WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Zhong Hu, Chen Hu, Tiger Chan, Tiger Philip
Case No. D2017-1650
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Zhong Hu, Chen Hu of Kunming, Yunnan, China, Tiger Chan and Tiger Philip of Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <nyxchina.com>, <urban-decay.cc> and <urbandecay-cn.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2017. On August 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On September 5, 2017, the Center transmitted an email to the Parties regarding the consolidation of multiple Respondents.
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 September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 3, 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 markets more than 30 beauty brands around the world. NYX PROFESSIONAL MAKEUP and URBAN DECAY are two of those brands.
NYX PROFESSIONAL MAKEUP was created in 1999. Products branded with this trademark are available in 60 different countries. This brand received the Women’s Wear Daily Beauty Award for “best brand” of 2015. The official Instagram account promoting the brand has 11.3 million followers. Sales of products branded with this trademark have quadrupled in the last two years.
URBAN DECAY was launched in January 1996. According to the Complaint, it is a range of high-performance cosmetics. Products branded with this trademark are available in 45 different countries. The official Instagram page for this brand has 8 million followers.
The countries in which the Complainant’s products under these two trademarks are available do not include China. According to the Complaint, Chinese law requires cosmetic products to be tested on animals before the products can be marketed for use by humans. The Complainant’s products under these trademarks are not so tested. Accordingly, the Complainant says offering its products for sale in China is illegal under Chinese law.
Amongst other things, the Complainant has registered the following trademarks:
- Benelux Trademark NYX No. 0725979, filed on July 25, 2002, and duly renewed, covering goods in class 3;
- European Union trademark NYX PROFESSIONAL MAKEUP No. 015746431, filed on August 11, 2016, and registered on November 30, 2016, covering goods in class 3;
- International trademark NYX PROFESSIONAL MAKEUP No. 1155413, registered on February 19, 2013, covering goods and services on classes 3, 18, 21 and 35;
- European Union trademark URBAN DECAY No. 002099968, filed on February 22, 2001, and registered on July 18, 2002, duly renewed, covering goods in class 3;
- International trademark URBAN DECAY No. 1269874, registered on March 17, 2016 and covering goods in class 3.
The International Trademark for NYX PROFESSONAL MAKEUP specifies China as one of the designated countries to which it extends. The International Trademark for URBAN DECAY does not so extend.
From well before any of the disputed domain names were registered, the Complainant has been offering for sale and promoting its products under these trademarks from websites at, respectively:
- In the case of the NYX PROFESSIONAL MAKEUP trademark, <nyxcosmetics.com>; and
- In the case of the URBAN DECAY trademark, <urbandecay.com>.
The disputed domain names were registered by the respective respondent as follows:
- <urban-decay.cc> on September 29, 2016;
- <nyxchina.com> on March 8, 2017;
- <urbandecay-cn.com> on June 27, 2017.
Each disputed domain name resolves to a website offering the Complainant’s products for sale in China. The website which the <nyxchina.com> disputed domain name resolves closely resembles the Complainant’s website at “www.nyxcosmetics.com”. The websites to which the two “Urban Decay” disputed domain names resolve closely resemble the Complainant’s website at “www.urbandecay.com”. All three websites bear a sentence in Chinese characters asserting that the website is the Complainant’s official Chinese website.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondents of their respective disputed domain names, the Complainant must demonstrate each of the following:
(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 relevant 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.
No response has been filed. The Complaint has been sent, however, to each Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on each Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Panel notes that the Registrar has confirmed that the language of each registration agreement is English. Accordingly, it is appropriate that the language of the proceeding be English.
A. Request to consolidate the disputes
Although the three disputed domain names are registered in three apparently different names, the Panel considers it is appropriate to consolidate the Complaint under paragraph 10(e) of the Rules against each of them in the one administrative proceeding.
Two of the disputed domain names are registered to persons who have the same address. The registrant of <nyxchina.com>, Tiger Chan, is an English version of the Pinyin name “Chen Hu”, the registrant organisation of the disputed domain name <urban-decay.com>. The two “Urban Decay” disputed domain names are identical in content. All three disputed domain names include in their contacts an email address for “tigerchan”. All three disputed domain names are registered through the same registrar and hosted by the same hosting provider using the same IP address.
In these circumstances, if the individual registrants are not the same person, it appears that the disputed domain names are under common control. Given the commonality of brands, brand ownership and issues, it would be efficient to deal with all together. Nor does there appear to be any prejudice to any of the Respondents if the disputes are heard together. Accordingly, the Panel considers it appropriate to consolidate the disputes.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain names to the proven trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Benelux registration is for NYX in block capitals, as the EUTM and International Trademark for URBAN DECAY. The EUTM and the International Trademark feature the word NYX in fancy lettering and much more prominently than the two words “Professional Makeup”.
Disregarding the addition of the Top-Level Domain (“TLD”), the first disputed domain name differs from the Benelux Trademark by the addition of the geographic descriptor, “China”. The Benelux Trademark is plainly recognisable and so the first disputed domain name is confusingly similar to that trademark. The first disputed domain name differs from the International Trademark and the EUTM by the omission of the descriptive expression “Professional Makeup”, the “fancy” script and a small heart image. It also has the descriptive term “China” added. The “NYX” element is the most prominent part of these two registered trademarks. It is also the distinctive element of both those trademarks and the first disputed domain name. Accordingly, the Panel has no hesitation in finding that the first disputed domain name is confusingly similar to both those registered trademarks as well.
The Complainant’s registered trademarks can be seen plainly in the second and third disputed domain names. The second disputed domain name differs only by the insertion of an hyphen, which is immaterial for the purposes of this comparison. The third disputed domain has an hyphen plus “cn” but, as the Complainant points out that is a recognised protocol designating China. In these circumstances, the Panel finds that both the second and third disputed domain names are also confusingly similar to the Complainant’s relevant registered trademarks.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the relevant Respondent has no rights or legitimate interests in the disputed domain name which that Respondent has registered.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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, 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised any of the Respondents to use any of the disputed domain names and none of the Respondents is in any way affiliated with the Complainant.
Despite this, each of the disputed domain names resolves to a website which claims it is official website for China of the Complainant’s products. Moreover, it does so in circumstances where the Complainant says it is illegal to market its products in China as they have not been pre-tested on animals.
Either of these circumstances would be sufficient to establish that the offering of the Complainant’s goods and services from these websites is not in good faith. That is all the more so in combination.
In these circumstances, the Complainant has established a clear prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the relevant Respondent has both registered and used the disputed domain name it has registered in bad faith. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is plain from the way each of the disputed domain names is being used, to market the Complainant’s products and the claim to being the official website, that each of the Respondents is well aware of the Complainant and its trademarks. Given the very short time between registration and that use, the Panel may confidently infer that each of the disputed domain names was registered with that knowledge, all the more so bearing in mind how long, and how extensively, both trademarks have been in use. The false claim that the websites are the official websites for China, without more, is more than sufficient to support a finding that each Respondent has registered and is using “its” disputed domain name in bad faith and the Panel makes those findings.
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 names, <nyxchina.com>, <urban-decay.cc> and <urbandecay-cn.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: October 14, 2017