WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. The Trustee for Anton International Trust
Case No. DAU2018-0017
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is The Trustee for Anton International Trust of Port Kennedy, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <urbandecay.com.au> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2018. On June 13, 2018, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On June 14, 2018, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on June 22, 2018 to address an administrative formality.
The Center verified that the Complaint together with the amended Complaint (hereafter the “Complaint”) satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 June 26, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2018. The Response was filed with the Center on July 16, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 23, 2018. 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 August 1, 2018 the Complainant filed a document entitled “Additional Observations”, which amounted to submissions and further evidence in response to the Response. On the same day, the Respondent filed a similar document that responded to the Complainant’s Additional Observations.
4. Factual Background
The Complainant is a French industrial group specialising in the field of cosmetics and beauty. The Complainant was established in 1909 and has more than 30 global beauty brands including the brand URBAN DECAY. The URBAN DECAY brand has and continues to be applied to a variety of cosmetics, including shadows, lipsticks and setting sprays.
The Complainant is the owner of numerous trade marks for the words “urban decay” (the “URBAN DECAY Mark”), including trade mark no. 711336, registered on June 24, 1996 for various beauty products in class 3. The Complainant registered the domain name <urbandecay.com> in 1995.
It is unclear when the Domain Name was registered but it appears from the information before the Panel that the Respondent acquired the Domain Name on June 1, 2016. The Domain Name is presently inactive (in that it resolves to a “page not found” page on the website “www.construction.net.au”; the website “www.construction.net.au” being a jobs site that advertises construction related jobs). Prior to the first contact between the Complainant and the Respondent the Domain Name had redirected to the website “www.soulest.com” which on its face, appeared to be a clothing outlet called Soul Nation based in Perth, West Australia, though the Respondent has claimed that this was a “sample” website used to develop his skills as a web designer. Following the initial cease and desist letter the Respondent indicated that this was an error and redirected the Domain Name to the “www.construction.net.au” website.
The Respondent trades under the business names Quanteks, Doweb Media, and Anton International. The Director of the Respondent is Jermaine Williams, who appears to be a trained quantity surveyor with experience in the construction industry. Mr. Williams is apparently in the process of training to be a web designer.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s URBAN DECAY Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is subsequently being used in bad faith.
The Complainant is the owner of the URBAN DECAY Mark, having registered this mark in Australia since 1996. The Domain Name is identical or confusingly similar to the URBAN DECAY Mark, incorporating the mark in its entirety with the addition of “.com.au”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent has no licence, affiliation or right to use the Domain Name and has never been granted any permission by the Complainant for the registration of the Domain Name or any use of the URBAN DECAY Mark. The Respondent’s use of the Domain Name for a commercial clothes and accessories website and later for an inactive website does not generate any rights or legitimate interests in the Domain Name. In particular none of the websites for which the Domain Name was associated with are called “urban decay” or are linked with the concept of urban decay in any way. As such the Respondent has not made any demonstrable preparations to use the Domain Name in a legitimate manner.
The Domain Name was registered and is being used in bad faith. The URBAN DECAY trade mark is well known globally and its reputation would have been immediately obvious had the Respondent engaged in a Google or trade mark search. The use of the Domain Name, both in its previous redirection to a commercial website and its present redirection to an inactive page, amounts to use in bad faith, given the surrounding circumstances of the case.
B. Respondent
The Director of the Respondent is Jermaine Williams, an entrepreneur and qualified quantity surveyor with 12 years’ experience in the construction industry based in Perth, Australia. Mr. Williams started learning web design in 2014 to add to his business and skillset. During this time he has created several noncommercial “dummy” websites, which did not redirect to any actual businesses.
The term “urban decay” is a commonly used term in construction and supposedly also in the related social science field by which a previously functioning urban area falls into disrepair. The Domain Name was registered as part of a broader project connected to the Respondent’s website at “www.construction.net.au”, which offers construction jobs and news. The end goal of the “www.construction.net.au” project is to develop a construction platform that offers project controls solutions, consulting advice and job offers to the community. The Respondent sought funding through an overdraft facility in June 2015 for this purpose. The application letter for the overdraft facility specifically referred to “expanding the branding of urban-decay depreciations in the Perth region”. As part of the project the Respondent had intended to develop a section of the website focusing on urban decay. The urban decay segment of the “www.construction.net.au” website would feature urban decay photography, stories on development and offer “urban decay depreciation services”. When the Domain Name became available the Respondent registered it as connected to his broader “www.construction.net.au” project.
While developing his websites Mr. Williams claims to have “accidently” linked the Domain Name to one of his dummy websites that did not engage in any commercial trading. The Respondent has claimed he has engaged in further web training that will reduce such mistakes going further.
The Complainant’s URBAN DECAY brand is not well-known in Australia according to Mr. Williams, indeed it only launched in Australia in 2015, a year before the Respondent purchased the Domain Name. Until being contacted by the Complainant Mr. Williams claims to have never heard of the URBAN DECAY brand. According to Mr. Williams, the Complainant’s Urban Decay products are not available universally in Australia and indeed are only available on select websites and a limited number of stores. It is not reasonable to suppose that an entity operating in the construction industry would or should create confusion with the name of a cosmetic company that in any event has appropriated a well-used phrase in the construction industry.
The Respondent claims to have failed to further develop the Domain Name into an active website owing to a series of family issues affecting Mr. Williams.
6. Discussion and Findings
A. Supplemental Filings
As a preliminary matter, the Panel notes that paragraph 12 of the Rules provides that the Panel may “permit, in its sole discretion, further statements or documents from either of the Parties”. The Panel has reviewed the Parties’ Supplemental Filings of August 1, 2018, and while they add very little to the Parties’ pleadings, pursuant to its authority under paragraph 12 of the Rules, the Panel has exercised its discretion to admit both Supplemental Filings.
B. Identical or Confusingly Similar
To prove this element the Complainant must have a name, trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the URBAN DECAY Mark, having registrations for the URBAN DECAY Mark as a trade mark in Australia.
The Domain Name <urbandecay.com.au> is identical and confusingly similar to the URBAN DECAY mark, as it consists of the URBAN DECAY Mark in its entirety and “.com.au”. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
Given the Panel’s finding under the third element, it is not necessary to make a finding under this element.
D. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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 has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to another person, for valuable consideration in excess of its 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 name, trademark or service mark from reflecting the name or mark in a corresponding domain name; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location; or
(v) if any of the Respondent’s representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The Panel notes that the Policy requires that a complainant show that a respondent registered or subsequently used the Domain Name in bad faith.
This case involves two fundamentally different submissions as to the nature of the actions and motivations of the Respondent in its registration and use of the Domain Name; one clearly amounting to bad faith and the other not.
The Complainant submits, in essence, that the Respondent registered the Domain Name in awareness of the URBAN DECAY Mark and has done so with some potentially nefarious purpose in mind, either through linking it to a commercial website at “www.soulest.com”, through passively holding it at “www.construction.com.net”, preventing the Complainant from reflecting its URBAN DECAY Mark through a corresponding domain name, or through configuration of email servers that may result in a risk that the Respondent could engage in a phishing scheme. The latter claim the Panel has given little regard to, as it is not supported by evidence.
The Respondent submits that it/Mr. Williams registered the Domain Name for its descriptive qualities, being a commonly used term in construction. It claims it did so without awareness of the Complainant’s URBAN DECAY Mark and has taken some limited steps to develop a use for the Domain Name related to urban decay, including seeking funding and taking web design courses, however the project has been delayed by personal issues.
In the present case the Panel has reviewed the evidence and makes the following relevant conclusions:
1) The Domain Name consists of two ordinary terms, being “urban” and “decay”, which in combination results in the Complainant’s URBAN DECAY Mark, and a descriptive term used to also mean “urban rot” or “urban blight” according to Wikipedia page, and supposedly used in the social sciences.
2) The Complainant has offered products under the URBAN DECAY Mark for over 20 years and as such it may be well known in the cosmetics industry, however the Panel accepts the Respondent’s evidence, later confirmed in the Complainant’s supplemental filing, that the Complainant only launched its URBAN DECAY range in Australia in 2015 (though it had registered the URBAN DECAY Mark in Australia in 1996). The Panel finds that it is not implausible on the evidence before it that an individual in the Respondent’s shoes could have registered the Domain Name in June 2016, unaware of the URBAN DECAY Mark.
3) Had the Respondent conducted a Google search of “urban decay” at any point he would have been aware of the Complainant, and the Complainant is correct to note the current top search results for “urban decay” relate to the Complainant’s URBAN DECAY Mark, though if the Panel accepts the Respondent’s submissions that the Respondent registered and intends to use the Domain Name for its descriptive qualities, such awareness is not by itself determinative in finding bad faith.
4) There is no evidence in the Respondent’s conduct at any point that it/Mr. Williams was aware of the Complainant prior to being contacted by the Complainant. In particular none of the uses for which the Domain Name has been put relate to cosmetics or the Complainant specifically, nor is there any reason to assume from Mr. Williams’ background or work history (in the construction industry) that he had a particular awareness of the Complainant and its brands.
5) The Panel accepts the Respondent’s explanation that directing to the website “www.soulest.com” was a “dummy” website that did not relate to any actual trading entity. Neither the Complainant, nor the limited factual research engaged in by the Panel, has identified an actual trading entity selling clothing in Perth under the name “Soul Nation” and operating a website at “www.soulnation.com.au”. The website itself also appears to be somewhat incomplete.
6) Neither of the websites that the Domain Name has resolved to contain any advertisements, of a pay-per-click or other nature; it does not appear that the Respondent has at any stage received any revenue resulting from its use of the Domain Name.
7) There is no evidence to suggest that the Respondent has ever sought to sell the Domain Name to the Complainant or any third parties.
8) There is no evidence that the Respondent or its associated entities have registered other domain names similar to other well-known marks or otherwise engaged in bad faith behavior.
9) The Respondent’s evidence of preparations to use the Domain Name for the Respondent’s asserted purpose is, at best, limited. The Panel accepts that Mr. Williams does have experience in the building and construction industry but notes that the Respondent’s documentary evidence of a business plan consists of 1 page of a 5 page document supposedly dated in 2015, an invoice for a web design skills course and an extract from a discussion, dated October 16, 2016, supposedly showing Mr. William’s interest in website development. It is also not entirely clear to the Panel exactly what the Respondent’s business plan is for the Domain Name, and in particular whether the Respondent intends for the Domain Name to resolve to a website containing photography of urban decay, advertisement for “urban decay depreciation services”, stories on urban development or some combination of the above as part of a broader property portal. Be that as it may, the Respondent has registered a domain name that has a descriptive meaning, and the Panel cannot find in the record any of the bad faith consideration factors listed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.2.1.1
The standard of proof under the Policy is expressed as the “balance of probabilities” standard. As noted in 4.7 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), “Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true.”
The Panel finds that the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered or subsequently used the Domain Name in bad faith.
This is a decision reached with some difficulty as the Panel finds neither of the parties’ submissions as to the nature of the actions and motivations of the Respondent in its registration and use of the Domain Name to be particularly convincing.
However, ultimately the burden of proof is placed on the Complainant and the Panel has been asked to infer the intention of the Respondent in registering the Domain Name that has a descriptive meaning in the Respondent’s industry, in the absence of conclusive evidence from the Complainant that the Respondent was aware of the URBAN DECAY Mark or any evidence from the Complainant that the Respondent has made any attempt to take advantage of any confusion that could arise between the Domain Name and the Complainant’s brand. On the basis of the material before the Panel, the Panel is unable to find that the Complainant has met its burden.
The Policy, as derived from the Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see Clockwork IP, LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-04852 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). If the Complainant wishes to bring proceedings against the Respondent for trademark infringement, or question the assertions and evidence of the Respondent’s conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction.
The Panel notes again that neither party put forward an especially compelling case and that in the event that further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s URBAN DECAY brand as opposed to the claimed descriptive meaning of the term “urban decay”, there may be grounds to consider a refiled complaint, subject to the applicable criteria.
Accordingly, the Panel finds that the Complainant has failed to fulfil the third condition of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: August 3, 2018
1 “Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”
2 The Panel notes that the Policy is largely based on the Uniform Domain Name Dispute Resolution Policy and finds it appropriate to refer to its jurisprudence where instructive.