WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Whois privacy services provided by DomainProtect LLC / Igor Smirnov
Case No. D2017-2441
1. The Parties
Complainant is L'Oréal of Paris, France, represented by Studio Barbero, Italy.
Respondent is Whois privacy services provided by DomainProtect LLC of Saint Petersburg, Russian Federation / Igor Smirnov of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <urban-decay.com> is registered with INSTANTNAMES LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 Complainant on December 15, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 18, 2017.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. The Response was filed with the Center on January 8, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 18, 2018. 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.
On January 19, 2018, Complainant submitted a supplemental filing in rebuttal to the Response. On January 31, 2018, Respondent also submitted a supplemental filing.
4. Factual Background
Complainant is one of the world's largest cosmetics company, operating in over 140 countries. L'Oréal, Garnier, and Maybelline are among Complainant's cosmetics brands. On December 19, 2012, Complainant acquired rights in the URBAN DECAY mark from the founders of Urban Decay Cosmetics, who started using the URBAN DECAY mark in conjunction with cosmetics in 1996. Following its acquisition of the mark, Complainant continued to use the mark to sell cosmetics globally, doubling the sales of URBAN DECAY products. Complainant has rights in various trademark registrations for the URBAN DECAY mark, including in the United States of America (Registration No. 2,449,408; registered May 8, 2001) and in the Russian Federation (Registration No. 237380; registered February 3, 2003). In addition, Complainant owns numerous domain names incorporating the URBAN DECAY mark, including <urbandecay.com> and <urbandecay.ru>.
Respondent registered the disputed domain name <urban-decay.com> on October 9, 2013. Before the Complaint was filed, the disputed domain name redirected to a website consisting of links to websites offering Complainant's products as well as to websites offering products of Complainant's competitors.
The website also noted that the disputed domain name was for sale. Following Respondent's receipt of the Complaint, Respondent deleted the sponsored links, but the for sale notice remains.
5. Parties' Contentions
Complainant alleges that the disputed domain name is confusingly similar to its URBAN DECAY mark as the disputed domain name incorporates the mark fully. Furthermore, Complainant asserts that it has not authorized Respondent to use the URBAN DECAY mark and that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, there is no indication that Respondent is commonly known as Urban Decay, that Respondent is using or preparing to use the disputed domain name for a bona fide offering of goods or services, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Lastly, Complainant argues that Respondent registered and is using the disputed domain name in bad faith because, considering the famous nature of URBAN DECAY, it is inconceivable that Respondent was unaware of the mark and Complainant's rights at the time of the domain name registration and has used the disputed domain name to capitalize on the reputation of Complainant's mark for the purpose of redirecting users to a website featuring sponsored content. Moreover, Complainant shows that Respondent responded to an inquiry by Complainant on November 13, 2013, by offering to sell the disputed domain name for USD 650 and that subsequent cease and desist letters (on January 22, 2014, and November 17, 2017) went unanswered.
Respondent concedes that the disputed domain name is identical to Complainant's mark. According to Respondent, however, he has rights or legitimate interests in the disputed domain name as Complainant's mark represents a generic dictionary term and Respondent is entitled to hold a domain name comprising such terms. Respondent also asserts that he acquired the disputed domain name in preparation for "Photo Exhibition Urban Decay 2018" to be held in St. Petersburg, Russian Federation. Respondent provides photos "demonstrat[ing] cultural and social value of the project". Respondent argues that he did not register the disputed domain name in bad faith because he was not aware of Complainant's mark and he selected the term "urban decay" because it "fit[ ] with [his] start-up project mission to make the photo-exhibitions and collections, depicting the devastated suburban areas in the middle of nowhere". Moreover, Respondent contends that he did not acquire the disputed domain name until May 27, 2017, from its former owner Tradenames Ltd., and provided no input with regard to the sponsored links displayed on the website to which the disputed domain name redirects.1
6. Discussion and Findings
A. Unsolicited Supplemental Filings
Considering Respondent's claim that he only recently acquired the disputed domain name, which is not apparent from the domain name registration information and which Complainant could have had no notice of before the filing of the Response, the Panel in its discretion has considered section II of Complainant's Unsolicited Supplemental Filing as it specifically addresses Respondent's claim regarding the transfer. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6. The Panel declines to consider the remainder of the supplemental filing as an improper attempt at a rebuttal.
The Panel has also reviewed Respondent's Unsolicited Supplemental Filing, but does not find any new evidence. Rather, Respondent merely reargues his position and appears to respond only to the portion of Complainant's Unsolicited Supplemental Filing that Panel declines to consider. Accordingly, the Panel declines to consider Respondent's additional filing.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant's URBAN DECAY mark because it incorporates the mark in its entirety. The addition of the hyphen does nothing to dispel the confusion caused by the wholesale reproduction of the mark. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has established a prima facie case, which Respondent has failed to rebut. While the use of a domain name to host a page comprising sponsored links is permissible where the domain name consists of a dictionary word and is used to host links related to the dictionary meaning of the word (see WIPO Overview 3.0, section 2.9), that is not the case here. Respondent does not use the disputed domain name to link to examples of "urban decay". Instead, before the filing of the Complaint, the disputed domain name redirected users to a website featuring sponsored links not only to Complainant's products but also to those of Complainant's competitors. This undercuts the argument that Respondent is engaged in a legitimate noncommercial or fair use. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Further, Respondent has not offered any evidence that he was preparing prior to notice of the dispute for "Photo Exhibition Urban Decay 2018" ostensibly to be held in St. Petersburg. To be credible, this defense must include dated evidence of the preparations. Respondent offers no such evidence, and the fact that the parked page included a "For Sale" notice undercuts Respondent's argument.
Thus, Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Respondent registered and has used the disputed domain name in bad faith. First, Respondent's contention that he recently acquired the disputed domain name is not credible. As Complainant shows, the registration information for the disputed domain name fails to reflect any such transfer in ownership. Indeed, over the years, the registrant information for the disputed domain name has remained substantially unchanged. Regardless, Respondent's assertion that he acquired the disputed domain name in 2017 would not avoid the finding that he registered it in bad faith. In general, a transfer of domain name ownership is considered "registration" for purposes of factor three of the Policy. Seeparagraph 4(b)(i) of the Policy (treating acquisitions the same as registration for the purposes of supporting a finding of bad faith registration). The Panel would find that, given the widespread fame of Complainant's mark, Respondent most probably knew of Complainant's rights when he originally registered the disputed domain name. A fortiori, Respondent would have known of Complainant's rights even if the purported transfer occurred in 2017.
Similar analysis applies to bad faith use. Even though Respondent asserts that he was unaware of the links to competitors' sites that existed before the purported transfer in 2017, the record shows that these links persisted well after the phantom transfer in 2017. The disputed domain name is used to redirect users to a parked page with sponsored links that target Complainant, and this use has remained unchanged following the receipt of two cease and desist letters from Complainant. While Respondent denies responsibility for the content of the links, this makes little difference in the Panel's judgment. "[G]iven the similarity of the Domain Name to the Complainant's name, it should have been of no surprise to the Respondent that links [relevant to Complainant's products] would be generated." Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 <urban-decay.com> be transferred to Complainant.
Lawrence K. Nodine
Date: February 1, 2018
1 Complainant submitted a supplemental filing to rebut, among other things, Respondent's contention that he acquired the disputed domain name in May 2017. Complainant shows that the registrant information has remained unchanged in relevant part since the initial registration of the disputed domain name and the automatic yearly renewals are the only updates reflected in the registration.