from which the Respondent derived click-through revenue and more recently as a link to a free Starter Web Page courtesy of the hostmaster which was established a few days after the Respondent received a cease-and-desist letter from the Complainant. Besides, the evidence is that Respondent's parking page promoted products in the same field as Complainant, which demonstrates Respondent's intention to use the domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's trademarks. The Panel finds that the totality of the evidence shows that the Respondent has used the domain name to attract, for commercial gain, Internet users to his parking page by creating confusion with the Complainant's trademark as to the affiliation of the products on the site within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, for those reasons the Panel concludes that the case presented by the Complainant shows that it falls squarely within each of paragraphs 4(b)(i) and (iv) of the Policy and that the Complainant has thus made out the third of the three elements that it must establish under the Policy.
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 name <lorealtube.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: September 16, 2009