WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Roche-Posay Laboratoire Pharmaceutique v. WhoisGuard Protected/ Email me, n/a
Case No. D2012-2283
1. The Parties
The Complainant is La Roche-Posay Laboratoire Pharmaceutique of Paris, France, represented by Dreyfus & associés, France.
The Respondents are WhoisGuard Protected of Los Angeles, California, United States of America; and Email me, n/a of Albuquerque, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name <laroche-posay.xxx> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2012. On November 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 26, 2012.
For present purposes, the entities identified as “WhoisGuard Protected” and “Email me, n/a” are the Respondents. These entities may or may not be legal persons but as one or other of them are the recorded registrants of the Domain Name they are subject to these proceedings and bound by the outcome. Reference below to “the Respondents” refers to either or both of these entities as appropriate.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 20, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 3, 2013. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is a French company founded in 1928 to produce dermatological products based upon thermal spring water. Since its creation it has developed and expanded its range of products and carries on business internationally in over 50 countries. It is now part of the L’Oreal cosmetics group. It carries on business by retail sales (via distributors and authorized sellers) and promotes its products via the internet including at websites such as ‘’www.laroche-posay.com, laroche-posay.fr, laroche-posay.co.uk and laroche-posay.de.’’
The Complainant has registered the words “La Roche-Posay” as a trademark in many countries. By way of example reference is made by the Complainant to United States trade mark 787605 for the words LA ROCHE-POSAY registered on July 12 2002.
The Domain Name was registered on December 25, 2011. It is not being used and resolves to a registrar’s holding page.
5. Parties’ Contentions
The Complainant’s contentions are lengthy but can be summarized as follows:
The Domain Name is identical to its trade mark LA ROCHE-POSAY in which it clearly has rights.
The Respondents have no rights or legitimate interests in the term “LA ROCHE-POSAY”. There is no other meaning associated with that term other than in relation to the Complainant.
The Domain Name was registered and is being used in bad faith. In this respect the Complainant relies upon various UDRP decisions that passive holding of a Domain Name which is clearly referable to another party amounts to bad faith.
The Complainant also relies on the fact that the Respondents are clearly not real identities and obscure the identity of whichever actual person decided to effect the registration of the Domain Name.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark LA ROCHE-POSAY. Although no details have been provided as to turnover or sales figures, the filed evidence establishes the Complainant has carried on business internationally under the name LA ROCHE-POSAY for many years and its products have clearly been marketed under that name on an international basis on a substantial scale and are well known. Further, the Complainant has a wide range of registered trade mark rights in the words “LA ROCHE-POSAY”.
The Domain Name is confusingly similar to the LA ROCHE-POSAY trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the omission of the space between “la” and “roche” which is immaterial. It is well established that the “.xxx” suffix is to be ignored in considering this issue.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“LA ROCHE-POSAY” is in substance the Complainant’s name and is a term which has no other meaning save in relation to the Complainant or its products.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Domain Name or to use the LA ROCHE-POSAY trade mark. The Complainant has prior rights in the LA ROCHE-POSAY trade mark which precede the Respondents’ registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the LA ROCHE-POSAY trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the LA ROCHE-POSAY trade mark, and the confusingly similar nature of the Domain Name to the LA ROCHE-POSAY trade mark, and the lack of any explanation from the Respondents as to why they registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes that it is inconceivable that the Respondents selected the Domain Name independently and without knowledge of the Complainant or its products. The Panel finds it impossible to conceive of any use which the Respondents could make of the Domain Name which would be legitimate. Further the Panel notes the Respondents have not filed a Response and hence have not availed themselves of the opportunity to present any case of legitimate use that they might have. The Panel infers that none exists.
The Domain Name resolves to a holding page. The Panel agrees with the Complainant that the line of UDRP decisions going back to Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003, establish that the registration and passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark may constitute registration and use in bad faith.
The consensus of UDRP panelists views on this issue, as published by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) accords with this view. It records that " with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”.
In the present circumstances, the confusingly similar nature of the Domain Names to the Complainant's mark LA ROCHE-POSAY, the highly distinctive nature of the mark in question, and the lack of any explanation from the Respondents as to why they registered the Domain Name leads the Panel to conclude the registration and use was in bad faith.
The Panel also agrees with the Complainant that the Respondents do not appear to be legal entities and obscure the true identity of whoever decided to effect the registration of the Domain Name. This reinforces the Panel’s view that the registration and use was in bad faith.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <laroche-posay.xxx>, be transferred to the Complainant.
Nick J. Gardner
Date: January 13, 2013