WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Navid Zarifpour
Case No. D2014-1735
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Navid Zarifpour of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <maybelline-co.com> is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2014. On October 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2014.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 17, 2014. 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 Complainant is a French industrial group specialized in the field of cosmetics and beauty. Created in 1909 by a French chemist by the same name, the Complainant has recently celebrated its centenary. The Complainant is one of the world’s largest groups in the cosmetics business. Present in over 130 countries with over 77,400 employees, the Complainant creates and distributes products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances. It is present and successful in every continent.
Besides its other products, the Complainant distributes consumer products under various brands among which Maybelline New York. Maybelline New York is one of the world’s leading cosmetic brand available in over 100 countries.
The Complainant has proved that the trademark MAYBELLINE enjoys thorough protection through many registrations worldwide.
The Complainant L’Oréal is inter alia the owner of:
International Trademark Registration MAYBELLINE No. 959892 registered on January 9, 2008 and covering goods in classes 3 and 5;
Community Trademark Registration MAYBELLINE No. 007598031 filed on February 12, 2009 and registered on October 22, 2009 and covering goods in class 3.
Additionally, Complainant owns many domain names composed of the MAYBELLINE trademark, such as:
Maybelline.com.cn registered on December, 9, 1999;
- <maybelline.fr> registered on June 21, 2000;
- <maybellinechina.com> registered on February 22, 2001;
- <maybellineitalia.com> registered on January 6, 2004;
- <maybelline.com.br> registered on October 9, 2012.
The Complainant’s trademark registrations long predate the registration of the disputed domain name.
The disputed domain name <maybelline-co.com> was registered on April 26, 2014. Initially, it resolved to a website displaying Complainant’s trademark and having the appearance of an official website. At present, the disputed domain name directs to an inactive page.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s MAYBELLINE registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established to have rights to the MAYBELLINE trademark. The disputed domain name combines the Complainant’s MAYBELLINE trademark with the suffix “-co”.
This Panel agrees with the Complainant’s assertion that the addition in the disputed domain name of the element “-co” - which is often used as a common abbreviation for Corporation and/or Company - is not sufficient to avoid the confusing similarity of the disputed domain name with the Complainant’s trademark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark MAYBELLINE in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant that has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “Maybelline” or by a similar name. Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering that the Complainant’s trademark is a renowned trademark that has been registered and used for many years and thus long predates the disputed domain name’s registration, and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant’s services and trademarks and deliberately intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e. to divert Internet traffic to the Respondent’s website falls within the example of bad faith set out in 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The fact that the Respondent never replied to the Complainant’s cease and desist letter constitutes further evidence of bad faith registration and use of the disputed domain name. Indeed, due to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy
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-co.com> be transferred to the Complainant.
Date: November 25, 2014