WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Daniel Emilio Bengtson
Case No. D2017-0719
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Daniel Emilio Bengtson of Buenos Aires, Argentina, self-represented.
2. The Domain Name and Registrar
The disputed domain name <loreal1.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2017, 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 April 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. The Response was filed with the Center on May 16, 2017. Taking into account the Respondent's Response, the Center sent an email to the Parties inviting the Complainant to request a suspension of the proceeding to reach a settlement agreement between the Parties. The Complainant requested by email the suspension of the proceeding on May 18, 2017. The Center notified to the Parties the suspension of the proceeding on May 19, 2017. The Complainant requested by email the reinstitution of the proceeding on June 5, 2017. The Center notified the Parties the reinstitution of the proceeding on June 7, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 20, 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 beauty and cosmetics.
The Complainant is the owner of several trademark registrations amongst which are the following:
- Argentinean Trademark Registration No. 1.618.597 for L´ORÉAL, registered on October 14, 1996 and renewed under No. 2.166.035, in class 03;
- International Trademark Registration No. 184970 for L´ORÉAL, registered on May 23, 1955 and successively renewed in classes 03 and 05.
The disputed domain name is <loreal1.com> and was registered on August 24, 2011. The disputed domain name does not resolve to an active webpage.
5. Parties' Contentions
The Complainant asserts that it is the leading company and one of the world's largest groups in the cosmetic industry, being present in over 130 countries, including Argentina (since the 1940s) where the Respondent is located.
The L´ORÉAL trademark enjoys, according to the Complainant, strong reputation is extremely well-known, as recognized in previous UDRP decisions that have considered it to be "well-known" or "famous".
As to the disputed domain name the Complainant asserts that it is identical or at least confusingly similar therewith, given that the absence of the apostrophe and of the accent on the letter "e" are irrelevant typographic differences which do not have an impact in the trademark pronunciation. Furthermore, the addition of the numerical suffix "1" is insufficient to avoid any likelihood of confusion, not impacting the overall impression of the disputed domain name which is dominated by the Complainant's trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has no prior rights or interests in the disputed domain name;
(ii) the Respondent has not been commonly known by the disputed domain name;
(iii) the Respondent is not affiliated with the Complainant, nor authorized or licensed to use the Complainant's trademark
(iv) given that there is no use of the disputed domain name in connection with a bona fide offering of goods and services, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name;
(v) the Respondent holds at least other 33 domain names which reproduce famous trademarks followed by the numerical suffix "1" such as <cocacola1.com> and <airfrance1.com>, also having been named a Respondent in a past UDRP decision (Allianz SE v. Daniel Bengtson, WIPO Case No. D2013-1328) what further corroborate with a lack of legitimate interests or rights in the disputed domain name.
Moreover, the Complainant contends that the registration of the disputed domain name was done clearly in bad faith given that the fame and reputation of the L´ORÉAL trademark in Argentina and internationally well before the registration date of the disputed domain name, so much so that the Respondent could not simply be unaware of it. Furthermore, the disputed domain name has been passively held, given that it does not resolve to an active webpage, what has already been found as an indication of bad faith use of domain names that consist of well-known trademarks. Lastly, the fact that the Respondent owns dozens of other domain names related to third parties' well-known trademarks is a further indication of his bad faith in relation to the disputed domain name.
In his Reply, the Respondent recognizes that the disputed domain name is inactive and states that it has never been used, nor it has ever been for sale or used in commerce, being it impossible for the Complainant to prove bad faith. At the same time, the Respondent consented to the remedy requested by the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has established rights in the L´ORÉAL famous trademark, duly registered in various jurisdictions.
The Panel finds that the disputed domain name <loreal1.com> merely reproduces the Complainant's mark with the addition of a numeric suffix which is insufficient to avoid any likelihood of confusion, not impacting the overall impression of the disputed domain name which is dominated by the Complainant's strong trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent's rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent in his brief Response merely stated that bad faith could not be found in view of the inactivity of the disputed domain name. He has not taken that opportunity to provide any evidence of actual or contemplated good-faith use of the disputed domain name, as well as any explanation to what lead him to register the disputed domain name and his portfolio comprising of domain names which incorporate other well-known trademarks. Considering the evidence and statements submitted by the Complainant the Panel undertakes such reply as a further indication of the Respondent's lack of rights or legitimate interests in the disputed domain name.
In that sense, the Complainant indeed states that the Respondent is not affiliated with the Complainant, nor is he authorized or licensed to use the Complainant's trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain name took place (as the Respondent expressly recognizes) which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in holding 33 domain names that reproduce in their entirety well-known trademarks followed by the numerical suffix "1" such as <cocacola1.com>, <airfrance1.com>, and the disputed domain name, what further corroborate with the finding of lack of rights or legitimate interests in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring them to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
Past UDRP panels have already dealt with the question of whether the "passive holding" of a domain name could constitute bad faith. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("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 the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Complainant's trademark is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(iii) the Respondent appears to have engaged in a pattern of registering domain names that incorporate third parties well-known trademarks;
(iv) the Respondent appears to have provided a false or inexistent address; and, lastly,
(v) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
For the reasons stated above, the Respondent's conduct amounts, in this Panel's view, to bad faith registration and use of the disputed domain name.
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 <loreal1.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 4, 2017