World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal, Laboratoire Garnier et Compagnie, Lancôme Parfums et Beauté et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domains Services

Case No. D2011-1608

1. The Parties

The Complainants are L'Oréal, Laboratoire Garnier Et Compagnie, and Lancôme Parfums et Beauté et Compagnie of Paris, France (together, the “Complainant”), represented by Dreyfus & associés, France.

The Respondents are Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., and Hao Domains Services of China. The Respondent DomainJet, Inc. is of California, United States of America.

2. The Domain Names and Registrars

The disputed domain name <lancomeparfums.com> is registered with eNom.

The disputed domain names <loreal-china.com> and <maybelline-newyork.com> are registered with Direct Internet Solutions Pvt Ltd dba Publicdomainregistry.com.

The disputed domain names <garnier-usa.com>, <lorealparis.tv>, <lorealprofessionnel.info>, and <lorealprofessionnelus.com> are registered with Dynadot, LLC.

The disputed domain name <kerastaseus.com> is registered with Guangzhou Ming Yang Information Technology Co., Ltd.

The disputed domain names <lorealjapan.com>, <lorealkorea.com>, <lorealtaiwan.com>, <loreal-parisusa.com>, <lorealparis-usa.com>, <lorealparisus.com>, <lorealprofessionnels.com>, <lorealprofessionnelusa.com> and <shuuemura-us.com> are registered with Hangzhou E-Business Services Co., Ltd. (together the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 22, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 22, 2011 and September 23, 2011, the Registrars eNom, and Guangzhou Ming Yang Information Technology Co., Ltd. transmitted by email to the Center their verification responses confirming that each of the Respondents are listed as the registrant and providing the Respondent’s contact details. On September 23, 2011, the Registrars Dynadot, LLC. and Hangzhou E-Business Services Co., Ltd. transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names <shuuemura-us.com>, <lorealprofessionnelus.com>, <garnier-usa.com> and <lorealprofessionnel.info> which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Registrars indicating a possible violation of paragraph 8 of the Policy, seeking their clarification regarding the registrants’ names, and requesting the Registrars to confirm these disputed domain names will remain LOCKED throughout the proceedings. On September 29, 2011, Dynadot, LLC. and Hangzhou E-Business Services Co., Ltd. confirmed the registrant information in respect of these disputed domain names has been restored to the named Respondents and contact information in the Complaint.

On September 30, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 3, 2011, the Complainant confirmed its request that English be the language of the proceeding. On October 3, 2011, the Respondent Hao Domains Services sent an email communication to the Center in Chinese requesting that Chinese be the language of the proceeding. None of the other Respondents made any submissions regarding the language of the proceeding by the specified due date. On October 4, 2011, the Respondent DomainJet, Inc. / Jack Sun sent email communications to the Center in Chinese disclaiming its ownership of the relevant disputed domain names.

The Center has verified that the Complaint satisfies 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 proceeding commenced on October 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2011. None of the Respondents submitted a Response. Accordingly, the Center notified the parties of the Respondent’s default on October 31, 2011.

On October 31, 2011, the Center received a Supplemental Filing from the Complainant.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 11, 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.

4. Factual Background

A. Complainant

The Complainants, L’Oréal, Laboratoire Garnier et Compagnie and Lancôme Parfums et Beauté & Cie, are companies incorporated in France and belonging to the same group of companies. Lancôme Parfums et Beauté & Cie and Laboratoire Garnier et Compagnie are subsidiaries of L’Oréal.

The Complainant L’Oréal is the owner of numerous registrations worldwide for the trade marks L’OREAL, L’OREAL PROFESSIONNEL, L’OREAL PROFESSIONNEL PARIS, KERASTASE, MAYBELLINE, MAYBELLINE NEW YORK and SHU UEMURA, the Complainant Laboratoire Garnier et Compagnie is the owner of numerous registrations worldwide for the trade mark GARNIER, and the Complainant Lancôme Parfums et Beauté & Cie is the owner of numerous registrations worldwide for the trade mark LANCOME, including in China and the United States of America, where the Respondents are based (together, the “Trade Marks”).

B. Respondent

The table in Schedule A of this decision lists relevant Registrant and Registrar information for each of the disputed domain names in the WhoIs records at the time of filing of the Complaint, and the current status of each of the disputed domain names.

The disputed domain names were registered on the following dates:

<loreal-parisusa.com>, March 15, 2011

<lorealparisus.com>, March 14, 2011

<lorealparis-usa.com>, March 4, 2011

<shuuemura-us.com>, March 31, 2011

<lorealjapan.com>, June 24, 2010

<lorealkorea.com>, June 24, 2010

<lorealtaiwan.com>, June 24, 2010

<lorealparis.tv>, July 3, 2010

<lorealprofessionnel.info>, June 25, 2010

<garnier-usa.com>, March 15, 2011

<maybelline-newyork.com>, March 20, 2010

<kerastaseus.com>, March 24, 2011

<lorealprofessionnels.com>, April 12, 2011

<lancomeparfums.com>, May 21, 2010

<loreal-china.com>, March 20, 2010

<lorealprofessionnelusa.com>, June 29, 2011

<lorealprofessionnelus.com>, June 29, 2011

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant L’Oréal is the world’s largest cosmetics group, founded in France in 1909. It operates in over 130 countries and has over 64,000 employees worldwide, and is the owner of 23 international brands, including the Trade Marks, which are well known marks in China, the USA and worldwide.

The Complainant has been operating in China since 1996. It employs over 2,500 staff in China and its 2009 sales in China amounted to RMB 8.18 billion.

The disputed domain names are confusingly similar to the Trade Marks. They comprise one or the other of the Trade Marks in its entirety, together with non-distinctive suffixes or words.

The Respondents have no rights or legitimate interests in respect of the disputed domain names. The disputed domain names have either been linked to parking websites with sponsored links to, inter alia, third party cosmetics and hair care websites (the “Websites”), which does not amount to a bona fide use under the Policy, or are being offered for sale for amounts exceeding their registration costs. In replying to the Complainant’s initial demands, the Respondents did not assert any rights or legitimate interests in respect of the disputed domain names. Further, given the number of disputed domain names and their similarity to the Trade Marks, the Respondents cannot reasonably claim rights or legitimate interests in respect of the disputed domain names.

The Respondents have registered and used the disputed domain names in bad faith as:

1. They comprise the Complainant’s well known Trade Marks and the Respondents should or ought to have known of the Complainant’s trade mark rights when registering the disputed domain names;

2. Most of them have been redirected to parking pages offering commercial sponsored links, thereby taking advantage of the Complainant’s reputation and goodwill in order to generate profits;

3. Some of the disputed domain names have been offered for sale at prices far exceeding their registration costs;

4. The Respondents have amended the WhoIs registration details for some of the disputed domain names following filing of the Complaint in an effort to conceal their identity;

5. The Respondents have engaged in a past pattern of registering domain names containing well known trade marks of third parties including REVLON and MORGAN STANLEY.

B. Respondents

On October 3, 2011, the Respondent Hao Domains Services sent an email communication to the Center in Chinese requesting that Chinese be the language of the proceeding. On October 4, 2011, the Respondent DomainJet, Inc. / Jack Sun sent email communications to the Center in Chinese disclaiming its ownership of the relevant the disputed domain names. However, none of the Respondents filed any formal Response to the Complaint.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreements for the disputed domain names <shuuemura-us.com>, <kerastaseus.com>, <lorealparis-usa.com>, <lorealprofessionnelusa.com>, <lorealprofessionnels.com>, <loreal-parisusa.com>, <lorealparisus.com>, <lorealjapan.com>, <lorealkorea.com> and <lorealtaiwan.com> is Chinese.

The language of the registration agreements for the disputed domain names <lorealparis.tv>, <lorealprofessionnel.info>, <garnier-usa.com>, <maybelline-newyork.com>, <lancomeparfums.com>, <loreal-china.com> and <lorealprofessionnelus.com> is English.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainants and the Respondents to the effect that the language of the proceeding should be English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) The Respondents are proficient in English. In contacting the Complainant the Respondents have never denied knowledge of English. Before the filing of the Complaint, the Respondent Hao Domains Services contacted the Complainant in English without denying knowledge of English (by emails dated November 30, 2010 and December 15, 2010 from the Respondent’s email address […]@gmail.com);

(2) Many of the disputed domain names include geographical indications in English and resolve to parking pages with commercial links in English;

(3) The language of the registration agreements for some of the disputed domain names is English;

(4) Conducting the proceeding in a language other than English could delay the proceeding, would incur significant translation costs on the part of the Complainant and would be unfair to the Complainant;

(5) The Respondents have registered some of the disputed domain names through a U.S. registrar with a registration agreement in English which implies knowledge of English;

(6) Since English is used by both the Respondents and the Complainant, it is thus the most efficient language in this administrative proceeding.

The Respondent Hao Domains Services (the registrant of the disputed domain names <lorealprofessionnel.info>, <garnier-usa.com> and <maybelline-newyork.com>) has requested that Chinese be the language of the proceeding in respect of these three disputed domain names only, for the following reasons:

(1) The Rules prescribes that the language of the proceeding should be the language of the registration agreement; and

(2) The fact the disputed domain names may have been advertised in English language doesn’t mean the Respondent agrees to the conduct of the proceeding in English, since those advertisement on the parking pages are posted by the Registrar.

Hangzhou E-Business Services Co., Ltd., and Guangzhou Ming Yang Information Technology Co., Ltd. have transmitted to the Center their verification responses confirming that the language of the registration agreements for the disputed domain names <shuuemura-us.com>, <kerastaseus.com>, <lorealparis-usa.com>, <lorealprofessionnelusa.com>, <lorealprofessionnels.com>, <loreal-parisusa.com>, <lorealparisus.com>, <lorealjapan.com>, <lorealkorea.com> and <lorealtaiwan.com> is Chinese.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel notes, given all of the relevant disputed domain names other than <lorealprofessionnels.com> are resolved to English language parking pages with sponsored links, whether or not these may have been posted by the Registrar, it appears the Respondents are likely familiar with the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondents are conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). Had the Respondents filed cogent submissions to the contrary, the Panel might have been willing to order that the proceeding be conducted in Chinese, or alternatively in both Chinese and English. The Panel is however mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In making its determination regarding the language of the proceeding, the Panel has also taken into consideration its findings below in respect of consolidation of multiple respondents, the fact the registration agreements for 7 of the 17 disputed domain names are English, and the fact none of the Respondents has chosen to file a formal Response.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English.

6.2 Consolidation of Respondents

UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

In the present case, as particularised in Schedule A of this decision, the registrants in the WhoIs record at the time of filing of the Complaint in respect of the disputed domain names <lorealparis-usa.com>, <shuuemura-us.com>, <lancomeparfums.com>, <kerastaseus.com>, <lorealprofessionnels.com> and <lorealprofessionnelusa.com> is apparently the same person, Zhao Ke. Zhao Ke is also the named personal registrant for the disputed domain names <lorealprofessionnel.info> and <garnier-usa.com> (the registrant organisation for both disputed domain names being Hao Domains Services).

Furthermore, Zhao Ke was previously listed as the registrant for the domain names <loreal-parisusa.com>, <lorealparisus.com>, <lorealjapan.com>, <lorealkorea.com>, <lorealtaiwan.com>.

Ke Zhao is listed as the personal registrant for <loreal-china.com>, the registrant organisation being ChinaDNS Inc. The order of Chinese language names is typically the opposite to English language names. In Chinese, the surname typically comes first. It is therefore not uncommon for Chinese language names, when depicted in romanised script, to be shown in both forms. In the present case it appears that Ke Zhao is likely the same person as Zhao Ke given the contact information in respect of <loreal-china.com> is largely the same as for each of the registrations in respect of which Zhao Ke is the named personal registrant. In particular, the registrant organization for <loreal-china.com>, ChinaDNS Inc, is the same as for <lancomeparfums.com>, and both are registered using the same registrar, eNom, Inc,

The listed contact information in respect of each of these 14 disputed domain names, aside from minor variations in spelling and minor numerological differences in respect of telephone/fax numbers, street names and post codes, is (or was previously) largely the same. Of these 14 disputed domain names, all bar <lorealprofessionals.com>, which is dormant, are resolved to parking sites with sponsored links. The website for <garnier-usa.com> additionally offers the disputed domain name for sale. Each of the other 12 websites has the same wording, “What you need, when you need it” depicted in the same manner and using the same font at the top of the website, directly under the disputed domain name in question, which is depicted in a larger, bold font.

These disputed domain names have been registered using four different Registrars. However, in this Panel’s view, this fact of its own, in all the circumstances of this case, is not sufficient to prevent a determination that the Respondents in respect of these 14 disputed domain names be consolidated.

In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents in respect of each of the above listed 14 disputed domain names is procedurally efficient and equitable to all the parties. Each of the disputed domain names comprises one of the well known Trade Marks of the Complainant in its entirety and, with the exception of the one dormant registration, is being used in the same manner in respect of websites displaying sponsored commercial links. 12 of the 14 websites have been set up in the same manner using similar layout and font and the same slogan featured directly below the disputed domain name in question. Perhaps most importantly, save for minor typographical variations, it is apparent from the WhoIs registration details that the same person, Zhao Ke, is the registrant in respect of each of these 14 disputed domain names.

Accordingly, the Panel, having regard to all relevant circumstances, concludes that consolidation of the Respondents in respect of these 14 disputed domain names is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area.

The WhoIs registration information and contact details for each of the disputed domain names <lorealparis.tv>, <maybelline-newyork.com> and <lorealprofessionnelus.com> is different. None of these disputed domain names has been registered (or previously registered) in the name of Zhao Ke, Ke Zhao, ChinaDNS Inc or Hao Domains Services. They are registered in the name of Ye genrong, DomainJet, Inc/Jack Sun and Ye li, respectively. Two have been registered using addresses in Zhejiang Province, China, and the other using an address in California, United States of America. The contact numbers and email addresses used (“[…]@kkinfo.com” and “[…]@gmail.com”) are quite different to those used in respect of the 14 disputed domain names listed above, each of which have been registered using similar addresses and contact information in Shanghai, China.

Whilst the name of the current registrant for <lorealjapan.com>, yeli, is similar to the registrant for <lorealprofessionnelus.com>, Ye Li, and both apparently share the same email address, the WhoIs records are otherwise different, the registrars are different, and <lorealprofessionnelus.com> is dormant.

Whilst the website for <maybelline-newyork.com> appears similar to the website for <loreal-china.com>, this, on its own, is not enough, in the Panel’s view, to suggest the Respondents in respect of these sites are the same as the Respondents in respect of the 14 disputed domain names referred to above.

Similarly, although there may be some similarities between the websites for <lorealparis.tv> and for <lorealtaiwan.com>, this is not enough, in the Panel’s view, to suggest a sufficient connection between these disputed domain names.

The Panel therefore concludes that the Complainant has not provided sufficiently compelling evidence to suggest that the Respondents in respect of the 3 disputed domain names <lorealparis.tv>, <maybelline-newyork.com> and <lorealprofessionnelus.com> are the same person as Zhao Ke or that common control is being exercised over the disputed domains, other than somewhat tenuous assertions that these Respondents are either alter egos for, or are in some way related to alter egos for, the Respondent, Zhao Ke.

In all the circumstances and, in particular, given the marked differences in the WhoIs registrant and contact information in respect of these 3 disputed domain names, the Panel declines to order consolidation of Respondents in respect of these 3 disputed domain names. The Panel will therefore proceed to a determination of the Complaint on the merits in respect of the above-listed 14 disputed domain names only, without prejudice to the Complainant’s rights to file a new Complaint or Complaints in respect of the the disputed domain names <lorealparis.tv>, <maybelline-newyork.com>and <lorealprofessionnelus.com>. Reference to “the Respondent” in the Decision below shall be reference to the Respondents in respect of the 14 consolidated disputed domain names referred to above.

6.3 Decision

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by many decades the dates of registration of the disputed domain names.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Each of the disputed domain names comprises one of the Trade Marks in its entirety1, together with non-distinctive suffixes which are either country or city names (“paris”, “japan”, “korea”, “taiwan”, “china”) or acronyms for country names (“us” and “usa”), non-distinctive generic words (“parfums”), or otherwise non-distinctive generic letters (“s”), none of which serve to distinguish the disputed domain names from the Trade Marks in any significant way.

The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel does not agree that use of a domain name in respect of a website offering sponsored commercial links cannot necessarily, in certain circumstances, amount to a bona fide offering of goods or services. However, in cases such as this, where the disputed domain names comprise well known trade marks, the Respondent would need to provide compelling reasons as to why such use is an all the circumstances justified. The Respondent has not chosen to file a Response and there is no evidence that the Respondent has established a legitimate business of registering domain names comprising arguably generic, or in any event, less well known, words in order to set up websites containing sponsored links. To the contrary, the evidence suggests the Respondent is an opportunist who has registered the disputed domain names comprising the Complainant’s well known Trade Marks in order to profit either by selling them or by using them to attract consumers to the Websites for commercial gain. In all the circumstances the Panel concludes that such conduct does not amount to a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“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 web site or location.”

Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”

The Respondent has clearly engaged in a pattern of conduct of registering the disputed domain names comprising the Complainant’s well-known Trade Marks, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Websites, or alternatively, in order to offer them for sale at prices far exceeding the Respondent’s reasonable registration costs. The Panel finds such use of the Trade Marks in this manner is clear evidence of bad faith.

The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraphs 4(b)(i) and 4(b)(iv) of the Policy.

The Complainant has also submitted evidence that the Respondent has engaged in a pattern of registering domain names comprising well known trade marks of other entities. The evidence also shows the Respondent has attempted to change the WhoIs registrant and contact details in respect of some of the disputed domain names following filing of the Complaint. In all the circumstances, the Panel finds such conduct amounts to further evidence of bad faith.

Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <loreal-parisusa.com>, <lorealparisus.com>, <lorealparis-usa.com>, <shuuemura-us.com>, <lorealjapan.com>, <lorealkorea.com>, <lorealtaiwan.com>, <lorealprofessionnel.info>, <garnier-usa.com>, <kerastaseus.com>, <lorealprofessionnels.com>, <lancomeparfums.com>, <loreal-china.com> and <lorealprofessionnelusa.com> be transferred to the Complainant.

The Panel declines to order transfer of the disputed domain names <lorealparis.tv>, <maybelline-newyork.com> and <lorealprofessionnelus.com>.

Sebastian M.W. Hughes
Sole Panelist
Dated: November 16, 2011


SCHEDULE A

Domain Name

Registrant/ Admin/Tech Contact

Registrar

Website Status

<loreal-parisusa.com>

zengwei

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealparisus.com>

zhutao

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealparis-usa.com>

Zhao Ke

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<shuuemura-us.com>

Zhao Ke

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealjapan.com>

yeli

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealkorea.com>

yangyong

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealtaiwan.com>

Ma Yun

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealparis.tv>

Ye genrong

Dynadot, LLC

Parking site with sponsored links

<lorealprofessionnel.info>

Zhao Ke

Hao Domains Services

Dynadot, LLC

Parking site with sponsored links

<garnier-usa.com>

Hao Domains Services

Zhao Ke

Dynadot, LLC

Parking site with sponsored links and offer for sale

<maybelline-newyork.com>

DomainJet, Inc

Jack Sun

eNom, Inc

Parking site with sponsored links and offer for sale

<kerastaseus.com>

Zhao Ke

Guangzhou Ming Yang Information Technology Co Ltd

Parking site with sponsored links

<lorealprofessionnels.com>

Zhao Ke

Hang Zhou E-Business Services Co Ltd

Dormant

<lancomeparfums.com>

ChinaDNS Inc

Ke Zhao

eNom, Inc

Parking site with sponsored links

<loreal-china.com>

ChinaDNS,Inc.

Li Yujun

eNom, Inc

Parking site with sponsored links and offer for sale

<lorealprofessionnelusa.com>

Zhao Ke

Hang Zhou E-Business Services Co Ltd

Parking site with sponsored links

<lorealprofessionnelus.com>

Ye li

Dynadot, LLC

Dormant

1 None of the disputed domain names contains the apostrophe, acute accent or circumflex comprised in the Trade Marks. It is however trite that, for the purposes of the first limb under the Policy, the addition or omission of punctuation marks does not have any bearing as regards the question of confusing similarity.

 

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