WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal and L’Oréal USA Creative v. DomainJet, Inc., Jack Sun

Case No. D2012-0012

1. The Parties

Complainants are L’Oréal of Paris, France and L’Oréal USA Creative of New York, United States of America, represented by Dreyfus & Associés, France.

Respondent is DomainJet, Inc., Jack Sun of California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <maybelline-newyork.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2012. On January 5, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date eNom 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 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2012.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 16, 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

Complainants L’Oréal of Paris and L’Oréal USA Creative are part of an international group specializing in cosmetics and beauty products. Complainants own registrations around the world for the mark MAYBELLINE, including International Registration No. 959892 (registered 2008); Chinese Registration No. 1616379 (registered 2001); and the following registrations in the United States, where Respondent lists its address of record: United States Registration No. 0702694 (registered 1960); United States Registration No. 1065615 (registered 1977); United States Registration No. 1096418 (registered 1978); United States Registration No. 2604568 (registered 2002); and United States Registration No. 2564526 (registered 2002). Complainants also own registrations for the mark MAYBELLINE NEW YORK, including International Registration No. 680608 (registered 1997).

Complainants own the registration for several domain names that include their registered MAYBELLINE mark, including <maybellinenewyork.com> (registered April 24, 2003), <maybelline.fr> (registered June 21, 2000), and <maybellinechina.com> (registered February 22, 2001).

The disputed domain name <maybelline-newyork.com> was registered on March 20, 2010. Respondent has no affiliation with Complainants. Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainants or Complainants’ services. These include links for cosmetics offered by competitors of Complainants. Complainants have not authorized these activities by Respondent, nor any use of their trademarks thereby.

5. Parties’ Contentions

A. Complainants

Complainants contend that (i) <maybelline-newyork.com> is identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not file a reply to Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <maybelline-newyork.com> is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainants’ registered trademark MAYBELLINE, and merely adds the geographically descriptive term “New York.” Complainants also own a registered trademark for MAYBELLINE NEW YORK. As such, this is especially confusing.

The Panel further finds that the geographically descriptive words would be perceived by Internet users as descriptive of a website where they could find information about products or services regarding Complainants’ Maybelline products in New York, or about Complainants’ Maybelline New York products. This is especially so since Complainants own marks and domain names including geographically descriptive terms, such as <maybellinenewyork.com>. The addition of the hyphen in the disputed domain name is not of source-indicating value.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, L’Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231 (transferring <loreealchina.org> and <maybellinechina.org>); L’Oréal v. Chenxiansheng, WIPO Case No. D2009-0242 (transferring <lorealfrance.com>); Inter Ikea v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).

This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent did not submit a reply to the Complaint, however and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainants or Complainants’ services.

Therefore, this Panel finds that Complainants have provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has a parked webpage at the URL associated with the disputed domain name, with sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Furthermore, Complainants have evidenced that Respondent has “registered or [...] acquired the domain name primarily for the purpose of selling [...] for valuable consideration in excess of [...] documented out-of-pocket costs,” in a showing of bad faith as contemplated by paragraph (4)(b)(i) of the Policy. In particular, after receiving a cease and desist letter from Complainants, Respondent responded by offering to sell the disputed domain name for between 500 and 1,000 Euros.

Finally, Respondent has been named as a defendant in several UDRP complaints transferring well-known marks. See Morgan Stanley v. DomainJet, Inc. c/o Jack Sun, NAF Claim No. 1362846 (transferring <morganstanleyaustralia.com>); Missoni S.p.A v. 仲裁域名/DomainJet, Inc. /Jack Sun, WIPO Case No. D2011-1058. The Panel also notes Lazard Strategic Coordination Company LLC and Lazard India Private Limited v. Jack Sun Domain Jet, Inc., India Non Judicial (Nov. 30, 2010). The Panel finds this to be a further indication of Respondent’s bad faith.

Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 <maybelline-newyork.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: February 28, 2012