WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal, Lancôme Parfums Et Beauté & Compagnie v. Emir Kurtovic, Agencija Raptor

Case No. D2019-2639

1. The Parties

Complainants are L’Oréal, and Lancôme Parfums Et Beauté & Compagnie, France, represented by Dreyfus & associés, France.

Respondent is Emir Kurtovic, Agencija Raptor, Serbia.

2. The Domain Names and Registrar

The disputed domain names <lancôme.company> (<xn--lancme-lxa.company>) and <loréal.company> (<xn--loral-dsa.company>) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain names.

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 Respondent of the Complaint, and the proceedings commenced on October 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2019.

The Center appointed Anne Gundelfinger as the sole panelist in this matter on December 4, 2019. 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

Complainants in this administrative proceeding are L’Oréal, with its registered office in Paris, France, and its subsidiary Lancôme Parfums Et Beauté & Cie (“Lancôme”) with its head office also in Paris, France. Complainants are affiliated entities in the same corporate group, and are acting together in this proceeding.

Complainant L’Oréal, founded in 1909, is a world leader in cosmetics, beauty, and personal care products. It has a portfolio of 36 brands including the well-known L’ORÉAL brand, employs 86,000 employees, and is present in 150 countries, with annual revenue of over EUR 26 billion. Complainant Lancôme, founded in 1935, is a leading luxury beauty brand in the selective women’s skincare and makeup markets. Complainant Lancôme is well known worldwide with a presence in 130 countries. Among its brand ambassadors are some of the most well-known celebrities in the world including, Julia Roberts, Kate Winslet, Penelope Cruz, Lupita Nyong’o, Lily Collins, Taylor Hill, and Isabella Rossellini.

Complainants and their L’ORÉAL and LANCÔME trademarks enjoy a worldwide reputation. Complainants own numerous L’ORÉAL and LANCÔME trademark registrations around the world including but not limited to the following:

- International trademark L’ORÉAL No. 184970 protected in, inter alia, Serbia (Respondent’s country of residence), Switzerland, Germany, Italy, Romania, Egypt, Mongolia, Viet Nam, Morocco, registered on May 23, 1955, duly renewed, and covering goods in classes 3 and 5;

- International trademark L’ORÉAL No. 230114, protected in, inter alia, Serbia (Respondent’s country of residence), the Czech Republic, Croatia, Serbia, Slovenia, Slovakia, registered on March 28, 1960, duly renewed, and covering goods in classes 1 to 34; and

- International trademark LANCÔME No.164395, protected in, inter alia, Serbia (Respondent’s country of residence), Bosnia and Herzegovina, the Czech Republic, Slovakia, Hungary, Croatia, North Macedonia, Bulgaria, the Russian Federation, Ukraine, Germany, Italy, Egypt, Switzerland, registered on October 6, 1952, duly renewed, and covering goods in classes 3 and 21 (all hereafter referred to as “Complainants’ Trademarks”).

In addition, Complainants own and use the following domain names <loreal.com> (registered on October 24, 1997) and <lancome.com> (registered on July 8, 1997) for websites to promote their goods and services under their marks L’ORÉAL and LANCÔME.

The disputed domain name <loréal.company> was registered by Respondent on July 31, 2019, and the disputed domain name <lancôme.company> was registered by Respondent on August 17, 2019. The disputed domain name <loréal.company> resolves to a website in French containing articles and news. The disputed domain name <lancôme.company> resolves to a website with sponsored pay-per-click (“PPC”) links relating to beauty and perfume products from Complainant Lancôme and its competitors.

5. Parties’ Contentions

A. Complainant

Complainants’ contentions include the following:

Complainants submit that Complainants’ Trademarks are active, valid, and subsisting, and that the L’ORÉAL and LANCÔME marks are in use in over 130 countries worldwide and are famous and well known. Complainants argue that the disputed domain names are, respectively, confusingly similar to the L’ORÉAL and LANCÔME marks because each of the disputed domain names wholly incorporates, respectively, the L’ORÉAL and LANCÔME marks, absent the apostrophe in the L’ORÉAL mark which Complainant argues is immaterial.

Complainants argue that Respondent has no rights or legitimate interests in the disputed domain names. Complainants assert that (a) Respondent is not commonly known by the disputed domain names, (b) is not using, nor has made 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, (c) has no relationship with Complainants and is not licensed or otherwise permitted by Complainants to use the disputed domain names, and (d) is not making a legitimate noncommercial or other fair use of the disputed domain names. Complainants further assert that the disputed domain names have been registered and used in bad faith.

In support of these arguments, Complainants have submitted credible and persuasive evidence that (a) the <loréal.company> disputed domain name resolves to a website featuring entertainment and other news links, and that at the time of discovery of the disputed domain name, the website featured a link which redirected users to the platform Afternic.com, where the disputed domain name was offered for sale for USD 25,000.00; and (b) the <lancôme.company> disputed domain name resolves to a parked website featuring sponsored pay-per-click (“PPC”) links relating to beauty and perfume products from Complainant Lancôme and its competitors, and that the disputed domain name was offered for sale through GoDaddy Auctions at USD 999.00.

Complainants have further demonstrated that they contacted Respondent by email on August 14, 2019 objecting to the registration of the disputed domain name <loréal.company> and demanding that its use cease and that it be transferred to Complainants. Three days later, on August 17, 2019, Respondent registered the disputed domain name <lancôme.company>. Shortly thereafter, Respondent then responded to Complainants’ demand letter, and argued inter alia that his registration and use of the disputed domain name <loréal.company> “…was quite fair-use…” because he was displaying news content and did not hide his identity. Respondent argued further that because Complainants did not register the disputed domain name <loréal.company> during the Sunrise Period he was free to buy it, and further stated as follows:

“Instead of hunting for domain traders you could buy your own domain - why did you wait? To have somebody to sue? That’s a real act of abuse/bad faith. Instead of making threats to gain something you could clearly buy on the free market but you chose not to, I suggest you try another approach and you will find me very understanding. If your client is interested in my domains, I think you might have a look into http://cosmetics.company If so, the domain you have problems with would not be interesting to me anymore.”

B. Respondent

While Respondent did respond to Complainants’ initial demand letter, as discussed above, he did not reply to Complainants’ contentions as part of this UDRP proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainants prove the following three elements in order to be successful in this action:

(i) the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainants have rights;

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

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainants have well established trademark rights around the world in the L’ORÉAL and LANCÔME trademarks, which have been widely used for many decades. The disputed domain names respectively incorporate the L’ORÉAL and LANCÔME marks in their entirety, with no additional elements. With the exception of the omission of the apostrophe in the L’ORÉAL mark, the disputed domain names are precisely identical to Complainants’ L’ORÉAL and LANCÔME marks, including even the use of diacritical marks.

As in cases of minor misspellings (“typosquatting”) or the addition of dictionary or descriptive term to a complainant’s mark, the omission of the apostrophe in the disputed domain name <loreal.company> is immaterial. See, sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. Similarly, the addition of the generic Top-Level Domain “.company” is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test.

Accordingly, the Panel concludes that the disputed domain names are confusingly similar, respectively, to Complainants’ L’ORÉAL and LANCÔME trademarks, and that the first element of the test is satisfied.

B. Rights or Legitimate Interests

It is well-established that a complainant needs only to present a prima facie case in relation to the second element of the test, and that once such a showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name. See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; MatchNet plc. V. MAC Trading, WIPO Case No. D2000-0205.

Here, Complainants have demonstrated long and well-established rights in, as well as decades-long use of the L’ORÉAL and LANCÔME trademarks. Moreover, both of these marks have been recognized by multiple prior panels as famous and/or well-known. See e.g., L'Oréal, v. Hoang lan / Whois Privacy Protection Service, Inc., WIPO Case No. D2016-0917; L'Oréal v Noorinet, WIPO Case No. D2015-0755; L'Oréal v. Vitaly P Pak, WIPO Case No. D2013-0291); Lancôme Parfums Et Beauté & Cie v. He peng, WIPO Case No. D2014-1944; Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oréal SA, L'Oréal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748; and L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie v Spiral Matrix, WIPO Case No. D2006-0869.

Complainants submit that Respondent is not commonly known by either of the disputed domain names, is not using the disputed domain names in connection with a bona fide offering of goods or services, has no relationship with Complainants, is not licensed or otherwise permitted by Complainants to use the disputed domain names, and is not making a legitimate noncommercial or other fair use of the disputed domain names. In the absence of a response from Respondent, the Panel accepts Complainant’s evidence and assertions.

While Respondent failed to file a response in this UDRP proceeding, Panel notes that the facts and arguments previously asserted by Respondent in response to Complainants’ demand letter do not establish rights or legitimate interests. In particular, this is not a case of “fair use” given that the use of the disputed domain names is not nominative. Moreover, the disputed domain names carry a high risk of implied affiliation given their identity to Complainants’ marks, even down to the use of diacritic marks. See, section 2.5.1 of WIPO Overview 3.0. Finally, as discussed more fully below, Respondent has registered and used the disputed domain names in bad faith, and such bad faith use and registration does not confer rights or legitimate interests. See, section 2.15 of WIPO Overview 3.0).

Accordingly, the Panel finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain names, and concludes that Complainant has met its burden under the second element of the test.

C. Registered and Used in Bad Faith

The third element of the test requires a showing that the disputed domain names have been registered and are being used in bad faith. The disputed domain names were registered at a time when the reputation of Complainants and their L’ORÉAL and LANCÔME marks had been well-established for many decades around the world. It is virtually inconceivable that Respondent was unaware of Complainants’ highly distinctive and well-known trademarks. Moreover, the fact that Respondent used the diacritical marks on the two disputed domain names is strong evidence that Respondent was indeed well aware of Complainants’ L’ORÉAL and LANCÔME marks and copied them. Finally, correspondence between the parties confirms Respondent’s knowledge of Complainants’ L’ORÉAL trademark.

Further, it is clear from the evidence that Respondent has registered and is using the disputed domain names primarily for the purpose of selling them for a sum of money or other valuable consideration in excess of the registration costs. Respondent offered the disputed domain name <loréal.company> for USD 25,000, and when contacted by Complainants implied he would give up the <loréal.company> domain name if Complainants purchased the <cosmetics.company> domain name from him. Regarding the disputed domain name <lancôme.company>, Respondent registered it only days after receiving Complainant’s demand letter regarding the <loréal.company> domain name, and then offered to sell it for USD 999, thereby establishing a pattern of targeting Complainants’ marks. This is a clear and classic case cybersquatting, and clearly establishes registration and use in bad faith. See paragraph 4(b) of the Policy, and section 3.1.1 of WIPO Overview 3.0, and cases cited therein.

Additionally, the Panel notes that the disputed domain names carry a high risk of implied affiliation as previously discussed, and that Repondent’s hosting of news articles at the <loréal.company> website does not somehow convert such a clear case of cybersquatting into fair use. Finally, the use of the disputed domain name <lancôme.company> to host a website with sponsored PPC links relating to beauty and perfume products from Complainant Lancôme and its competitors is further evidence of bad faith. See Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.

Accordingly, the Panel concludes that both of the disputed domain names were registered and have been used in bad faith, and that the third element of the test 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 <lancôme.company> (<xn--lancme-lxa.company>) be transferred to Lancôme Parfums Et Beauté & Cie and that the disputed domain name <loréal.company> (<xn--loral-dsa.company>) be transferred to L’Oréal.

Anne Gundelfinger
Sole Panelist
Date: December 20, 2019