WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Cimpress Schweiz GmbH
Case No. DCO2017-0021
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <us-loreal.co> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2017. On June 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 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 June 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 19, 2017.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on July 25, 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 was founded in 1909 and is today one of the world's largest groups in the cosmetic industry, being present in over 140 countries world-wide.
The Complainant markets more than 30 global beauty brands including L'Oreal, L'Oreal Paris and L'Oreal Professionnel in connection to various products in all sectors of the beauty business, e.g., fragrances, cosmetics, hair care, hair color, skin and body care, men care and skincare devices.
The Complainant owns numerous trademark registrations for the term L'OREAL across the world, including the following registrations:
December 19, 2014
3, 5, 21, 25, 44
United States of America
April 26, 2016
Internatioanl Registration (designating, inter alia, Switzerland)
May 23, 1955
Besides that, the Complainant registered, amongst others, the following domain names containing its L'OREAL trademark, under which the Complainant officially promotes its products and services:
- <loreal.com> (registered in 1997)
- <loreal.net> (registered in 1999)
- <loreal.us> (registered in 2004)
- <loreal.eu> (registered in 2006)
- <loreal.ch> (registered in 1997)
The Respondent is located in Switzerland.
The disputed domain name was registered on May 25, 2017. It resolves into an inactive page. Also on May 25, 2017, the Complainant's Senior Accountant received an email from […]@us-loreal.co, signed with the name "Alex", with the request to proceed to an instant payment on payment details that would follow shortly after. The Complainant's Chief Financial Officer for L'Oréal USA is named "Alexandre Pagliano".
The Complainant sent a cease and desist letter to the Respondent via registered letter and via email. The Respondent did not reply. Further cease and desist letters were sent to the webhost and Registrar of <us-loreal.co>, to which the Registrar replied that the disputed domain name had been suspended.
5. Parties' Contentions
The Complainant argues that the disputed domain name is identical or at least confusingly similar to its registered trademarks and therefore infringes its rights according to paragraph 4(a)(i) of the Policy. Already the fact that the disputed domain name reproduced the Complainant's well-known trademark L'OREAL in its entirety, would establish a likelihood of confusion. The Complainant contends that the term "L'oreal" was the only distinctive and dominant element in the disputed domain name.
Further, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, paragraph 4(a)(ii) of the Policy. The Complainant's trademark rights would predate the Respondent's registration of the disputed domain name by far. Moreover, in case of a well-known trademark as the Complainant's L'OREAL mark, no actual or contemplated bona fide use of the domain name could reasonably be claimed, if the Complainant has not licensed or permitted the use. The Complainant confirms that it has not licensed or otherwise authorized the Respondent to use the mark.
Besides, the disputed domain name resolved into an inactive page; thus, the Respondent had failed to show any intention of noncommercial or fair use of the disputed domain name. On the contrary, the Respondent had used the disputed domain name to create an email address similar to real email addresses of the Complainant to send a fraudulent email, impersonating a real employee of the Complainant, Alexandre Pagliano, the Complainant's Chief Financial Officer for L'Oréal USA. This constituted a fraud scheme to trick recipients into believing that they were dealing with the Complainant's Chief Financial Officer.
Lastly, the Complainant contends that the disputed domain name has evidently been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
Due to the worldwide reputation of the Complainant's trademark L'OREAL, it was implausible that the Respondent was unaware of the Complainant and its trademark rights when registering the disputed domain name <us-loreal.co>. Since the Complainant's well-known trademark L'OREAL was incorporated in the disputed domain name in its entirety, and the Respondent had no connection to the trademark name, bad faith could be inferred.
The Complainant asserts there was also evidence that the Respondent would use the disputed domain name in bad faith. Most of all, the Respondent was engaged in a phishing scheme which was aimed at obtaining sensitive information such as banking details from the Complainant's employees, using an email address containing the disputed domain name […]@us-loreal.co, impersonating the Complainant's Chief Financial Officer for L'Oréal USA. Even though the actual disputed domain name <us-loreal.co> was currently inactive, this would not preclude a finding of use of bad faith, especially in a case like this, where the Complainant's trademark had a strong reputation and was widely known.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that
(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 Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a Respondent to "[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]".
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.
In the event of default, under the Rules, paragraph 14(b) "[…] the Panel shall draw such inferences therefore as it considers appropriate." As stated by numerous panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: "[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.
A. Identical or Confusingly Similar
The first element under the Policy, paragraph 4(a)(i) functions primarily as a standing requirement. The test for consuming similarity involves a direct comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. 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 the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7).
The disputed domain name contains the Complainant's trademark in its entirety. It differs from the trademark by the addition of the geographical term "us" (which constitutes an abbreviation for the United States of America), the hyphen between the suffix "us" and "loreal", and the country code Top-Level Domain (ccTLD) ".co" for Colombia.
The omission of grammatical marks, here the missing apostrophe between the letter "l" and the letter "o" and the lack of the accent on the letter "e", when displaying the Complainant's trademark L'ORÉAL in the disputed domain name <us-loreal.co>, cannot distinguish or differentiate the disputed domain name from the Complainant's trademark. Previous UDRP panels have ruled that minor typographical differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity (see L'Oréal S.A. v. Lianfa, WIPO Case No. DPW2014-0003 and L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721). Moreover, the simplified spelling of its trademark as L'OREAL (without the accent on the letter "e") is also used by the Complainant as registered trademarks and a further simplified version of this trademark (without the apostrophe) is also being used in its official domain names such as <loreal.com> or <loreal.us> (see Section 4 above, on page 2). Hence, the spellings of the Complainant's well-known trademark as L'OREAL and LOREAL are already commonly known and associated with the Complainant.
Also, the addition of the ccTLD suffix ".co" does not dispel confusion. It is standard practice to disregard the Top-Level suffix under the confusing similarity test, except where the applicable Top-Level suffix may itself form part of the relevant trademark, which is not the case here (see WIPO Overview 3.0, section 1.11).
The same applies to the geographical suffix "us" in the disputed domain name, standing for the United States of America. It is common practice for companies operating in various countries to indicate the particular country website of a particular affiliated company in that specific country by combining their company name or trademark with the country name. Hence, it is well established by prior UDRP decisions that the addition of geographical or descriptive terms is inadequate to avoid a confusion with the relevant trademark, which dominates the disputed domain name (see WIPO Overview 3.0, section 1.8).
Lastly, also the addition of a hyphen between the geographical suffix "us" and the trademark L'ORÉAL/L'OREAL in the disputed domain name <us-loreal.co> does not have any impact on the confusing similarity, as the dominant part of the disputed domain name is the Complainant's well-known trademark (see TREDNET, Direct Distribution International Ltd ("DDI") v. WhoisGuard Namecheap / BODYPOWER, WIPO Case No. D2012-2001 and Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768).
Hence, the disputed domain name is confusingly similar to the Complainant's trademark L'ORÉAL/L'OREAL.
Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of production on the Respondent (see WIPO Overview 3.0, section 2.1).
The Respondent has not been commonly known by the name L'Oréal or L'Oreal and, according to the Complainant, has not acquired any trademark or service mark rights. The Respondent's use and registration of the disputed domain name was not authorized by the Complainant.
Moreover, the Respondent has used an email composition containing the disputed domain name, namely […]@us-loreal.co, for purposes, which are fraudulent in the opinion of the Panel (see Section 6.C).
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name. Hence, the burden of production is on the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that, consequently, the Complainant has established the second element of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the Respondent registered and used the disputed domain name in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark (WIPO Overview 3.0, section 3.1).
Whether a domain name was registered and used in bad faith for purposes of the Policy, may be determined by evaluating the four factors set forth in paragraph 4(b) of the Policy. However, the provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration and use may be found otherwise, taking into account all circumstances relevant to the case (see Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421).
The Respondent has registered a domain name, which entirely reproduces the Complainant's famous L'ORÉAL/L'OREAL mark. That the Complainant's trademark enjoys a worldwide high or even famous reputation, has already been confirmed by several UDRP panels in previous decisions (see L'Oréal v. Bradley Harris, JAB Marketing PR / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2016-1738, L'Oréal, v. Hoang lan / Whois Privacy Protection Service, Inc., WIPO Case No. D2016-0917, L'Oréal v. Vitaly P Pak, WIPO Case No. D2013-0291and L'Oréal v. Rampe Purda / Privacy-Protect.org, WIPO Case No. D2010-0870).
Given the reputation of the Complainant's mark and the absence of any license or permission from the Complainant, as previous UDRP panels have found in comparable cases, in this case bad faith can be inferred, as no actual or contemplated bone fide or legitimate use of the disputed domain name could reasonably be claimed (See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138, Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281 and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
Moreover, the Complainant has presented evidence that the Respondent is engaged in a phishing scheme aimed at stealing sensitive information as banking details and money from the Complainant's employees by sending a fraudulent email to the Complainant's Senior Accountant under the email address
[…]@us-loreal.co. By doing so, the Respondent impersonated the Complainant's Chief Financial Officer for L'Oréal USA, Alexandre Pagliano. The domain part of the afore-mentioned email address is identical to the disputed domain name <us-loreal.co>, and was sent by the Respondent. Thus, the Panel ascribes the fraudulent behavior committed under the email address to the disputed domain name.
From the above it is apparent to the Panel that the Respondent was not only familiar with the Complainant's trademarks, but also its company, when registering the disputed domain name. It can be inferred that the Respondent solely registered the disputed domain name for fraudulent purposes. It is established case law that the use of a disputed domain name for the purpose of defrauding Internet users by the operation of a "phishing scheme" is perhaps the clearest evidence of registration and use of a domain name in bad faith (see OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093).
The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith. Previous panels have indeed confirmed that the prerequisites under paragraph 4(a)(iii) of the Policy can be met under the doctrine of passive holding, giving close attention to all circumstances of the Respondent's behavior (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and WIPO Overview 3.0, section 3.3).
Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put. See WIPO Overview 3.0, section 3.3.
All of these requirements are met in the case at hand:
(i) As outlined above, the famous reputation of the Complainant's trademark L'ORÉAL/L'OREAL has been confirmed by several previous UDRP panels.
(ii) The Respondent has not responded to the Complaint.
(iii) Further, the Respondent has concealed its identity and rather impersonated the Complainant's Chief Financial Officer for L'Oréal USA, which even constitutes an identity theft.
(iv) Under these circumstances the Panel finds it implausible that the Respondent could bring forward any good faith use to which the disputed domain name may be put.
For all of the above the Panel finds that the Complainant has satisfied the requirement of 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 <us-loreal.co> be transferred to the Complainant.
Date: August 4, 2017