WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Guowei Hai Gui
Case No. D2011-0775
1. The Parties
Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Guowei Hai Gui of Shanghai, the People’s republic of China.
2. The Domain Name and Registrar
The disputed domain name <gemeymaybelline.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 4, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for Registrar verification in connection with the disputed domain name. On May 5, 2011, the Registrar 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”).
The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 30, 2011.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on June 3, 2011. 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.
This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from Complainant or Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
L’Oréal is the world’s largest cosmetics and beauty company. Created in 1909 by a French chemist, L’Oréal recently celebrated its centenary. L’Oréal has become the world leading group in the field of cosmetics. It employs nearly 65,000 persons and is present in 130 countries. In 2009, the group generated Euro 17.5 billion of consolidated sales. L’Oréal owns 23 international brands such as L’ORÉAL PARIS, GARNIER, LANCÔME, MAYBELLINE, VICHY and KERASTASE.
In 2000, the United States of America “US” cosmetics company Maybelline was acquired by L’ORÉAL’s US subsidiary. This brand has a long history since it was created in 1917. Indeed, in 1917, MAYBELLINE introduced the first modern mascara to the US market and making mascara a part of women’s daily lives. This brand is available in 129 countries worldwide and sponsors various events. In 2001, Maybelline became the number one cosmetics brand in the US and in 2004 it also became the number one cosmetics brand in the world.
Founded as early as 1923, the brand GEMEY has a long tradition of innovation. It created in 1956 the first compact powder, “Dernière Touche” and in 1987 the first vitamin mascara, “Cil Extrême”. In 1998, an alliance between GEMEY and MAYBELLINE took place to offer their customers their best products with their best technology. GEMEY and MAYBELLINE have been associated in France in advertising campaigns since 2000 and are still used together at least in France. Complainant communicates on its products to its clients via a number of websites including “www.gemey-maybelline.com” which was put into place in 2001.
Complainant conducts its operations on a worldwide basis, including China which is a particularly strategic market, where its sales amounted to 8.18 billion yuan in 2009. Complainant has had a local presence in China since 1996. Furthermore, it created the subsidiary L'Oréal China which began its operations in 1997. Quickly, Complainant’s products gained popularity in China. Complainant opened a Research Centre and developed new products specially dedicated to Chinese hair and skin types. To keep pace with its growth, Complainant already employs 2,500 people in China. Furthermore, in 2009 the company recruited a record number of young management trainees across all disciplines and offered numerous internships.
In China, Complainant’s sales have doubled in four years. Indeed, the various divisions of Complainant have met with major success in China. In particular, lines intended for male customers have experienced very significant growth, Complainant being the leader in this market. Complainant sponsors various events in China. It has inter alia sponsored the Shanghai World Expo.
The brand MAYBELLINE NEW YORK is also a very fast expanding brand in China where it has become number one make up brand. The brand has also recently chosen a Chinese ambassador in the person of the famous Chinese model Shu Pei Qin.
L’Oréal has recently become aware of the registration and the use of the domain name <gemeymaybelline.com> by Respondent. The domain name was not resolving towards any active website which is still the case.
Complainant sent a cease-and-desist letter to Respondent’s privacy services on March 14, 2011, indicating that the disputed domain name was infringing its rights and asking for transfer of the disputed domain name and Respondent’s name and contact details.
Respondent’s privacy services replied to Complainant indicating they had forwarded our complaint to their client and gave him five days to resolve the matter with client. However, Respondent never reverted to Complainant. Respondent’s privacy shield thus removed its privacy on Whois database. Up to today, Respondent has never contacted or replied to Complainant.
5. Parties’ Contentions
Complainant is the owner of various GEMEY and MAYBELLINE trademarks, such as: French trademark registration No. 96 636 236 of 26 July 1996, renewed covering goods in class 3; International trademark MAYBELLINE No. 959892 registered on January 9, 2008, covering classes 3 and 5; Chinese trademark MAYBELLINE No. 212780 registered on September 15, 1984 1983, duly renewed and covering class 3; Chinese trademark MAYBELLINE No. 1616379 registered on August 14, 2001, duly renewed and covering class 3; Chinese trademark L’OREAL No. 148647 registered on July 31, 1981, duly renewed and covering class 3.
Additionally, L’Oréal is also the owner of several domain names incorporating its GEMEY and MAYBELLINE trademarks such as: <gemey-maybelline.com> registered on July 7, 2000; <gemey.com> registered on October 16, 1996; and <maybellinechina.com> registered on February 22, 2001.
The domain name <gemeymaybelline.com> is identical to Complainant’s trademarks GEMEY and MAYBELLINE. Indeed, said domain name reproduces two of Complainant’s trademarks in their entirety.
In many UDRP decisions, the Panel considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2010-2085).
Here, the disputed domain name reproduces two trademarks of Complainant, which reinforces the likelihood of confusion. As held by the panel in the decision American Honda Motor Co., Inc. v. Daniel Talas, WIPO Case No. D2009-0527, the fact that said domain name combines two of complainant’s marks serves to emphasize the litigious domain name’s connection with complainant.
Further, here the two marks included in the disputed domain name have been combined by Respondant which reinforces even more the likelihood of confusion. Indeed, the disputed domain name is almost identical to the address of Complainant official website “www.gemey-maybelline.com”, the only difference being the mere omission of the [ - ].
The extension “.com” is not to be taken into consideration when examining the identity or confusing similarity between Complainant’s trademark and the disputed domain name. It has been held in numerous decisions that the addition of the gTLD suffix does not prevent likelihood of confusion merely because it is necessary for the registration of the domain name itself. (L'oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd, WIPO Case No. D2010-1318.)
For all the above-cited reasons, it is established that Complainant has trademark rights in the names that are reproduced in their entirety by Respondent and that this domain name is identical to Complainant’s GEMEY and MAYBELLINE trademarks.
Respondent is not affiliated with Complainant in any way, nor has he been authorized by Complainant to register and use its GEMEY and MAYBELLINE trademarks or to seek registration of any domain name incorporating said marks.
GEMEY and MAYBELLINE are cosmetic brands that have a long-term history. Created respectively in 1923 and 1917, they have achieved a worldwide recognition in particular for MAYBELLINE which has become number one cosmetic brand in the world. Previous UDRP Panels have underlined the well-known character of the trademark MAYBELLINE like inter alia in L'Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231.
In the absence of any license or permission from Complainant to use its widely-known trademark, no bona fide or legitimate use of the domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.)
The disputed domain name is so identical or at least confusingly similar with Complainant’s trademarks, Respondent could not reasonably pretend he was attempting to engage in a legitimate activity.
Respondent did not demonstrate, before receiving any notice of the dispute, use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the domain name did not resolve to any active website when noticed by Complainant.
With regards to bad faith registration, it is obvious that Respondent knew or must have known Complainant’s trademarks GEMEY and MAYBELLINE at the time Respondent acquired the disputed domain name.
Indeed, registration within the scope of the policy covers direct registration and registration after transfer. Here, it appears that the disputed domain name was thus “registered” within the meaning of the Policy when it was acquired by Respondent namely on May 23, 2008 (see, Gewista-Werbegesellschaft mbH v. Unasi Inc. WIPO Case No. D2005-1051).
In any event, including at the time of the actual registration of the disputed domain name, Complainant’s trademarks were well-known throughout the world, especially in China since many years. It thus appears impossible Respondent could have ignored Complainant’s trademarks.
In light of the reputation of Complainant’s trademarks and the composition of the disputed domain, namely the combination of two trademarks of Complainants reproduced in their entirety, it appears clear Respondent was aware of the existence of Complainant’s trademarks when he became the owner of the disputed domain name. As held by previous panels, knowledge of a corresponding mark at the time of the registration of the domain name suggests bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling; WIPO Case No. D2008-0226; Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464.)
In addition, the fact that a trademark search at the time of the registration of the domain name would have revealed Complainant’s registrations is another proof of Respondent’s in bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226.)
Assuming that Respondent did not know how to perform a trademark search online, a simple search on the Internet through any search engine, such as Google, would have revealed Complainant’s presence and trademarks. A search via Google using the keywords “gemey” and “maybelline” shows that all first results relate to Complainant’s products or news (Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2010-2085).
Moreover, Complainant owns the almost identical domain name: <gemey-maybelline.com>.
Lastly, Respondent is engaged in a pattern of conduct of registering domain names including third party’s famous trademarks which suggests opportunistic bad faith at the time he registered the disputed domain name (UDRP decisions involving Guowei Hai Gui and/or Domain Management as Respondent:
Allstate Insurance Company v. Moniker Privacy Services/Guowei Hai Gui, WIPO Case No. D2011-0176; , Barclays Bank PLC v. Guowei Hai Gui; WIPO Case No. D2010-1991; US Community Credit Union v. Moniker Privacy Services, Inc., Registrant  /Guowei Hai Gui; WIPO Case No. D2010-1136; National Arbitration Forum decisions involving Guowei Hai Gui as Respondent: NAF Claim No. FA01371355, Allstate Insurance Company v. Guowei Hai Gui (03/22/2011); NAF Claim No FA01371811, Target Brands, Inc. v. Guowei Hai Gui (03/22/2011); NAF Claim No Fa01356569, Five Star JV LLC v. Guowei Hai Gui (12/20/2010).
Previous Panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of Respondent’s behavior (, Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case n° D2000-0003; and, Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572).
In Telstra Corporation Limited v. Nuclear Marshmallows, the panel concluded that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent because: (1) complainant’s trademark had a strong reputation and was widely known; (2) respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
Here, it should be noted that: Complainant’s trademarks GEMEY and MAYBELLINE have a strong reputation and are widely known. In particular, the notoriety of the mark MAYBELLINE has been underlined by previous panels (L'Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231, L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869)
Given the reputation of Complainant’s trademarks MAYBELLINE and GEMEY and in accordance with previous cases of UDRP panels, the use of a domain name which reproduces a well-known trademark cannot be regarded as legitimate (Alstom v. Stockmarket Domains, WIPO Case No. D2008-1542.)
Consequently, the disputed domain name should be regarded as used in bad faith in the light of the notoriety of Complainant’s trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel considers that Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers’ – ICANN – accredited domain name registrar), agreed to be bound by all terms and conditions of the Registrar’s registration agreement, and any applicable rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s registration agreement by reference), the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned registration agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in accordance with a decision rendered under the Policy, Respondent’s domain name may be cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against it; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that Respondent’s domain name <gemeymaybelline.com> is confusingly similar to Complainant’s well-known GEMEY and MAYBELLINE trademarks. Complainant’s trademark was registered significantly earlier than the date of registration of Respondent’s domain name <gemeymaybelline.com>. As an aside, Complainant owns the almost identical domain name: <gemey-maybelline.com>.
Furthermore, neither the omission of the character [ - ] nor the addition of the gTLD “.com” are distinctive elements. In the case of the gTLD “.com” the same is just a necessary element required for the registration of a top level domain name.
B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that Respondent has any rights or legitimate interests in connection with Complainant’s GEMEY and MAYBELLINE trademarks nor with the domain name under dispute; That Respondent has not used nor prepared to use the <gemeymaybelline.com> domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that Respondent is 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 as contemplated under paragraph 4(c)(iii) of the Policy.
As such the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name under paragraph 4(a)(ii) of the Rules.
C. Registered and Used in Bad Faith
The Panel finds, from the record, and from the lack of evidence to the contrary, that the registration of the domain name < gemeymaybelline.com> by Respondent was in bad faith, in particular but without limitation, as it has been evidenced by Complainant that Respondent is engaged in a pattern of conduct of registering domain names including third parties’ well-known trademarks, as it is in this case of Complainant’s well-known GEMEY and MAYBELLINE trademarks, which suggests opportunistic bad faith at the time that Respondent registered the disputed domain name, pursuant to paragraph 4(b)(ii) of the Policy, in view of the fact that Respondent 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 it has engaged in a pattern of such conduct, and therefore has made a bad faith use of the domain name.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the domain name <gemeymaybelline.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: June 17, 2011