WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Yungu Jo

Case No. D2016-0503

1. The Parties

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

The Respondent is Yungu Jo of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <garniermen.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2016.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 25, 2016. 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.

On May 11, 2016, due to exceptional circumstances, the Panel extended the due date for rendering its decision to May 13, 2016.

4. Factual Background

The Complainant, L’Oreal, is a French-based cosmetics and beauty business. Established in 1909, it is one of the world’s leading cosmetics companies with businesses in 130 countries and over 78,600 employees around the world. It creates and distributes products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances.

The Complainant and its GARNIER trademark enjoy a worldwide reputation. GARNIER is the second largest brand of the L’Oréal Group and it is used for haircare and skincare products.

The Complainant owns numerous trademark registrations around the world for GARNIER including GARNIER, GARNIER NATURALS FOR MEN and GARNIER MEN.

The Respondent, Yungu Jo, registered the disputed domain name on April 19, 2014.

The disputed domain name resolved to a parking page displaying various commercial links including some related to skincare products and to the GARNIER trademark. At the time of this decision the disputed domain name was inactive.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that before starting the present proceeding, it made efforts to resolve this matter amicably. Specifically, the Complainant alleges that on November 20, 2015 it mailed a cease-and-desist letter to the Respondent requesting that the Respondent transfer the disputed domain name to the Complainant. The Respondent did not reply but after the cease and desist letter was sent the disputed domain name resolves to an inactive page.

First, the Complainant contends that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark GARNIER.

Second, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent is not affiliated with the Complainant. Specifically, the Complainant contends that the disputed domain name is so similar to the famous trademark GARNIER that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Furthermore, the Complainant contends that the Respondent is not commonly known by the name GARNIER nor is it authorized or licensed to use the GARNIER trademark. Moreover, the Complainant contends that the Respondent did not demonstrate use of, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was also offered for sale on the webpage.

Third, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent registered the disputed domain name in bad faith because it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant contends that the Complainant is well-known throughout the world, including in the Republic of Korea where the Respondent is located.

The Complainant contends that the fact that the Respondent seems to have been named in several prior UDRP proceedings can also be interpreted as a sign that the disputed domain name has been registered in bad faith.

Finally, the disputed domain name previously resolved to a parking page containing links which relate to the trademark GARNIER and skincare products. Previous UDRP decisions have held that the use of domain names to divert Internet users and to direct them to a webpage providing revenues, through clicks, to the Respondent evidences bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

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

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

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

Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above. The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.

The Panel finds that the Complainant has sufficiently established trademark rights in the terms “Garnier” and “Garnier Men”. It is clear to the Panel that the disputed domain name, consisting of the Complainant’s trademark GARNIER with the addition of a generic suffix “men”, is identical to the Complainant’s trademark GARNIER MEN and confusingly similar to the Complainant’s trademark GARNIER.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant states that it has not authorized the Respondent to use the disputed domain name and that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production on the second element shifts to the Respondent. The Respondent is in default and has not provided any answer or justification for the registration of the disputed domain name.

The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

With respect to bad faith registration, the Panel finds that the evidence shows that the Respondent knew of the Complainant’s trademarks at the time of registering the disputed domain name. UDRP panels have held that the registration of a well-known mark as a domain name can be evidence of an attempt to attract users to a web site by creating confusion with the Complainant’s mark.

Also several prior UDRP panels have found that the GARNIER trademark is famous for purposes of the Policy. See L’Oréal and Laboratoire Garnier Et Compagnie v. Mitesh Soma, WIPO Case No. D2011-0860 and 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.

The Complainant has stated and the Respondent has not denied that at the time of filing this Complaint the disputed domain name formerly resolved to a parking page displaying various commercial links including some related to skincare products and to the GARNIER trademark. Further, the unauthorized use of a trademark to generate pay-per-click revenue constitutes bad faith under paragraph 4(b) (iv) of the Policy. Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344.

After sending a cease and desist letter, the Complainant noticed a change in the use of the disputed domain name and at the time of this decision the disputed domain name directs to an inactive page. It also is well settled that the passive holding of domain names is not a barrier to a finding of bad faith if sufficient other indicia of bad faith are present, including circumstances (which are present in this case) such as a famous trademark being copied, an incorrect address, previous bad faith conduct, the failure of the Respondent to respond to the Complaint, and an inability by the Panel to conceive of any plausible good faith use for the disputed domain name. WIPO Overview 2.0, paragraph 3.2.

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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 <garniermen.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: May 16, 2016