WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L'Oreal v. Rhonda Martinez

Case No. D2011-2113

1. The Parties

The Complainant is L'Oreal of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Rhonda Martinez of Warren, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lorealcareers.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On December 5, 2012, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” 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 December 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2011. The Response was filed with the Center on December 28, 2011.

The Center appointed Jane Lambert as the sole panelist in this matter on January 19, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is one of the biggest beauty and cosmetics producers in the world. Its holding company, L’Oréal SA, is incorporated in France but it has subsidiaries or other interests in over 130 countries around the world. The group’s products include hair color, styling aids, cosmetics, cleansers and fragrances that are marketed under such well known brands as Garnier, Kerestase, Maybelline, Lancôme and Shu Uemura.

One of the group’s most important markets is North America. It entered that market in 1953 and its sales to that continent amounted to EUR 4,291 million in 2010 accounting for 23.6% of group sales.

With 66,000 employees around the world, the Complainant is a major employer. Recruitment and staff development are important to the group. It encourages employees to acquire the qualifications and experience necessary to rise within the company. It is for that reason that the Complainant has been designed more than once as a preferred or ideal employer.

The L’Oréal sign is registered as a trade mark in a number of countries including the United States of America. The sign has been registered in the United States of America for goods in class 3 since 1958 under registration number 0661746 and for goods in classes 3 and 5 since 1951 under registration number 0540541.

The Complainant has a number of websites including “www.loreal.com” and “www.loreal-paris.co.uk”. On several of its websites there is a careers section.

According to the Complaint, the disputed domain name has been used as the URL for a holding page indicating a website under construction. The panelist attempted to visit whatever website was at “www.lorealcareers.com” but received an error message.

The Complainant’s lawyers sent a cease and desist letter to the email address of the person identified as the Respondent on the WhoIs search, but received no reply. It then sent a cease and desist letter by post to the postal address of that person. By a letter to the Complainant’s lawyers dated November 28, 2011, the Respondent denied that she had anything to do with the registration of the disputed domain name and complained that her credit card had been used without her consent.

5. Parties’ Contentions

A. Complainant

The Complainant claims the transfer of the disputed domain name on the grounds that:

- the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in the disputed domain name; and

- the disputed domain name was registered and is being used in bad faith.

As to confusing similarity, the Complainant relies on a long line of cases to the effect that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and only a generic word has been added.

On the absence of rights or legitimate interests in the disputed domain name, the Complainant says that there is no evidence that the Respondent is commonly known by a name that is similar to the disputed domain name. The Respondent has no trade mark or service mark resembling the disputed domain name and the Complainant has never licensed her to use its marks.

With regard to registration and use in bad faith, the Complainant relies on the reputation of its marks and points out that the choice of the domain name indicates that she was aware that it is a major employer. It submits that in itself is enough to justify a finding of registration in bad faith. It refers to the well known decision in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 where it was held that even passive holding may satisfy the requirement of use in bad faith. It argues that the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name though it has not alleged or produced any evidence that the Respondent has engaged in a pattern of such conduct. Lastly, it contends that the use of Ms. Martinez’s name and credit card account are ipso fact evidence of registration and use in bad faith.

B. Respondent

The Respondent does not dispute the Complainant’s case but denies that she has done anything wrong. In particular, she denies that she registered the disputed domain name and that she ever held the email address to which the first cease and desist letter had been sent. On December 20, 2011 she sent a copy of a letter from her bankers confirming that the charge to register the disputed domain name had been made without her consent and that she was not liable for it.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove that each of these three elements is present.

A. Identical or Confusingly Similar

The Complainant has produced evidence that it has registered L’ORÉAL as a trade mark in the United States and elsewhere.

The dominant part of the disputed domain name is the word “loreal”. It is therefore similar to a trade mark in which the Complainant has rights.

The incorporation of the word “careers” into the domain name gives the impression that a site at a URL incorporating that domain name would advertise vacancies or provides information about career opportunities with the Complainant. Such an impression is confusing.

It therefore follows that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent does not claim any rights or legitimate interests in the disputed domain name. It is therefore unnecessary to consider the circumstances listed in paragraph 4(c) whereby a respondent can demonstrate that he or she has rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the Respondent of the dispute, its 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the 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 trade mark or service mark at issue.

Clearly, none of those circumstances apply in the present case.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is fortunate that paragraph 4(a)(iii) of the Policy is expressed in the passive because it permits a finding of bad faith to be made without any criticism of the Respondent. The Respondent in this case appears to be at least as much a victim of wrongdoing as the Complainant for which she has the Panel’s sympathy. The Panel wishes to make clear that the Respondent has done nothing wrong and regrets that she has been disturbed by these events.

Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 trade mark 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

This case does not fall neatly into any of the above circumstances. The Complainant suggests paragraph 4(b)(ii) may apply but the Complainant has never alleged, and there is certainly no evidence, that the Respondent had previously registered domain names to prevent trade or service mark owners from reflecting their marks in corresponding domain names. Probably paragraph 4(b)(iii) comes closest but the primary purpose of registering confusingly similar domain names is usually financial gain rather than disruption.

Happily, the words “without limitation” assist the Panel for they permit a finding of registration and use in bad faith in circumstances outside those listed in paragraph 4(b). That gives instances of bad faith but nothing in the Policy or Rules actually defines it. It is therefore necessary to look at the case law for guidance.

Noting the absence of a definition of “bad faith” in the Policy and Rules, the panel in Intesa Sanpaolo S.p.A. v. George Papadakos, WIPO Case No. D2008-1531 observed that the term occurs in legislation in various contexts in both common law and civil law systems. It continued:

“Probably the most relevant of those contexts for construing the Policy is European Community trademark law. Art 3.2(d) of the Trade Marks Directive (DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of October 22 2008 to approximate the laws of the Member States relating to trade marks) requires EC member states not to register or, if registered to declare invalid, a trademark “where and to the extent that the application for registration of the trade mark was made in bad faith by the applicant.” Similarly, Art 51(1)(b) of the Council Regulation (EC) No 40/94 (Community Trade Mark Regulation) provides that a Community trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings “where the applicant was acting in bad faith when he filed the application for the trade mark.” In neither the Directive nor the Regulation are the words “bad faith” defined.

Cases have come before the courts of the member states and at OHIM (the EC trademarks registry) where those provisions have had to be applied. There appears to be a consensus that “bad faith” connotes not just dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” (per paragraph [166] of Mr Justice Arnold's recent decision in Hotel Cipriani SRL and Others v. Cipriani (Grosvenor Street) Ltd and Others [2008] EWHC 3032 (Ch) (December 9, 2008).

In determining whether or not there has been bad faith, both the English courts and OHIM have applied a two-prong test. First, the tribunal ascertains what the person who is alleged to have acted in bad faith knew about the transaction or other matter in question. Next it decides whether in the light of that knowledge, that person's conduct is dishonest judged by ordinary standard of honest people (see Professor Ruth Annand's analysis in AJIT Weekly Trade Mark [2006] R.P.C. 25 at paragraph [41] which was cited with approval by Mr. Justice Arnold in Cipriani at paragraph [166]).

This approach is entirely consistent with paragraph 4(b) of the Policy which provides a number of circumstances which may evidence registration and use of a domain name in bad faith.”

Applying this two-prong test, the first question to ascertain is “what the person who is alleged to have acted in bad faith knew about the transaction or other matter in question.” The obvious answer is that the person who used the Respondent’s credit card account to register a domain name incorporating the well-known trade mark L’ORÉAL in her name without her consent must have known everything about it. As to the second prong, namely “whether in the light of that knowledge, that person's conduct is dishonest judged by ordinary standard of honest people”, the answer must be an emphatic yes. The use of a credit card account without the owner’s consent is manifestly dishonest. Indeed it is a crime which in some circumstances can be punished by an immediate custodial sentence in many countries.

In the present case, the use of the credit card for the purpose of registering without rights or legitimate interests a domain name incorporating the well-known trade mark L’ORÉAL amounts to bad faith registration and use under the Policy.

The Panel therefore finds that the disputed domain name was registered and is used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel

orders that the disputed domain name <lorealcareers.com> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Dated: February 3, 2012