WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Xu Guo Xing, Ji Nan Xia Hua Yuan Shang Mao You Xian Gong Si / Shimei Wang
Case No. D2017-0673
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Xu Guo Xing, Ji Nan Xia Hua Yuan Shang Mao You Xian Gong Si / Shimei Wang of Jinan, Shandong, China, self-represented.
2. The Domain Names and Registrars
The disputed domain name <loreal-paris.shop> is registered with Go Canada Domains, Inc.; the disputed domain name <loreal-paris.store> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (collectively or individually referred to as the “Domain Name(s)”).
Go Canada Domains, Inc. and/or Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) will be collectively or individually referred to as the “Registrar(s)”.
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2017. On April 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 4 and 5, 2017, the Registrars respectively transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 19, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On April 19, 2017, the Complainant confirmed its request that English be the language of the proceeding. On April 20, 2017, the Respondent filed at the Center an apparent Response in Chinese and English which however relates to another disputed domain name rather than the Domain Names in the present proceeding. The Respondent did not object to the language request of the Complainant.
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 April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. Having not received further response from the Respondent, the Center notified the Parties that it would proceed to Panel Appointment on May 17, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on May 30, 2017. 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, the Complainant is one of the world’s largest groups in the cosmetic industry. The Company is present in over 130 countries. The Complainant markets more than 30 global beauty brands including L'Oréal Paris and has thousands of products in all sectors of the beauty business: fragrances, cosmetics, haircare, hair colour, skin and body care, men care and skincare devices.
With 50 products sold every second worldwide, L'Oréal Paris offers all types of beauty products from makeup, skin care, hair care, styling and hair colour. L'Oréal Paris is supported by 35 international ambassadors which include celebrities such as Jennifer Lopez, Jane Fonda, Eva Longoria, Julianne Moore, Liya Kebede, Karlie Kloss, Doutzen Kroes and Gong Li.
The Complainant is present all over the world including China where the Respondent is based. It recently celebrated its 20 years in China. The local subsidiary in China was opened in 1997 and since then it has opened production sites and a research centre. In 1996 the actress Gong Li became the first Chinese ambassador of L'Oréal Paris. More recently the Chinese actress Fan Bing Bing and actor Daniel Wu were chosen as ambassadors.
The Chinese market is a particularly fast growing market for the Complainant with double digit growth for more than 10 years. In 2015, it became the Group’s second largest market in sales terms.
The Complainant’s products are sold under the trade marks L’OREAL and L’OREAL PARIS. They have numerous trade mark registrations across the world including the following:
- Chinese Trade Mark Registration L’OREAL No. 148647 filed on September 20, 1979, in class 3;
- Chinese Trade Mark Registration L’OREAL No. 1487385 filed on August 11, 1999 in class 42; and
- Chinese Trade Mark Registration L’OREAL PARIS No. 6665726 filed on April 17, 2008 and registered on March 28, 2010 in class 3.
(collectively and individually referred to as the “Trade Mark(s)”).
The Complainant operates domain names reflecting its trade marks in order to promote its services including the following.
- <loreal.com> created on October 24, 1997;
- <loreal-paris.com> created on August 17, 1996.
The Respondents registered <loreal-paris.store> on September 4, 2016, and <lorealparis.shop> on September 26, 2016. The Domain Name <loreal-paris.store> is inactive whilst <lorealparis.shop> points to a webpage indicating that the website is “coming soon”. On November 30, 2016, the Complainant sent a cease and desist letter to the Respondent requesting that it transfer <loreal-paris.store> to the Complainant. Despite several reminders, the Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names, both of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant is because both the telephone number and email address of the registrants are identical.
The Respondent did not reply to the Complainant’s contentions. It filed a response in relation to the domain name <carlsberg.shop>.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
6.1. Preliminary Procedural Issue — Consolidation of Respondents
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple-respondent cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates one of the Trade Marks in its entirety and incorporates the distinctive element of the other Trade Mark, L’OREAL in its entirety. Both registrants use the same email address and telephone number. They also both provide addresses in Shandong. All of this point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Complainant’s rights in the Trade Marks. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
6.2. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement in connection with the Domain Name <lorealparis.store> is Chinese.
The Complainant submits in paragraph 10 of the Complaint, that the language of the proceeding should be English. The Complainant contends that it is located in France and has no knowledge of Chinese. The Domain Names are in Latin characters and the Top-Level Domains are English terms which suggests that the Respondent has sufficient knowledge of the English language especially since the registration agreement of <lorealparis.shop> is in English. Further, English is the language for international relations. If the documents have to be submitted in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.3. Substantive Issues
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Marks.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself. The trade mark would generally need to be recognizable within the disputed domain name. In this case the Domain Names comprise the Trade Mark L’OREAL PARIS in its entirety or the distinctive element of the Trade Mark L’OREAL with the addition of the geographical term “Paris”. The lack of the apostrophe after “l” does not avoid the confusing similarity since we are still unable to use such a punctuation mark in a domain name string. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that 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. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not affiliated to the Complainant in any way nor has it been authorised by the Complainant to register and use the Domain Names. It is not commonly known by the name “L'Oréal Paris”. It has no independent right to the Domain Names. The registration of domain names which comprise the well known trade mark of another cannot amount to legitimate activity in connection with the Domain Names. The Respondent has also not shown that he is making legitimate noncommercial or fair use of the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well-known Trade Marks when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names. The Complainant is well known through the world including in China where the Respondent is based. The primary significance of the meaning of “L'Oréal” is its reference to the Complainant’s Trade Mark and company name. In the WIPO Overview 3.0, paragraph 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
In addition the Respondent’s email address is on the whois contact of the following domain names that also consist of well known trade marks: <coca-cola.shop>, <adobe.shop>, <fedex.shop>, <fiat.shop>, <forbes.shop>, <gillette.shop>, <mastercard.shop>, <nestle.shop>,<netflix.shop>, linkedin.shop, <americanexpress.shop>, <barclays.shop>, <bnpparibas.shop>,<boeing.shop>, <bridgestone.shop>, <carrefour.shop>, <colgate.shop>, <accor.shop>, <creditsuisse.shop>, <ford.shop>, <redbull.shop>, <skype.shop>, <twitter.shop>, <unilever.shop> and <verizon.shop>. It is highly unlikely that the Respondent has any rights or legitimate interests in these names as well.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in 3.1.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name are also used in bad faith. The Domain Names directs to inactive pages even if one of the Domain Names is connected to a website which says, “coming soon”. WIPO Overview 3.0 states that:
“from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In this case, the Trade Marks are well known, the Respondent failed to respond to the Complainant’s cease and desist letter. It also failed to file a Response. It is implausible that there can be any good faith use to which the domain name may be put. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <loreal-paris.shop> and <loreal-paris.store>, be transferred to the Complainant.
Date: June 18, 2017