WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Phạm Ngọc Sang

Case No. D2020-1252

1. The Parties

The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.

The Respondent is Phạm Ngọc Sang, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <vichys.xyz> (the “Disputed Domain Name”) is registered with Mat Bao Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2020, 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 Registrar also indicated that the language of the Registration Agreement was Vietnamese. On May 20, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on May 20, 2020. The Respondent did not comment on the language of the proceeding.

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 May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 25, 2020. 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, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty. The Complainant has a portfolio of 36 brands, and is present in 150 countries. One of the Complainant’s major brands is VICHY, which has been established since 1931 for skin care products.

The trademark VICHY has been registered for cosmetics in Class 03 in a variety of countries, including in Viet Nam, where the Respondent resides, under International Registrations No. 426126 registered on October 28, 1976, No. 469251 registered on May 27, 1982, and No. 478959 registered on August 25, 1983.

The Complainant also owns a number of domain names featuring the trademark VICHY, among which the notable one is <vichy.com> registered on September 12, 1998.

The Respondent registered the Disputed Domain Name <vichys.xyz> on March 2, 2020. As of the date of this Decision, the Disputed Domain Name is resolving to an online store of the Respondent, via which the Complainant’s products under the trademark VICHY are advertised and offered for sale.

The Complainant sent several notifications and reminders to the Registrar and the hosting provider, requesting for the block of the Disputed Domain Name and the deactivation of the associated website. However, the Complainant’s requests were not satisfied.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of trademark registrations for VICHY in numerous jurisdictions, including, but not limited to Viet Nam, where the Respondent resides.

Secondly, the Complainant asserts that the Disputed Domain Name is confusingly similar to VICHY Trademarks owned by the Complainant since the Disputed Domain Name includes the Complainant’s VICHY trademark. The addition of the letter “s” at the end could not dispel any likelihood of confusion.

Furthermore, the Complainant contends that since VICHY trademark is well-known all over the world, the incorporation of such trademark in its entirety may establish that the Disputed Domain Name is identical or confusingly similar to the Complainant’s VICHY trademark.

Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) “.xyz” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the Complainant has not affiliated with or authorized the Respondent to use any of its trademarks or to register a domain name incorporating its VICHY trademark (or a domain name, which will be associated with this trademark). The Respondent also cannot claim prior rights or legitimate interest in the Disputed Domain Name as the VICHY trademarks preceded the registration of the Disputed Domain Name by many years.

Second, the Complainant asserts that the Respondent is not commonly known by the Disputed Domain Name or the name “vichy”.

Furthermore, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services since the Disputed Domain Name, which incorporates the Complainant’s trademark, resolves toward a fraudulent commercial website in Vietnamese selling VICHY cosmetic products online. Moreover, besides the use of the Complainant’s trademark in the Disputed Domain Name, the Respondent also uses the Complainant’s official products designs, graphic element, and the Complainant’s denomination without authorization on its website.

Finally, the Complainant submits that the Respondent is not 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 trademarks of the Complainant.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

Registration in bad faith

First, the Complainant asserts that since the Complainant is well-known throughout the world, it is unlikely that the Respondent was not aware of the Complainant’s rights in VICHY trademark. Further, a simple search via Google or any other search engine using the keyword “vichy”, or even “vichys”, demonstrates that all first results relate to the Complainant’s products or news. In addition, the Complainant submits that the Disputed Domain Name resolved to a webpage containing an email address reproducing the Complainant’s corporate name and trademark L’OREAL.

Second, the Complainant’s VICHY trademark registration significantly predates the registration date of the Disputed Domain Name. The Complainant contends that the Respondent has the duty to verify that the registration of the Disputed Domain Name would not infringe the rights of any third party before registering. Therefore, the Respondent’s failure to do so is a contributory factor to its bad faith.

Use in bad faith

First, the Complainant asserts that the Respondent uses the Disputed Domain Name to resolve towards a Vietnamese fraudulent commercial website selling VICHY cosmetic products online, which probably are counterfeit. It is likely that Internet users who are directed to the website at the Disputed Domain Name will assume that the Respondent’s website is associated with the Complainant.

Second, the Complainant submits that the Respondent is trying to benefit from the fame of the Complainant’s trademarks, and the Respondent’s primary motive in registering and using the Disputed Domain Name was to capitalize on or to otherwise take advantage of the Complainant’s trademark rights, by creating initial interest confusion.

Further, the Complainant contends that the Respondent knowingly aim to give the impression that the website under the Disputed Domain Name is an official website endorsed by the Complainant, since the use of fake email address […]@loreal.com on the website exacerbates the risk of confusion in the internet user’s mind.

Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the Disputed Domain Name, which is confusingly similar to the Complainant’s trademark, the Respondent’s use of the Disputed Domain Name would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issues

(i) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated May 20, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.

On May 20, 2020, the Complainant submitted a request that English be the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, a French business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and would be able to communicate in English;

(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in either English or Vietnamese.

Therefore, for the purpose of easy comprehension of the Complainant (the party majorly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

(ii) The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in VICHY, well before the Disputed Domain Name was registered.

Second, the Disputed Domain Name incorporates the entirety of the Complainant’s VICHY trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is merely the addition of the letter “s” at the end. In accordance with paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Thus, the addition of a letter “s” does not prevent a finding of confusing similarity between the Disputed Domain Name and the VICHY trademark. In the Panel’s view, “vichys” is confusingly similar to the Complainant’s trademark.

This is a typical case of a deliberate misspelling of a trademark (so-called “typosquatting”), by omitting, adding, or substituting the order of letters of a trademark, where numerous UDRP panels in the past have found confusing similarity to be present, see, inter alia Airlinen Ltd v. Deyan Dimitrov, Laundryheap, VenturePoint Ltd, WIPO Case No. D2019-2542; Mirova v. WhoisGuard Protected, WhoisGuard, Inc. / Brian Tranter, WIPO Case No. D2020-0142.

Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.xyz” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the purposes of the Policy (see, e.g., G4S Plc. v. Thiago07 10messi, WIPO Case No. D2019-0676; Instagram, LLC v. FBS Inc, Whoisprotection.biz / Mert Turan, WIPO Case No. D2019-1472).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s VICHY trademark, and the first element of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.

The consensus view of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the disputed domain name (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark VICHY.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s trademark VICHY as well as its official marketing material and product image.

In addition, the website under the Disputed Domain Name stated that “CÔNG TY TNHH L’OREAL VIỆT NAM” (in English: “L’ OREAL VIETNAM COMPANY LIMITED”) and the copyright claim “© 2017 Bản quyền thuộc về Vichy Việt Nam.” (in English: “© 2017 Copyrights of Vichy Viet Nam”). This indication and copyright claim may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.

With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the VICHY trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel further finds that the Complainant’s VICHY trademark have been registered in numerous countries. The Complainant’s trademarks have been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the VICHY trademark in its entirety, adding only the letter “s” at the end. Given the extensive use of the VICHY trademark for cosmetic products by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website there under, the Panel is of the view that the Respondent obviously knew of the Complainant and its VICHY trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

The Complainant provided evidence regarding the use of the Disputed Domain Name to resolve to an online store offering skin care products branded with the Complainant’s trademark VICHY. Furthermore, on the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is still resolving to an online store offering skin care products branded with the Complainant’s trademark VICHY. In addition to the adoption of the Complainant’s VICHY trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s trademarks, official marketing material, and product images on the website and falsely represented itself as the Complainant’s Vietnamese branch by the indication “CÔNG TY TNHH L’OREAL VIỆT NAM” (in English: “L’ OREAL VIETNAM COMPANY LIMITED”) and the copyright claim “© 2017 Bản quyền thuộc về Vichy Việt Nam.” (in English: “© 2017 Copyrights of Vichy Viet Nam”).

The Panel takes the view that any Internet users seeking to purchase the Complainant’s VICHY products would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.

7. Decision

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 <vichys.xyz> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: July 9, 2020