WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Domains By Proxy, LLC, Registration Private, DomainsByProxy.com / Robert Bowman
Case No. D2017-1387
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Domains By Proxy, LLC, Registration Private, DomainsByProxy.com of Scottsdale, Arizona, United States of America ("United States" or "US") / Robert Bowman of West Bridgewater, Massachusetts, United States.
2. The Domain Name and Registrar
The disputed domain name <loreal-global.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2017. On July 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 2017, 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 July 21, 2017 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 July 24, 2017.
The Center verified that the Complaint together with 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 July 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2017.
The Center appointed John Swinson as the sole panelist in this matter on September 1, 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 international cosmetics and beauty company. It is one of the world's largest cosmetics groups which markets more than 30 brands in over 130 countries.
The Complainant owns the US trade mark registrations Nos. 72010934 and 86705120 for L'OREAL as well as European Community trade mark no. 767285 for L'OREAL (together the "Trade Mark"). The first of these registrations occurred on May 13, 1958.
The Complainant also owns and uses a number of domain names which incorporate the Trade Mark, including <loreal.com>.
The Disputed Domain Name was registered on April 7, 2017. The Disputed Domain Name resolves to an error page. The Respondent has used the Disputed Domain Name to create a fake email address sent in the name of the current L'Oréal CEO and Chairman. This email address has been used to send fraudulent emails to senior members of the Complainant's business asking them to perform business tasks.
The Respondent did not file a Response. Consequently, little information is known about the Respondent.
5. Parties' Contentions
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Trade Mark given that it substantially reproduces the Complainant's Trade Mark in entirety.
There are minor differences between the Trade Mark and the Disputed Domain Name which the Complainant addresses and argues do little to distinguish the Trade Mark from the Disputed Domain Name.
The Complainant submits that the absence of the apostrophe between the letter "l" and the letter "o" as well as absence of the accent on the letter "e" in the Disputed Domain Name do not have any impact on the likelihood of confusion.
In addition to the Trade Mark, the Disputed Domain Name includes a hyphen which is followed by the generic term "global" and the generic Top-Level Domain ("gTLD") ".com". The Complainant refers to a number of cases which demonstrate that none of these factors detract from the confusingly similar nature of the Disputed Domain Name.
Rights or legitimate interests
The Complainant submits that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. The Complainant also argues that there is no evidence that the Respondent is in any way affiliated with the Complainant, authorized or licensed to use the Trade Mark, or to seek registration of any domain name incorporating the Trade Mark.
The Complainant provides evidence that the Respondent has used the Disputed Domain Name to create a fraudulent and highly misleading email address in the name of the Complainant's CEO and Chairman to send phishing emails. This demonstrates that the Respondent was undoubtedly aware of the Complainant's Trade Mark and that the Disputed Domain Name was not being used in connection with a bona fide offering of goods or services or for any genuine noncommercial purpose.
Further, the Complainant claims that the fact that the Disputed Domain Name resolves to an inactive webpage, demonstrates that the Disputed Domain Name has not been registered in connection with any bona fide offering of goods or services.
Registration and use in bad faith
The Complainant submits that the Respondent registered, used and is holding the Disputed Domain Name in bad faith and in disregard of their Trade Mark rights.
The Complainant submits that there is no doubt that the Respondent was aware of the Complainant's famous Trade Mark and that there are no reasonable grounds for the Respondent to argue that it was intending to pursue a legitimate activity through the Disputed Domain Name. This is evidenced by the fact the Disputed Domain Name has been used to impersonate the current CEO and Chairman of the Complainant to send scam phishing emails.
Furthermore, the Complainant also argues that the fact the Respondent registered the Disputed Domain Name with a privacy service to conceal its identity is, in this case, a further demonstration of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Irrespective of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant.
A. Procedural Issues
No response from the Respondent
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. "loreal" is the dominant and distinctive element of the Disputed Domain Name.
In addition, minor typographical differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes do not prevent a finding of confusing similarity. See e.g. L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721.
For the above mentioned reasons, the Complainant is successful on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case. This decision has been reached after consideration of the following facts:
- There is no evidence to suggest that the Respondent has ever been known by the Disputed Domain Name.
- The Respondent's use of the Disputed Domain Name is unauthorized by and is without permission from the Complainant.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel accepts evidence provided in the Complaint that the Respondent used the Disputed Domain Name to create a fake email account supposedly in the name of the current CEO and Chairman of the Complainant which has been used for fraudulent purposes. This use is not bona fide.
- The Respondent, despite having the opportunity to present a defence, chose not to submit a Response.
Consequently, the Respondent has not rebutted the Complainant's prima facie case. The Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Use of a domain name to send fraudulent, false and misleading emails is clear bad faith use.
The Complainant is famous worldwide for its make-up and skincare products. Its products are sold around the world, and it has had registered rights in the Trade Mark for over 60 years. It is clearly a well-known, respected and established brand. The Disputed Domain Name was registered on April 7, 2017. In the circumstances of this case, it is easy for the Panel to conclude that the Respondent registered the Disputed Domain Name with knowledge of the Complainant and with bad motives.
The Respondent's use of a privacy service when registering the Disputed Domain Name supports the Panel's conclusion regarding bad faith.
For the reasons listed above, the Panel finds that the Complainant has succeeded on the third element 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 <loreal-global.com> be transferred to the Complainant.
Date: September 14, 2017