World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L'Oréal v. Wen Tao

Case No. D2012-0521

1. The Parties

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

The Respondent is Wen Tao of Zhuhai, Guangdong, China.

2. The Domain Name and Registrar

The Disputed Domain Name <loreal-sq.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2012. On March 15, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On March 16, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On March 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 20, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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 March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2012.

The Center appointed Kar Liang Soh as the sole panelist in this matter on April 30, 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 a 100 year old French company in the cosmetics and beauty industry and is currently one of the largest in the world. It has 66,600 employees across 130 countries. In China alone, the Complainant’s subsidiary established in 1997 employs over 2,500 people. It also has a research facility in Pudong. Through promotional efforts, including retaining local celebrities and sponsoring events (e.g., World Expo in Shanghai), the Complainant has seen good success in China, with sales doubling from 2005 to 2010.

The Complainant is the owner many trade mark registrations for the trade mark L’OREAL around the world, including:

Jurisdiction Trade mark number Registration date

China 148547 September 20, 1979

China 1487385 November 8, 1999

The Complainant has registered many domain names comprising the trade mark “loreal” including:

Domain Name Registration date

<loreal.fr> October 14, 1997

<loreal.com> October 24, 1997

<lorealchina.com> July 18, 2000

The Panel notes that the Complainant’s international website at http://www.loreal.com links to the Complainant’s local websites, including the China website at http://www.lorealchina.com. The China website prominently displays the word L’OREAL, under which is found the smaller word CHINA. The China website also uses the characters 欧莱雅(中国) as the Chinese equivalent of L’OREAL CHINA.

The trade mark L’OREAL has been held to be well-known by previous UDRP panels (e.g., L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v Unasi, Inc, WIPO Case No. D2005-0623; L’Oreal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie v Spiral Matrix, WIPO Case No. D2006-0869; L’Oreal v Larry Huston, WIPO Case No. D2008-1249; L’Oreal, Laboratoire Garnier & Compangie v Australian Internet Investments Pty Ltd, WIPO Case No. D2008-1640; L’Oreal v Rampe Purda/Privacy-Protect.org, WIPO Case No. D2010-0870).

The Disputed Domain Name was registered on January 2, 2010. As at February 29, 2012, it resolved to a website which prominently advertises facial skin care products under the trade mark L’OREAL. The header of the website contained the prominent word L’oreal. Under this word, are smaller words “PARIS SQ” and to the right what appears to be a telephone number. The footer of the website contained the words “Copyright (C) 2009 巴黎欧莱雅化妆品(授权)有限公司”. The Chinese characters in these words were translated by Google Translate as “Paris L’Oreal cosmetics (authorized) Co, Ltd”. As of March 28, 2012, the Disputed Domain Name did not appear to resolve to any website.

Information regarding the Respondent is limited to the Who-Is details associated with the Disputed Domain Name and the website previously resolved from the Disputed Domain Name. The Who-Is record indicates that the Respondent’s address is “guang dong zhuhai guangdong guangdong 519000”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Name is confusingly similar to the Complainant’s trade mark L’OREAL. The Disputed Domain Name incorporates the Complainant’s trade mark in its entirety. The only differences are the addition of the letters “sq” , the addition of a hyphen and the omission of the apostrophe between the letters “L” and “O” in the Complainant’s trade mark. The differences are insufficient to avoid the confusing similarity between the Disputed Domain Name and the Complainant’s trade mark;

2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to register and use the trade mark L’OREAL.as a domain name. The Respondent is not commonly known by the name L’OREAL; and

3) The Respondent has registered and is using the Disputed Domain Name in bad faith. The Complainant’s trade mark L’OREAL is well-known and the Respondent must have known of the same. The existence and reputation of the Complainant’s trade mark would be revealed in a Google search. The Respondent registered the Disputed Domain Name to take advantage of the Complainant’s goodwill and to make commercial gains by the sale of the Respondent’s products and to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the website resolved from the Disputed Domain Name. The copyright notice on the website incorrectly conveyed the idea that the Disputed Domain Name is associated with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of Proceeding

The language of the registration agreement is Chinese. The default language of the proceeding is therefore Chinese. The Complaint contains a request that the language of the proceeding be English. Having considered the circumstances, the Panel determines that English shall be the language of the proceeding. In coming to this decision, the Panel took into account the following key considerations:

1) The Complainant is French and has advised that it has no knowledge of the Chinese language;

2) Maintaining the default language will force the Complainant to retain translation services which will increase the cost of the proceeding significantly;

3) Not only would there be that additional burden on the Complainant, there could likely be unnecessary delays to the proceeding;

4) The Respondent has neither responded nor indicated a preference for the language of the proceeding;

5) The Complaint has already been filed in English. The Panelist is conversant in English and Chinese and is capable of readily dealing with the proceeding in English; and

6) No apparent advantage may be gained by imposing the use of Chinese on the Complainant

6.2 Discussion

In order to succeed in this proceeding, the circumstances must satisfy the 3 limbs of paragraph 4(a) of the Policy. As such, the Complainant must show that:

a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

c) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to review each of these in turn.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the trade mark L’OREAL by virtue of the Complainant’s trade mark registrations. The only differences between the Disputed Domain Name and the trade mark L’OREAL is the addition of the suffix characters “-sq” after the word “loreal” in the Disputed Domain Name, and the absence of an apostrophe between the first two letters in the Disputed Domain Name.

The apostrophe is not a valid character for domain name registration. The omission of an apostrophe or addition of a hyphen as a word concatenator in a domain name does not normally change the identity of the original words. The Panel is of the view that the omitted apostrophe in the Disputed Domain Name does not assist to distinguish the Disputed Domain Name from the trade mark L’OREAL.

It is not apparent to the Panel what the suffix “-sq” in the Disputed Domain Name represents. The Complainant suggested some possibilities in the Complaint and the Panel is able to guess at further possibilities. In any event, such possibilities are speculatory and the Panel does not see any benefit in devoting long paragraphs towards analyzing them. At the end of the day, the ultimate question remains whether the addition of the suffix changes the resulting domain name so significantly as to distinguish it from the trade mark which has been incorporated therein.

In the context of the present case, the question is whether the addition of the suffix “-sq” in the Disputed Domain Name serves to change the resulting domain name so significantly that it has become distinguishable from the trade mark L’OREAL. In the Panel’s view, the answer must be “no”. The word “loreal” remains prominent and recognizable. The existence of a hyphen before “sq” serves to act as a delimiter which promotes the reading of the domain name as a concatenation of two words, the first being “loreal” and the second being “sq”. The identity of “loreal” remains fully intact and any reasonable person will consider the resulting combination “loreal-sq” to be associated and/or confusing with the trade mark L’OREAL, which has been incorporated in the Disputed Domain Name it its entirety (barring the apostrophe, which may be disregarded).

Therefore, the Panel takes the view that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark L’OREAL.

B. Rights or Legitimate Interests

The Respondent is an individual. There is no evidence to suggest that the Respondent is known by the name “loreal-sq”. The Complainant has also confirmed that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use the trade mark L’OREAL (or a confusingly similar mark). The consensus of prior UDRP panels is that a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name may be found in this circumstance.

In addition, the Panel notes that the Respondent does not use the word “loreal-sq” on the website previously resolved from the Disputed Domain Name. Instead, the prominent word used is L’OREAL sitting above the smaller words PARIS SQ. The Panel is unable to glean any basis for a reasonable, legitimate non-commercial or fair use of the Disputed Domain Name from the available evidence which contradicts the prima facie finding.

In the circumstances, the 2nd limb of paragraph 4(a) is also established.

C. Registered and Used in Bad Faith

The Panel accepts on the evidence and agrees with prior UDRP panels which have held that the Complainant’s trade mark L’OREAL is well-known. The Respondent must have been aware of the Complainant and the Complainant’s trade mark since the trade mark is used prominently on the website previously resolved from the Disputed Domain Name. Such use of the trade mark cannot be coincidental or accidental.

The available evidence supports the reasonable inference that the Respondent registered the Disputed Domain Name to take advantage of the reputation in the trade mark L’OREAL. This is made evident in the prominent use of the trade mark L’OREAL on the website and the promotion of products under the trade mark L’OREAL. The Panel notes that the Complainant uses the Chinese characters 欧莱雅as the Chinese version of the trade mark L’OREAL. The Respondent has adopted the same Chinese characters 欧莱雅 in the copyright notice on the website previously resolved from the Disputed Domain Name as a creative association with the Complainant together with corroborative references to “Paris” (巴黎), “cosmetics” (化妆) and “authorized” or “licenced” (授权) in the purported name of a limited company (有限公司). The Panel agrees that the copyright notice on the previous website resolved from the Disputed Domain Name is likely to convey or at least strengthen the impression to a visitor to the website that the Disputed Domain Name is associated with the Complainant.

The Panel is of the view that the circumstances fall within the form of bad faith registration and use described in paragraph 4(b)(iv) of the Policy, which states as follow:

“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”

The content of the website previously resolved from the Disputed Domain Name is strongly suggestive of commercial gain as an objective. The Complainant has alleged this in no uncertain terms. Yet, the Respondent has chosen to remain silent. The Panel is inclined to draw an adverse inference against that the Respondent and finds that the Respondent had intentionally attempted to attract Internet users to the website previously resolved from the Disputed Domain Name for commercial gain.

The Panel had already established that the Disputed Domain Name and the Complainant’s trade mark L’OREAL are confusingly similar. The deliberate use of the trade mark L’OREAL (divorced from the suffix “-sq”) on the previous website resolved from the Disputed Domain Name in association with the offering of products marked with the trade mark L’OREAL indicates that the Respondent is using the Disputed Domain Name to create a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation and/or endorsement.

Under paragraph 2 of Policy, a domain name registrant warrants that the statements made in the Registration Agreement are complete and accurate. This must necessarily include the representations on contact particulars. The Panel also notes that the Respondent as not indicated a valid contact address in registering the Disputed Domain Name. The repetitive reference to Guangdong in the address “guang dong zhuhai guangdong guangdong 519000” without any street name, building or unit number has the obvious result of describing an ineffective address for corresponding with or contacting the Respondent. A domain name registrant has a duty to act honestly, including providing valid contact particulars. It has been established by previous UDRP panels that the deliberate failure to do so is a basis for finding bad faith use and registration (see Immobiliére Dassault SA, Groupe Industriel Marcel Dassault v DuanZuoChun, WIPO Case No. D2011-2106; ECCO Sko A/S v Protected Domain Services – Customer ID: NCR-2448048/jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc v David, WIPO Case No. D2009-1245).

In view of the above, the Panel is of the view that bad faith registration and use is established on the facts.

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 Name <loreal-sq.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: May 24, 2012

 

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