WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Partyland
Case No. DTV2011-0001
1. The Parties
Complainant is L’Oréal of Paris, France, represented by Dreyfus & Associés, France.
Respondent is Partyland of Schiedam, Netherlands, represented by Ruud van der Linden of the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <maybelline.tv> was registered by Respondent on May 31, 2010 with Dotster, Inc (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 6, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On the same day, Dotster, Inc. 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 January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. The Response was filed with the Center on January 26, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on February 3, 2011. 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.
Complainant filed an additional submission on February 10, 2011. The additional submission was forwarded to Respondent on February 10, 2011.
4. Factual Background
Complainant is L’Oreál, a French company incorporated under French law as a “SA à conseil d’administration”, with its head office located in Paris, France. Complainant specializes in cosmetics and beauty products and was incorporated in 1909.
5. Parties’ Contentions
Complainant states that since its creation, L’Oreal has become the world leading group in the field of cosmetics, employing nearly 65,000 people in over 130 countries. It has received awards for its performance and was named as one of the world’s most ethical companies by Ethisphere Institute for 2010. It markets over 500 brands and more than 2,000 products in all sectors of the beauty business. In 2009 the L’Oreal group generated Euro 17.5 billion of consolidated sales.
Complainant states that in 2000, it acquired the American cosmetic company Maybelline, a company which was created in 1917 and which introduced the first modern mascara to the American market and made mascara a part of women’s daily lives. The Maybelline brand is available in 129 countries worldwide and sponsors various events such as the Amsterdam International Fashion Week. Complainant asserts that it is the owner of several MAYBELLINE trademark registrations together with several domain names consisting of its trademark MAYBELLINE.
Complainant asserts that the Domain Name is directed to a Sedo parking page, and that when it became aware of its existence it sent a cease and desist letter to Respondent on July 16, 2010 requesting the Domain Name be transferred to Complainant. Complainant contends that Respondent replied advising that they had been buying and selling stocklots of brand name perfumes and cosmetics for 25 years and that they had registered the Domain Name with the intention of selling branded cosmetics/perfumes online. Respondent denied obtaining revenue from the website and then requested branded stocklots/tester products of perfumes and cosmetics from Complainant as a trade against the Domain Name. Complainant asserts that Respondent indicated that if his offer was not acceptable he would be prepared to sell the Domain Name to Complainant.
Complainant advises that on August 17, 2010 it contacted Respondent again to suggest reimbursement of
Euro 50 for the registration costs necessary for the transfer of the Domain Name. Respondent replied advising that the commercial links on the website were arranged by its registrar but that he would be prepared to transfer the Domain Name to Complainant for Euro 45,000 but that the offer was only valid until August 31, 2010.
Complainant further advises that on September 6, 2010 Respondent sent another offer to transfer the Domain Name for Euro 35,000 and also offered to redirect the Domain Name to “www.party.nl” or “www.party.be”.
Complainant states that on September 21, 2010 it contacted Respondent a further time invoking its trademark rights and requesting the transfer of the Domain Name to which Respondent responded with a counterproposal for the sale of the Domain Name for Euro 30,000 or the sale of the trademark PARTY, the domain names <party.nl>, <party.be> for Euro 9million with the transfer of the Domain Name <maybelline.tv>. Complainant submits that these actions prove that Respondent does not have a legitimate use of the Domain Name.
Complainant submits that until recently the Domain Name was still resolving to a Sedo parking page displaying commercial links and the fact that it now resolves to a blank page does not apply a right or legitimate interest to Respondent.
Complainant contends that the Domain Name is identical or at least confusingly similar to its trademark MAYBELLINE and that the Domain Name reproduces its trademark in its entirety with the adjunction of the ccTLD <.tv>. Complainant further contends that the brand Maybelline has existed since 1917 and has been used in connection with a wide variety of products relating to cosmetics around the world. Since its acquisition by Complainant, the brand has become a United States of America and then global first cosmetic brand. Complainant believes that as a consequence the public has learned to perceive the goods and services offered under this mark as being those of Complainant and as a result the public would reasonably assume that a domain name such as this, composed of Complainant’s trademark, is related to or owned by Complainant.
Complainant submits that “maybelline” is a distinctive term which increases the likelihood of confusion between the Domain name and Complainant’s trademark. Complainant also submits that the indication “.tv” is a country code top level domain for Tuvalu, however unofficially it has come to refer to “television” in the context of the Internet and therefore this conveys a generic character to the ccTLD indication.
Complainant states that Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to register and use its MAYBELLINE trademarks or to seek registration of any domain name incorporating said mark. Further, Complainant states that Respondent has no prior rights or legitimate interests in the Domain Name and that the creation of Complainant’s brand and the registration of its trademarks and domain names have long preceded the registration date of the Domain Name.
Complainant suggests that Respondent is not known under the name Maybelline and in none of its responses has it claimed to be known by the Maybelline name or denied knowledge of Complainant and its trademark. Complainant asserts that in the absence of any license or permission from Complainant to use its widely known trademark, no bona fide or legitimate use of the Domain Name could reasonably be claimed by Respondent. It further submits that the only reason why Respondent has registered the Domain Name was to benefit from the reputation of Complainant’s famous trademarks and to free ride on their goodwill and to make a financial profit at least by the sale of the Domain Name.
Complainant claims Respondent knew or must have known of Complainant’s trademarks at the time he registered the Domain Name and that at no time in its various responses did Respondent deny knowledge of the MAYBELLINE mark. Complainant believes Respondent is therefore an actor in the cosmetic field and has registered the Domain Name in bad faith so as to capitalize on Complainant’s long history, reputation and goodwill attached to its mark MAYBELLINE.
Complainant states that whilst Respondent has claimed that the linking of the Domain Name to a parking page of commercial links was due to its registrar, it could have initially deactivated the Domain Name but did not, and in fact Respondent has attempted to obtain an excessive compensation for the transfer of the Domain Name with one such offer having a time limit assigned to it which may be interpreted as an attempt to pressure Complainant to accept its proposal. Complainant states that this is further evidence that Respondent has acquired the Domain Name primarily for the purpose of selling the same to Complainant which is sign of bad faith.
Respondent denies using the Domain Name in bad faith and says that “.tv” is a Tuvalu domain name which can be used worldwide, like for example “.nl” for the Netherlands and “.be” for Belgium. Respondent suggests that the English name for Mabel is Maybelline and makes reference to Elvis Presley singing about Maybelline. Respondent also states that Complainant can use their own <maybelline.com> name for promotion to promote their Maybelline videos and can do this without the need of <maybelline.tv>.
Respondent advises that he has applied for registration of the name Maybelline for future use of the classes, other than cosmetic products and for the same classes as Respondent has applied for registration in Benelux for trademarks for ALEXIA and PARTY.
Respondent states that as well as producing its own perfume lines, it has sold stocklots of cosmetics for the past 25 years including stocklots of Rimmel and Maybelline cosmetics, which were store returns. It has also registered the trademark ALEXIA and the domain name <alexia.mobi> and compares Alexia meaning a Dutch princess from the Dutch queens house and Mabel which he contends is the Dutch name for Maybelline. Respondent advises that <mabel.tv> was not free for registration neither the trademark Mabel. Respondent further states that Complainant has had ample time to register the Domain Name but has not done so and the name was free for registration by anyone.
Respondent also states that since it registered the Domain Name on May 31, 2010 he has not had time to develop the website and in the meantime it is directed to Sedo. Respondent acknowledges that domain names registered at Dotster have content put on their pages but Respondent contends that he does not earn anything from them, and that he has asked Dotster to remove the links but this was not possible as it meant he then had to pay for hosting and develop his own website. Respondent submits that he does not use the Domain Name to gain visitors and there is no income gained from the website. Respondent observes that Complainant has another brand called Garnier and that the website “garnier.tv” is available for registration.
Respondent asserts that Complainant approached him offering to pay USD 50 in exchange for registration costs for the transfer of the Domain Name. Respondent contends that he initially offered to trade stocklots of Complainant’s products and then asked for Euro 30,000 as he had anticipated using the name Maybelline to trade clothing, watches and fashion jewelery to generate a future income.
Respondent also states that he offered to sell another domain name of which he was the registered owner, “www.party.nl”, to Complainant and the Domain Name would then be given to Complainant for free as a package deal.
Respondent contends that he and Complainant are not competitors and he has not registered the Domain Name with the intention of disrupting Complainant’s business or to attract commercial gain and he suggests that a finding of reverse domain name hijacking be found.
C. Complainant’s further submissions
Complainant contends that Respondent's assertions regarding the “.tv” TLD of the Domain Name are erroneous or at least not relevant as UDRP rules do not require Complainant to be the holder of a trademark in the country corresponding to the TLDs of the disputed domain name. Complainant further contends that the fact that it owns other domain names consisting in the mark MAYBELLINE cannot prevent it from defending its rights against Respondent for the Domain Name.
Respondent made reference in his response that the domain name <mabel.tv> was already registered. Complainant submits that this cannot provide Respondent with a legitimate explanation for registering the Domain Name and whilst Respondent may have a legitimate business of production of perfume lines. Complainant further submits that this also cannot provide Respondent with rights or legitimate interests in the Domain Name.
Complainant asserts that the availability of the Domain Name <maybelline.tv> at the time it was registered by Respondent is in no way a sign of legitimate interest on Respondent's part. Complainant notes that Respondent tries to establish a parallel between its registrations for Alexia being a reference to royalty and Maybelline that would refer to Mabel, and contends that references to the mark and domain name Alexia have no connection with the present case and cannot provide Respondent with rights or legitimate interest in the Domain Name or illustrate its good faith. Complaint further submits that the fact that there may be a link between Maybelline and the name Mabel is in no way a legitimate justification for Respondent's registration of the Domain Name.
Complainant observes that Respondent claims he did not have time to build a website, however, it believes that Respondent never intended to create such a website as Respondent had tried to sell the Domain Name to Complainant following Complainant’s first contact with him 7 weeks after the registration of the Domain Name.
Complainant argues that Respondent cannot reasonably pretend that he was trying to develop a legitimate business with the Domain Name as such likelihood of confusion would obviously commercially benefit Respondent due to positive image and goodwill associated to Complainant's trademark MAYBELLINE.
Complainant contends that Respondent indicated to Complainant in its email of July 21, 2010 that he had registered the Domain Name with the purpose of selling branded stocklots cosmetics and perfumes in a webshop and notes that Respondent now claims in his response that he expects to make business through trading clothing, watches and fashion jewelery under the name Maybelline which would provide him with profit in excess of Euro 30,000 for the coming year, yet this project was not mentioned to Complainant prior to the complaint being filed. Complainant further contends that Respondent’s project does not appear to have been given much thought about the name if only a month after buying the Domain Name Respondent was attempting to sell it to Complainant at a price largely exceeding the registration costs of the Domain Name.
Complainant contends that this project is still linked to the beauty business and therefore cannot provide Respondent with a right or legitimate interest in the Domain Name and despite Respondent claiming to be a small business and not being a competitor of Complainant, Complainant argues that Respondent is an actor of the cosmetic field and the use of such a famous name by it will inevitable create a likelihood of confusion for Internet users despite the size of Respondent's business.
Complainant submits that Respondent’s offer for the sale of the Domain Name is disproportionate with regards to the actual costs exposed by Respondent for the Domain Name.
Complainant submits that after filing and notification of the Complaint, Respondent has filed a Benelux trademark application for MAYBELLINE yet has provided no evidence as to use of that mark, and it further submits that the mere fact that Respondent now owns a trademark application for MAYBELLINE does not provide Respondent with good faith or legitimate interest in the Domain Name.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has registered and uses the MAYBELLINE trademark together with several domain names consisting of its trademark MAYBELLINE in relation to cosmetics.
Complainant purchased the American cosmetic company Maybelline in 2000 and thereby acquired the reputation and goodwill that company had in cosmetic products dating back to its early introduction of mascara to the American market. Complainant asserts that the Maybelline brand is today available in 129 countries around the world. This is not disputed by Respondent.
It is quite clear that the Domain Name serves to identify and distinguish Complainant. That is, notwithstanding the addition of the non-distinctive “.tv”, notwithstanding that it is at the same time a country code top level domain for Tuvalu. It is equally clear that Complainant has protectable rights in the MAYBELLINE trademark and that the Domain Name is either identical or confusingly similar to the said trademark.
Accordingly, the Panel finds that the ground is made out.
B. Rights or Legitimate Interests
Respondent puts forward two principal bases to justify its registration and use of the Domain Name. Firstly, it asserts that it has been producing its own perfume lines and for a number of years sold stocklots of Rimmel and Maybelline cosmetics, which were store returns. On this basis Respondent argues that it is a legitimate operator.
Secondly, Respondent suggests that the English name for Mabel is Maybelline and reliance is placed on the fact that Elvis Presley sang about Maybelline. To further illustrate the point, Respondent states that he has also registered the trademark ALEXIA - noting that the domain name <alexia.mobi> derives from or relates to Alexia, meaning a Dutch princess from the Dutch queens house. Accordingly, it is contended that Mabel is the Dutch name for Maybelline.
It is immediately apparent that there is a tension between these two propositions. If Respondent is entitled to make legitimate use of the Domain Name then, so be it. However, the suggestion that the Domain Name should be allowable because Elvis Presley happened to sing about Maybelline in one of his songs or because Mabel is the Dutch name for Maybelline, hardly seems to be relevant. Indeed, it is reasonable to infer that these purported explanations are concocted to give legitimacy to the Domain Name and to the extent that these submissions are designed to explain or justify Respondent's actions they fail to do so.
Complainant argues that Respondent cannot establish that it has conducted a legitimate business or is trying to do so with the Domain Name as confusion with the well-known trademark MAYBELLINE would be likely and it is not difficult to envisage how the likelihood of confusion would commercially benefit Respondent due to positive image and goodwill associated to Complainant's trademark MAYBELLINE. The Panel accepts this argument.
It is common ground that Respondent was prepared to sell the Domain Name to Complainant for reasonably significant monetary sums. Complainant submits that these actions prove that Respondent does not have a legitimate use of the Domain Name. There is again merit in that submission.
In the Panel’s view, the public has the right to not be misled about who they are dealing with. They are entitled to know, upfront, whether they are dealing with or purchasing cosmetic products, (including Maybelline branded products) from a legitimate and authorised source. The Domain Name in the hands of Respondent is likely to deliver a quite different message.
On this basis the Panel finds that the ground is made out.
C. Registered and Used in Bad Faith
A finding of bad faith may be made when Respondent knew or should have known of the registration and use of the relevant trademark prior to registering the Domain Name. In the present case it is not difficult to infer that Respondent either actually knew or ought to have known about Complainant's rights in its MAYBELLINE trademark.
Given the findings above that the Domain Name is either identical or confusingly similar to Complainant’s MAYBELLINE trademark and drawing the inference that Respondent had the requisite knowledge, the Panel finds in light of the present record, without any real difficulty, that the Domain Name was registered and is being used in bad faith.
Again the Panel finds the ground is made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that:
(i) The Domain Name is identical or confusingly similar to Complainant’s MAYBELLINE trademark; and
(ii) Respondent has no rights or legitimate interests in the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith;
and the Panel orders that the Domain Name <maybelline.tv> be transferred to Complainant.
Clive L. Elliott
Dated: February 18, 2011