WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Occitane International S.A. v. Whois Privacy, Private by Design, LLC / Bartosz Kujawski

Case No. D2021-3906

1. The Parties

The Complainant is L’Occitane International S.A., Luxembourg, represented by IP Twins, France.

The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Bartosz Kujawski, Poland.

2. The Domain Name and Registrar

The disputed domain name <erorian.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2021, 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 December 6, 2021 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 December 10, 2021.

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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on February 14, 2022. 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 part of the L’Occitane Group, which is a natural and organic ingredients-based cosmetics and well-being products retailer. The Complainant’s group commercializes its products through offline and online stores. Per the Complaint, in 2021, the Complainant’s group counted 3,088 retail locations (1,523 of them owned retail stores), had more than 8,700 employees, and generated a revenue of more than 1 billion euros, reporting net sales of EUR 1,537.8 million.

The L’Occitane Group commercializes its products under various brands including L’OCCITANE, MELVITA, ERBORIAN, L'OCCITANE AU BRESIL, LIMELIFE BY ALCONE, and ELEMIS. Erborian was founded in 2007, became part of the L’Occitane Group in 2012, and it is currently distributed in numerous countries, including France, Germany, Italy, China, United States, Mexico, Russian Federation, Slovenia, Spain, Portugal, and Poland. The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s website “www.erborian.com”.

The Complainant has secured trademark registrations for ERBORIAN brand in many jurisdictions, including the following registrations:

- International Registration No. 1125364, ERBORIAN, word, registered on June 29, 2012, in Classes 3, and 5; and

- International Registration No. 1295774, ERBORIAN, figurative, registered on January 19, 2016, in Classes 18, 21, 24, and 35, (collectively the “ERBORIAN mark”).

The Complainant further owns various domain names comprising its ERBORIAN mark, under various generic Top-Level-Domains (“gTLDs”) or country code Top-Level-Domains (“ccTLDs”), which are linked to its corporate websites and online shops, including the following:

- <erborian.com>, registered on October 2, 2006;
- <erborianshop.com>, registered on March 21, 2008;
- <erborian.fr>, registered on July 31, 2010;
- <erborian.ru>, registered on January 12, 2013;
- <erborian.us>, registered on November 27, 2013;
- <erborian.com.tw>, registered on November 28, 2013;
- <erborian.co.uk>, registered on November 28, 2013;
- <erborian.co>, registered on January 23, 2014;
- <erborian.cz>, registered on January 23, 2014;
- <erborian.mx>, registered on January 23, 2014;
- <erborian.dk>, registered on January 24, 2014;
- <erborian.pt>, registered on April 7, 2014;
- <erborian.com.sg>, registered on April 19, 2016;
- <erborian.sg>, registered on April 19, 2016;
- <erborian.shop>, registered on September 26, 2016; and
- <erborian.asia>, registered on June 6, 2018.

The Complainant also operates various social media pages, including a Facebook page with 110,000 followers as well as an Instagram page with more than 160,000 subscribers.

The disputed domain name was registered on November 14, 2021, and it is currently inactive. According to the evidence provided by the Complainant, the disputed domain name was previously redirected to several third parties’ websites offering erotic dating services.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The Complainant enjoys widespread reputation and goodwill through its continuous and long-standing use of the ERBORIAN mark. Laboratoires M&L y L’Occitane International S.A. v. Hebe Leite, WIPO Case No. DES2016-0017, has held that the Complainant and its trademark L’OCCITANE are well known.

The disputed domain name is confusingly similar to the ERBORIAN mark. The disputed domain name is a misspelling of the ERBORIAN mark (omitting the letter “b”), and the applicable gTLD “.com” is as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the disputed domain name, he has no rights in the “erborian” name, and no authorization to use the Complainant’s trademarks. Before the filing of the Complainant, the Respondent has not used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The disputed domain name redirects to several third parties’ websites offering erotic dating services. The Respondent is purposely trying to misdirect Internet users form the Complainant to these dating services sites.

The disputed domain name was registered and is being used in bad faith. The Complainant and its trademarks are so widely well known that it is inconceivable that the Respondent ignored the ERBORIAN mark. A simple search of the term “erorian” on an online search engine yields results only related to the Complainant. The Respondent knew or should have known that, when registering and using the disputed domain name, he would do so in violation of the Complainant’s earlier rights. The Respondent targeted the ERBORIAN mark to attract Internet users by creating a likelihood of confusion, in the hope that Internet users searching for the Complainant’s products and services would instead come across the Respondent’s website.

The Complainant has cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material, and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered trademark ERBORIAN, both by virtue of its trademark registrations and as a result of its continuous use of this mark on the market.

The disputed domain name incorporates the ERBORIAN mark omitting one of its letters (the letter “b”), which may be considered a common misspelling that may easily go unnoticed not avoiding the direct perception of the trademark being reproduced in the disputed domain name. The Panel considers that the Complainant’s trademark ERBORIAN is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.

It is to be noted that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. Additionally, a domain name consisting of a common, obvious, or intentional misspelling of a trademark, containing sufficiently recognizable aspects of that mark, is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. Furthermore, the applicable TLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.9, and 1.11, WIPO Overview 3.0.

Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that demonstrating a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.

The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.

The Panel notes that the disputed domain name incorporates the Complainant’s trademark ERBORIAN (with a sole common misspelling, omitting the letter “b”), which may be a common misspelling pointing to an intention to confuse Internet users seeking for or expecting the Complainant.

Additionally, the Panel notes that the term “erborian” is a coined term. Moreover, the term “erorian” does not appear to be included in the dictionary in any language.

The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain name, not being authorized to use the ERBORIAN mark, and not owning any trademark including the term “erborian”. The Complainant has further alleged that the disputed domain name redirected to several third parties’ websites offering erotic dating services.

The Panel, under its general powers, has further corroborated that the Respondent owns no trademark containing or consisting of the word “erorian”.¹

The Panel further notes that the Respondent’s name, provided in the registration of the disputed domain name, was concealed under a privacy registration service, and has no resemblance with “erborian” or the term corresponding to the disputed domain name (“erorian”).

Furthermore, the Panel considers remarkable that the disputed domain name is currently apparently inactive resolving to a page with an Internet browser error message, and that the Respondent has chosen not to reply to the Complaint. These circumstances lead the Panel to consider that the Respondent’s reaction to this Complaint has been to take down the website that was linked to the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and nothing in the case file gives reason to believe, in a balance of probabilities, that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel notes the well-known character worldwide of the Complainant and its trademark L’OCCITANE, particularly in the field of cosmetics, which has been recognized by previous decisions under the Policy.²

The Panel further notes the extensive use over the Internet and the notorious character of the ERBORIAN mark in the cosmetic field. The ERBORIAN mark has been extensively and continuously used over the Internet at least since July 3, 2007. The Panel, under its general powers, has consulted the Internet web archive WayBackMachine regarding the Complainant’s website “www.erborian.com”.

The Panel has further corroborated that the ERBORIAN mark is distributed in many jurisdictions, including Poland, where the Respondent is located according to the Registrar verification. In this respect, the Panel, under its general powers, has conducted various searches over the Internet and consulted the Complainant’s ERBORIAN website for Poland “www.pl.erborian.com”.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name incorporates the Complainant’s trademark with a sole common misspelling (omitting the letter “b”), existing an intrinsic likelihood of confusion;

(ii) the term “erborian” is a coined term;

(iii) the Complainant’s and its trademarks are well known worldwide, or, in the case of the ERBORIAN mark, at least notorious in the cosmetic field, and the Complainant operates internationally, including in Poland (where the Respondent is apparently located according to the Registrar verification);

(iv) any investigation over the Internet for the term “erborian” or for the term “erorian” yields results related to the Complainant;

(v) according to the evidence provided by the Complainant, the disputed domain name has been linked to a website redirecting to third parties’ websites in the dating services, which has been apparently taken down as a result of the Complaint;

(vi) the Respondent used a privacy registration service; and

(vii) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

The Panel considers highly unlikely that the Respondent was not aware of the Complainant and its ERBORIAN mark in circumstances that a simple web search for the term “erorian” would have brought them up. As a result and also for the reasons noted above, the Panel finds that in all likelihood and on the balance of probabilities the disputed domain name was registered with knowledge of the Complainant’s prior rights, targeting these rights with the intention of free riding on the established reputation of the Complainant’s trademarks, in bad faith. All circumstances in this case indicate that the Respondent has intentionally attempt to mislead third parties, in order to generate traffic to his website with a commercial purpose.

It is further to be noted that the current non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.

In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

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, <erorian.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: February 28, 2022

¹ In this respect, the Panel has consulted the WIPO Global Brand Database searching for any trademark belonging to the Respondent that includes the term “erorian”.