WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Li Ye
Case No. DCO2012-0025
1. The Parties
Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent (also sometimes referred to as “the Registrant”) is Li Ye of Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <shuuemura.co> (hereinafter the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2012.
The Center appointed James H. Grossman as the sole panelist in this matter on September 21, 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 Complaint states that Complainant is the world’s largest cosmetic company. Established in 1909, the Company does business in over 130 countries and has over 500 brands of which 23 of such brands have international trademarks. Complainant markets more than 2000 products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances. Complainant has 68,900 employees around the world. In 2011 revenues were as high as 20.3 billion euros. Among the many brands owned by Complainant, the SHU UEMURA mark is a high end beauty line of products which became well known early on for its skin cleansing oil. The SHU UEMURA line was created by a Japanese individual with the same name and launched commercially by him according to Complainant in the Complaint in 1960 [however, in the demand letter from Complainant to Respondent of June 19, 2012, Counsel for Complainant states the brand was created in 1983]. He sold the controlling interest in the SHU UEMURA line of products to the Company in 2004. Shu Uemura, the individual, has remained the creative force after the sale of his business to the Complainant.
Revenues of the SHU UEMURA business in 2008 were in excess of $100 million with a presence in eighteen countries including over 310 points of purchase among which thirty eight are locations in China. In 2010 Complainant doubled its sales in China and achieved sales of 1 billion Euros. Complainant has a focused advertising campaign in China featuring designers like Karl Lagerfield and film stars such as Chinese actor Shawn Dou.
The Disputed Domain Name was registered on February 8, 2012 and expires on February 8, 2013. Complainant’s Annex 14 to the Complaint demonstrates that the Disputed Domain Name resolves to a “parking” page which displays commercial links to cosmetics and also advises that the Disputed Domain Name is for sale.
Complainant is the owner of numerous trademarks entitled SHU UEMURA which are protected world-wide and in particular in China. The Complainant is the owner of the following:
- International Trademark registration SHU UERMURA No. 1030415 registered on February 1, 2010 and covering good in classes 3 and 44 [both classes relate, inter alia, to skin and hair products];
- International Trademark registration SHU UEMURA No. 1027071 dated as of November 26, 2009 and covering goods in class 3;
- Chinese trademark No. 1347652 dated as of December 28, 2000, renewed and covering goods in class 3;
- Chinese Trademark No. 1369928 dated as of February 28, 2000, renewed and covering goods in class 42;
- Chinese trademarks No. 7607289 dated as of August 10 2009 and covering goods in class 3.
In addition, Complainant and its affiliates own many domain names incorporating the trademark
SHU UEMURA such as <shuuemura.com> registered on March 22, 2003 and <shuuemuraartofhair.com> registered on January 23, 2007.
5. Parties’ Contentions
Complainant argues that the Disputed Domain Name incorporates Complainant’s trademark SHU UERMURA in its entirety. In certain prior WIPO decisions, panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered trademark (AT&T Corp v. William Gormally, WIPO Case No. D2005-0758 and ACCOR v. Lee Dong Youn, WIPO Case No. D2008-0705). The mere omission of the space between “SHU and “UEMURA” is only a meaningless difference (L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585; La Quinta Worldwide, L.L.C v. Telos Chamir, WIPO Case No. D2012-0006; and L’Oreal v. Zhao Ke, WIPO Case No. D2012-0176).
The Disputed Domain Name includes the ccTLD “.co.” rather than “.com”. The addition of such a small difference does not circumvent the likelihood of confusion and should be disregarded for purposes of determining the requisite identical or confusingly similar criteria. Societe Nationale des Chemin de Fer Francais, SNCF v. Mark Tatum, WIPO Case No. DCO2010-0053 and easyGroup IP Licensing Limited v. wang tao, WIPO Case No. DCO2012-0001. Further, these same decisions also held the mere deletion of a letter in an Internet address commonly referred to as “typo-squatting “ also fails to avoid the identical or confusingly similar criteria. Registration of a domain name with a “.co” suffix is mere imitation of a complainant’s official domain name and is a “typo-squatting” practice.
Respondent is not affiliated with Complainant in any way nor has Complainant authorized Respondent to use and register its trademarks or to register any domain name incorporating said marks. Respondent has no prior rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name is not used in connection with a bona fide offering of goods or services.
Complainant attempted to contact Respondent by sending a cease-and-desist letter and a reminder.
Respondent has not replied to either.
Bad faith has been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case. No. D2010-0494, and Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). It is evident that Respondent failed to do any trademark or domain name search or simply do a Google search or he would have become well aware of the rights of Complainant with regard to the Disputed Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095.
A. Identical or Confusingly Similar
The Panel agrees with the points set forth in detail above by Complainant in its Contentions. The Panel sees the actions in registering the Disputed Domain Name as a simple case of “typo-squatting” which if not identical in every way to Complainant’s trademark and registered domain name is obviously confusingly similar thereto. In addition to decisions cited above in Complainant’s Contentions see Lacoste Alligator S.A. v. China Bizseas, WIPO Case No. D2009-0493. Accordingly, the Panel finds that Complainant is deemed to have satisfied paragraph 4(a)(i) of the Policy in that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant has set forth a number of essential points in order for the Panel to reach the conclusion that Respondent had no rights or legitimate interests in registering the Disputed Domain Name. In furtherance of these points, above, the Panel reviewed Annexes 14a and 14b to the Complaint which show that Respondent was not only using the Disputed Domain Name as a parking page sending the Internet user to competitors’ sites (including Revlon and Guerlain), but also a visitor to the site shows the following: “This premium domain is for sale in partnership with Sedo” for $8000 and also that the sale is “without content”. Respondent is no doubt using the Disputed Domain Name to generate revenues via pay-per-click advertising and/or attempting to sell the Disputed Domain Name by placing the ‘for sale’ sign on the parking page. Complainant cites Accor, SoLuxury HMC v. Yunsung, WIPO Case No. D2010-2198, wherein the panel held that “the only use of the Disputed Domain Name made by Respondent has not been in connection with a bona fide offering of goods or services, but rather to generate revenues by pointing the disputed domain name to a parking page displaying pay-per-click links. Respondent thus could not credibly claim that the Disputed Domain Name is intended to be used for any legitimate purpose or interest.” See also Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.
As Complainant properly points out previous panels have held that when a respondent does not respond to a complainant, it can be assumed that this respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269 and AREVA v. St James Robyn Limoges, WIPO Case No. D2010-1017). If Respondent has a right or legitimate interest in the Disputed Domain Name he surely would have responded to the cease and desist letter and reminder from Complainant as well as this Complaint.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative that is, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that respondent lacks rights or a legitimate interest. The Panel accepts that Complainant made a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant makes the point that it is implausible that Respondent was unaware of Complainant when he registered the Disputed Domain Name as recently as February 2012. Respondent has been involved in proceedings previously with the Complainant, one of which included a domain name including <shuuemura>. The SHU UEMURA mark is distributed worldwide and as noted earlier sales are $100 million in China alone. There is bad faith pursuant to the Policy when Respondent “knew or should have known” of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating a mark, in circumstances where Respondent itself had no rights or legitimate interest in the trademark (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763). The notoriety of Complainant’s trademarks has been acknowledged by several panels L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585 and L’Oreal v. Zhao Ke, WIPO Case No. D2012-0179.
The Panel believes from the facts presented that Respondent is simply a cybersquatter using the good will of an internationally highly distinctive well-known brand to make profits and also to try to sell the Disputed Domain Name for a price in excess of the registration costs. In fact Respondent is a serial cybersquatter in that it has been a respondent in a number of cases where decisions have been issued against him (L’Oreal, Laboratoire Garnier et Compagnie, Lancome Parfumes et Beaute et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, China DNS Inc., DomainJet, Inc., Hao Domains Services, WIPO Case No. D2011-1608; M/s Genpact Limited v. Li Ye, WIPO Case No. D2012-0304; Missoni S.p.A. v. Li Ye, WIPO Case No. D 20111-1924). The Panel is advised that Respondent has registered other domain names which use third parties trademarks such as <ralphlaurenwatches.info> and <nikesportswear.info>.
Complainant points out that “.co” is the country code for Columbia and it seems quite certain that Respondent is not actively conducting his business in that nation.
In summary, this Respondent has a history of cybersquatting and “typo-squatting”. While his past actions are not necessarily indicative of his action in this case with the Disputed Domain Name, in fact it turns out that in this case, he again seeks to violate the very principles of the Policy and the Rules.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shuuemura.co> be transferred to the Complainant.
James H. Grossman
Dated: October 5, 2012