WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Bradley Harris, JAB Marketing PR / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2016-1738
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Bradley Harris, JAB Marketing PR of Wendouree, Australia, self-represented / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <lorealcastingshampoo.com> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2016. On August 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2016. The Respondent submitted two email communications on September 5, 2016, and September 13, 2016. On September 21, 2016, the Center informed the Parties by email that Panel Appointment would commence.
The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on September 26, 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 is the famous French manufacturer of cosmetic and beauty products. Its trade name and main trademark L’OREAL is well-known around the world for the production and sale of cosmetic products. In Australia, the Complainant is using two dedicated web sites under the URL “www.loreal.com.au” and “www.lorealparis.com.au”.
The Complainant owns the L’OREAL and CASTING trademarks, registered internationally, including Australia (L’OREAL trademark No. 191519 registered in Australia in class 3 on November 23, 1964; CASTING trademark No. 489781 registered in Australia in class 3 on June 27, 1988).
Among the many cosmetic products sold by the Complainant, are shampoos and hair crèmes under the trademarks L’OREAL and CASTING.
The disputed domain name resolves to a website titled “Loreal Casting Product Reviews” with several “Recent Posts” and links to the Complainant’s and competitors’ products for sale on Amazon.com.
5. Parties’ Contentions
The Complainant alleges that under the disputed domain name, the Respondent is offering L’OREAL CASTING products as well as products of third-party competitors of the Complainant.
After the Complainant sent a cease and desist notice to the Respondent on October 2, 2015, the Respondent replied that it was not selling products of the Complainant but only commissioned by Amazon for reviewing L’Oréal Cosmetics and actually remunerated at the rate of 6% a product on average. It went further offering its services as “an affiliate partner” of the Complainant or to sell the disputed domain name for USD 3,000. The Complainant rejected both offers from the Respondent on February 9, 2016, and insisted on the immediate transfer of the disputed domain name.
The Complainant submits that the disputed domain name is identical or at least substantially similar to its trademarks L’OREAL and CASTING because it fully encapsulates both trademarks. The absence of apostrophe in the reproduction of the L’OREAL trademark in the disputed domain name constitutes only a very small variation from the registered trademark. According to the Complainant, the mere addition of a generic term to the said trademarks does not reduce the likelihood of confusion. To the contrary, the Complainant thinks that in the context of the products actually manufactured and sold by L’Oréal, the descriptive addition “shampoo” increases the risk of confusion because consumers might be led to believe that this is an official L’Oréal web site providing information as to its products.
According to Complainant, the Respondent has never been authorized to use the trademarks L’OREAL and CASTING which by far predate the registration of the disputed domain name on June 12, 2015. As a consequence, the Respondent could not claim any legitimate interest or right to use the said trademarks. Worse, the web site operated under the disputed domain name leads consumers to believe that it is endorsed by the Complainant. The use of the Complainant’s trademarks cannot be legitimate because the disputed domain name web site shows that the Respondent offers to sell L’Oréal and competing products. The alleged affiliate program with Amazon and the payment of commissions to the Respondent are further evidence of the lack of bona fide offering of services or products.
As far as bad faith is concerned, the Complainant deems the disputed domain name to have been registered in bad faith because it is impossible that the Respondent was unaware of the Complainant’s trademark at the time of registration, an opinion which is supported by the presence of the entire L’OREAL trademark in the disputed domain name. Bad faith also results from the offer of competing third-party products on the web site. The Complainant believes that the Respondent chose to register a domain name containing its trade mark to take advantage of its reputation and fame. The offer of the Respondent to transfer the disputed domain name in exchange for the payment of USD 3,000 is further evidence of its bad faith as such amount is in excess of its out-of-pocket expenses.
Henceforth, the Complainant is seeking the transfer of the disputed domain name.
Upon receipt of the Notification of Complaint, the Respondent sent two emails to the Center. In the first one dated September 5, 2016, the Respondent was thanking the Center for the notification, adding:
“My site clearly indicates it is a review site and I do not believe I am in breach of any Trademarks (sic) with Loreal (sic). Feel free to contact me via this email to resolve this issue”.
After both parties rejected an offer from the Center to suspend the proceedings, the Respondent added on September 13, 2016:
“However I would like it noted that Loreal (sic) would not accept my offer offer (sic) $5000.00 USD for the Url based on the time I have spent building the site. I do believe this to be fair and reasonable.
L’Oreal hold a lot of word and device marks, but they do not hold what you would call a series mark, example “lorealcastingshampoo” L’Oreal do not hold many marks under the class of 35, which is what I am doing by reviewing and advertising their product, then directing consumers to purchase the product from another website (amazon) I am not directly selling any product of Loreal at all.
To Clarify Class 35
Advertising; business management; business administration; office functions.
I understand that L’Oreal are trying to induce an argument, stating that I am using the word L’Oreal in the domain name, associated with Shampoo. The argument I put forward is that Loreal has “no series mark” and no mark under the class of 35 associated with “lorealcastingshampoo”. Hence why I believe No breach is present to their Trademark. I am using the word as descriptive basis describing the L’Oreal product than reviewing the named product.
If the above is found to be not correct then I am more than happy to handover my domain to Loreal”.
The Respondent did not file any other Response within the deadline set forth by the Center.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief.
These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
Although the Respondent failed to provide a full response using the Model Response provided by the Center, on its web site “www.wipo.int/amc/en/domains/respondent” and in point 5 of its Notification of Complaint and Commencement of Administrative Proceedings dated August 31, 2016, it sent the two above described emails to the Center. Because these emails were sent before the expiry of the deadline for filing a Response, the Panel finds that paragraph 14 of the Rules is not applicable. Moreover, the purpose of the Policy and the Rules is not to secure all interests of Respondents but to ensure a fair process in which each party has an equal opportunity to present its case and discuss the arguments of the other party. A party, and presently the Respondent, must not reply on all counts described in paragraph 5 of the Rules. The Respondent generally remains at liberty to take position on certain points raised by the Complainant only and to address the allegations of the Complainant as it wishes. In the present case, the Panel finds that although the Respondent provided a short reply, it nevertheless raised and expressed the arguments it felt were relevant and represented its position.
Therefore, the Panel will decide the Complaint on the basis of the Complaint and its attachments and the emails sent by the Respondent, as provided in paragraph 15 of the Rules.
A. Identical or Confusingly Similar
There is no doubt here that the Complainant is the owner of the internationally famous L’OREAL trademark and the CASTING trademark. The question is whether the combination of these two trademarks with an additional descriptive term “shampoo” in the disputed domain name is confusingly similar in the meaning of paragraph 4(a)(i) of the Policy.
Consistently through the years, UDRP panels have found that the addition of descriptive terms to a trademark in a domain name is unlikely to avoid any risk of confusion (see all cases cited in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 and in particular, Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434). Here, the two trademarks L’OREAL and CASTING are recognizable in the disputed domain name. The mere fact that the L’OREAL trademark in the disputed domain name is written without apostrophe is a very minor departure which does not contribute to lessening or to eliminate the resulting confusion. The only distinctive elements in the disputed domain name are and remain, despite the descriptive addition, “loreal” and “casting”.
The Panel certainly understands the Respondent’s first argument under which a confusion would be unlikely because the Complainant is in the business of manufacturing and selling goods under trademarks registered for these activities, whilst the Respondent is only providing a service for which the Complainant did not register any trademark (Class 35 for advertising, business management, business administration and office functions). The problem is that within a specific generic Top-Level Domain (“gTLD”), the Internet and the domain name system do not leave any scope for the application of the specialty principle under which such argument might be relevant. Once a domain name composed of or including a trademark is registered, there is no room for another identical domain name in relation to other goods or services. The full specter of possible goods or services to be rendered under the domain name is immediately exhausted.
Moreover and more directly to the point, the Respondent’s argument is actually incorrect in the sense that the service it allegedly provides is not unrelated to the goods manufactured and sold by the Complainant under its trademarks L’OREAL and CASTING. To the contrary, the alleged service, the “review”, directly pertains to the goods produced and sold by the Complainant. The argument raised by the Respondent about the absence of similarity between the service allegedly provided on the one hand and the goods provided on the other hand is thus irrelevant. In any event, UDRP panels have found that the goods and/or services for which it is registered are irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP (see WIPO Overview 2.0, paragraph 1.1).
The second argument raised by the Respondent about series trademarks is less understandable. Series trademarks are different trademarks registered by one party with one identical element in common, usually the most distinctive element. To obtain protection under the UDRP, the holder of a famous trademark does not need to register many combinations of its trademark with descriptive or even non-descriptive terms, because the UDRP is not only protecting against domain names that are identical to trademarks but against domain names that are confusingly similar to trademarks. Only a protection against the identical domain names could potentially require the registration of series trademarks as understood by the Respondent. As discussed above it is usually enough that the trademark be recognizable in the disputed domain name to reach a conclusion that there is a risk of confusion a conclusion the Panel can easily reach here considering the full inclusion of the Complainant’s trademarks in the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
According to WIPO Overview 2.0, paragraph 2.1, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.
That prima facie case is made here. The Complainant clearly alleged that the Respondent had never been authorized to use any of the two trademarks used in the disputed domain name, an allegation not contested by the Respondent in its responses.
One might also consider that this is somehow confirmed by the misspelling of the Complainant’s main trademark on the web site, “Loreal” instead of L'ORÉAL. Such type of misspelling is hardly compatible with any overseen use of the corresponding trademark by the owner.
The main argument of the Respondent consists in saying that its web site is only a “review” site and therefore a legitimate use of the disputed domain name. The Panel does not exclude that, depending on the circumstances, a mere review site, the purpose and content of which would indeed consist in discussing the qualities and relative advantages of branded products, might be considered as legitimate use of a domain name under paragraph 4(c)(iii) of the Policy. The problem is that this argument here is largely contradicted by the facts. The web site of the Respondent actually contains little review of cosmetic products, but allows consumers to order and pay for cosmetic and beauty products. Besides a few “Recent Posts” containing tips about hair color and hair treatment, the first page of the Respondent’s web site displays after the traditional “home” and “about us” icons, three other icons, “Garnier store”, “Kolstone store” and “Loreal store”, unmistakably labelled to indicate an opportunity to purchase the corresponding cosmetics. When clicking any of these icons, products are indeed displayed matching the corresponding brand, with definite price, products which may be ordered using a system said to be “powered by Amazon”.
In other words, the “review” only argument presented by the Respondent is unfounded.
Should the web site of the Respondent be considered as a commercial reselling site, the Panel will now see whether that activity could be considered as a bona fide offering of goods in the meaning of paragraph 4(c)(i) of the Policy.
Oki Data Americas Inc v. ASD, Inc., WIPO Case No. D2001-0903 set forth four requirements for a legitimate commercial offering of goods or services:
- The Respondent must actually be offering the goods at issue;
- The Respondent must offer only the goods at issue and no competing products;
- The site must accurately disclose the relationship with the trademark owner;
- The Respondent must not try to corner the market.
Clearly the way the disputed domain name is used here does not meet the second and third requirements. The Respondent is not only offering L’ORÉAL products but competing third-party products. Second, the web site of the Respondent never clarifies its relationship with the Complainant. The title of the web site “Loreal Casting Product Reviews” tends to indicate that it is not the web site of an authorized distributor or dealer of the Complainant, whilst the actual offering of goods bearing the L’OREAL and CASTING trademarks could be seen as an indication that the Respondent is an authorized reseller. But that last inference is in fact contradicted by the offering of competing goods. Such an ambiguity is by no means compatible with the requirement to accurately disclose the relationship with the trademark owner.
The Panel thus finds that the Respondent could not rebut the prima facie evidence brought by the Complainant and therefore has no rights or legitimate interests in use of the disputed domain name.
C. Registered and Used in Bad Faith
From the above, it is clear that the Respondent does not contest having used the trademarks of the Complainant in the disputed domain name. The above also confirms that none of the rights or legitimate interests claimed by the Respondent are demonstrated. In the exchange of correspondence between the Respondent and the Complainant preceding the filing of the Complaint, the Respondent also recognized that it was receiving a commission of 6% in relation to the products sold by means of its web site. Although it did not clearly say how the commission was calculated, whether it was only on views or on sales actually completed, the Respondent recognized that it is remunerated for the services rendered under the disputed domain name.
The Panel therefore finds that the Respondent has registered the disputed domain name in bad faith and has used the disputed domain name to attract Internet users for commercial gains on its web site by creating a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement, in the meaning of paragraph 4(b)(iv) of the Policy, and thus acted in bad faith.
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 <lorealcastingshampoo.com> be transferred to the Complainant.
Pierre Olivier Kobel
Date: September 28, 2016