WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Hoang lan / Whois Privacy Protection Service, Inc.
Case No. D2016-0917
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Hoang Ian of Ho Chi Minh, Viet Nam / Whois Privacy Protection Service, Inc., Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <kemloreal.com> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2016 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 May 19, 2016.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 14, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on June 23, 2016. 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 specializes in the field of cosmetics and beauty products. It was established in 1909 and is, today, one of the world's largest groups in the cosmetics business including products such as hair colour, styling aids, cleansers and fragrances. It has a presence in over 140 countries with over 82,900 employees.
The Complainant's Vietnamese branch was established in mid-2007. The Complainant promotes its products to the Vietnamese market via its websites at "www.loreal.vn" and "www.lorealparis.com.vn".
The Complainant's L'OREAL trade mark has been registered in many countries around the world. Amongst others, the Complainant has an international registration No. 184970 dated May 23, 1955 which includes a designation of Vietnam in respect of goods in Classes 3 and 5.
The Complainant also operates the following domain names reflecting the L'OREAL trade mark: <loreal.com> registered on October 24, 1997; and <loreal.vn> registered on June 5, 2006.
The disputed domain name was registered on October 13, 2015 and resolved to a website in Vietnamese which offers for sale the Complainant's products. The website currently resolves to an inactive page.
The Complainant sent a cease and desist letter to the Respondent's privacy shield service on March 10, 2016, requesting the latter to communicate the Registrant's identity and contact details, to cease the use of the disputed domain name, and to transfer it to the Complainant. On March 18, 2016, the Respondent's privacy shield service provided the Respondent's email contact. The Complainant sent an email directly to the Respondent on March 21, 2016. Despite reminders sent, no response was received from the Respondent.
5. Parties' Contentions
1. The disputed domain name is confusingly similar to the Complainant's L'OREAL trade mark since it reproduces the Complainant's famous trade mark in its entirety. The Complainant's L'OREAL trade mark has been considered to be "well known" or "famous" in earlier decisions under the UDRP (see L'Oreal v Noorinet, WIPO Case No. D2015-0755; L'Oreal v. Vitaly P Pak, WIPO Case No. D2013-0291).
The disputed domain name differs from the Complainant's trade mark only by the addition of the generic term "kem" which means "cream" in Vietnamese. This term increases the likelihood of confusion since it is associated with the Complainant's line of products. Further, the absence of an apostrophe between the letter "L" and the letter "O" in the disputed domain name does not have any impact on the likelihood of confusion with the Complainant's trade mark.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no prior rights or legitimate interests in the dispute domain name since the Complainant's L'OREAL trade mark was registered years before the disputed domain name was registered. The disputed domain name is so similar to the Complainant's L'OREAL trade mark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the use of the disputed domain name. Further, the Respondent is not commonly known by the name "L'Oreal", in any way affiliated with the Complainant, nor authorized or licensed to use the L'OREAL trade mark, or to seek to register any domain name incorporating the said trade mark.
The Respondent also has not demonstrated any use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The indication of the Complainant's products and logo on the Respondent's website to which the disputed domain name resolves, leads to a situation whereby Internet users are likely to wrongly believe that the Respondent's website is an official website of the Complainant. Such use of the disputed domain name does not represent use in connection with a bona fide offering of goods and services.
The Respondent is making a nonlegitimate use of the disputed domain name, with intent for commercial gain to misleadingly divert consumers from the Complainant's official website. It is also likely that the Respondent is using the website to sell counterfeit items that could be hazardous to people's health.
3. The disputed domain name was registered and is being used in bad faith. It is not plausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. L'OREAL is a well-known trade mark throughout the world including in Vietnam. Moreover, the Respondent's reproduction of the L'OREAL trade mark in its entirety in the disputed domain name and combination with the generic Vietnamese word "kem" which makes direct reference to the Complainant's field of activity, clearly proves that the Respondent was aware of the Complainant's trade mark. Bad faith has been found in circumstances where a domain name is so obviously connected with a well-known trade mark that its use by someone with no connection to the trade mark suggests opportunistic bad faith.
The registration of the disputed domain name through a privacy shield service to hide the identity and contact details of the Respondent is in itself an indication of registration in bad faith. In any event, the Respondent did not respond to the Complainant's various emails.
The manner of appearance of the Respondent's website also indicate bad faith use. The said website has been made by the Respondent to look like the official website of the Complainant. Such use of the disputed domain name was not authorized by the Complainant and demonstrates the Respondent's intention to abusively benefit from the Complainant's reputation and from its L'OREAL trade mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established it has trademark rights in L'OREAL, through its registrations and long and extensive prior use.
The Panel agrees that the disputed domain name is confusingly similar to the Complainant's L'OREAL trade mark since the Complainant's trade mark is reproduced in its entirety therein, and the additional term "kem" (which means "cream" in Vietnamese) is generic in nature and does not serve to remove the confusing similarity to the Complainant's L'OREAL trade mark. In fact, the addition of the word "kem" serves, in the context of the intended Vietnamese market of the Respondent's website, to increase the confusing similarity with the Complainant's L'OREAL trade mark.
The absence of an apostrophe between the letter "L" and the letter "O" in the disputed domain name and the addition of the ".com" element do not have any impact on the likelihood of confusion with the Complainant's trade mark. The addition of the ".com" Top-Level Domain is technically required. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has therefore established that the disputed domain name is confusingly similar to the mark L'OREAL in which it has rights.
Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, for the purposes of paragraph 4(a)(ii) of the Policy that:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name … :
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] 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] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a 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."
The Panel agrees that L'OREAL is a long-established and famous trade mark. This view is consistent with that expressed by panelists in earlier UDRP decisions involving the L'OREAL trade mark (see L'Oreal v Noorinet and L'Oreal v. Vitaly P Pak, supra; L'Oreal v. Wen Tao, WIPO Case No. D2012-0521; and L'Oreal v. Harry Huston, WIPO Case No. D2008-1249). The Panel is also satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Consequently, the Respondent has the burden of showing evidence demonstrating his rights or legitimate interests in the disputed domain name (see paragraph 2.1 of the WIPO Overview 2.0). However, the Respondent failed to respond and to submit any circumstances in the nature enumerated above (per paragraph 4(c) of the Policy) or any other evidence from which the Panel may find that he has rights or legitimate interests in the disputed domain name. The Panel draws a negative inference from the Respondent's silence in the proceeding and failure to respond to the Complainant's communications by email regarding its request for the disputed domain name to be transferred.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant and its L'OREAL trade mark are well known across the world. The reasonable inference that therefore arises (and which has not been rebutted by the Respondent) is that the Respondent must have been aware of the Complainant and its said trade mark when he registered the disputed domain name. The fact that the Complainant's L'OREAL products (whether they be genuine or counterfeit) appear for sale on the Respondent's website which shows the Complainant's own websites shows the preceding statement to be true. The incorporation of a well-known brand or trade mark by someone with no connection with that name is evidence of bad faith where the domain name is used to intentionally attract, for commercial gain, Internet users to the person'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 the website or location or of a product or service on the said person's website or location. What the Respondent has sought to do, based on the circumstances presented in the evidence, is opportunistic bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <kemloreal.com> be transferred to the Complainant.
Date: July 4 2016