WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Irhin Evgenii
Case No. D2018-2714
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Irhin Evgenii of Respublika Adigeya, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <loreal-bank.com> is registered with Registrar of Domain Name REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2018. On November 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2018, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on November 29, 2018 and requested English to be the language of the proceedings.
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 December 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on January 9, 2019. 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 cosmetics and beauty products. Established in 1909, it is today one of the world’s leaders in the cosmetics and beauty industry and is present in around 150 countries worldwide including the Russian Federation.
The Complainant owns numerous trademark registrations for L'OREAL across the world, including the following:
- Russian trademark L’OREAL No.601080 registered on January 11, 2017;
- European Union trademark L’OREAL No.013117981 registered on December 19, 2014;
- International trademark L’OREAL No.184970 registered on May 23, 1955.
The Complainant operates domain names reflecting its trademark: <loreal.com> and <loreal.com.ru>.
The disputed domain name <loreal-bank.com> was registered on October 13, 2018 and is resolving into inactive website as of the date of this decision. Previously the disputed domain name resolved into a website providing financial services.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark. The disputed domain name reproduces the well-known Complainant’s trademark in its entirety. Addition of generic term “bank” and a hyphen do not influence the similarity. Addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorized to use and register a domain name incorporating the Complainant’s trademark. The Respondent is not commonly known with the disputed domain name. The Respondent cannot assert that, before any notice of the dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. No actual or contemplated bona fide or legitimate use of the disputed domain name can be reasonably claimed, since it captures the widely-known Complainant’s trademark to mislead consumers and take unfair advantage of the Complainant’s rights. The disputed domain name is used for fraudulent activities.
The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the well-known Complainant’s trademark when registering the disputed domain name. The Respondent chose the disputed domain name to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of the Complainant’s goodwill and reputation. The Respondent is using the disputed domain name to intentionally attract Internet users to his website for commercial gain by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered at the Respondents respective website. The disputed domain name is used for fraudulent activities. Given the Complainant’s renown and goodwill worldwide, and the nature of the disputed domain name, which reproduces the Complainant’s well-known trademark, there cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreements for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant requested that the language of the proceedings be English. The Complainant contends that the Respondent is familiar with the English language, since the disputed domain name includes Latin characters. The Panel also notes that the website at the disputed domain provided for plenty of contact details of the Respondent in Canada, where people usually speak English quite well. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the above information and arguments provided by the Complainant in its entirety.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The gTLD “.com” in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain name includes the Complainant’s trademark L’OREAL, adding the term “bank” and a meaningless hyphen, which do not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPOCase No. D2014-1875).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain name was used to intentionally attract, for commercial gain, Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website, it’s affiliation and capitalize on the Complainant’s goodwill and reputation. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Therefore, the Complainant has established its case under 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 <loreal-bank.com> be transferred to the Complainant.
Date: January 16, 2019